Delhi High Court
Vishvajeet Sharma & Anr. vs State & Anr. on 11 September, 2009
Author: S. Muralidhar
IN THE HIGH COURT OF DELHI AT NEW DELHI
CRL M C No. 3650 of 2006 & Crl M A 5869/06, 4130/2007
Reserved on: August 21, 2009
Decision on: September 11, 2009
VISHVAJEET SHARMA & ANR ..... Petitioners
Through Mr. Shailen Bhatia with
Mr. Neeraj Chaudhari and
Ms. Zeba Tarannum Khan, Advocates
versus
STATE & ANR .... Respondents
Through Mr. Pawan Bahl, APP for State.
Mr. H.P. Singh with
Mr. Rohit Minocha, Advocate for R-2.
CORAM:
HON'BLE DR. JUSTICE S. MURALIDHAR
1.Whether reporters of the local newspapers
be allowed to see the judgment? No
2.To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in the Digest? Yes
JUDGMENT
S. Muralidhar,J.
1. This petition under Section 482 of the Code of Criminal Procedure 1973
(„CrPC‟) seeks the quashing of the Complaint No. 55/1/ 2005 (titled
Spaceage Multi Products Pvt. Ltd. v. Darshan Singh & Ors.) and FIR No.
52 of 2006 dated 12th January 2006 registered at Police Station (PS)
Saraswati Vihar under Section 63 of the Copyright Act and all proceedings
consequent thereto.
2. The background to the filing of this petition is that the Petitioners are
partners of the firm M/s. Deemark Healthcare having its office at New
Delhi. The firm deals with the various healthcare products such as
exercisers and walkers. It is stated that the Petitioners adopted the trade
marks with the word "Walker". Their main trade mark is DEEMARK and
the word "Walker" is stated to be descriptive and generic for the walking
exercise machines as it is to convey an idea that the use of the machine is a
substitute for walking.
3. It is further stated that two notices dated 17th August 2005 and 14th
December 2005 were issued by the lawyers of Respondent No.2 M/s.
Spaceage Multi Products (P) Limited having its office at Kolkata to the
Petitioner No.2 Mr. Darshan Singh. A copy of the second notice dated 14th
December 2005 has been enclosed. It was claimed by Respondent No.2 in
the said notice that they were the sole owners of the trademarks "Morning
Walker, Easy Walker, Walker, and Morning Walker (Label)" and that they
were also proprietors of the artistic work in „Morning Walker‟. It was stated
therein that the Respondents had applied for registration of the trademark
„Morning Walker‟ in Classes 10 and 28 and the applications were pending.
The particulars of the copyright registration No. A-70290/ 2005 dated 27th
April 2005 were given. It was alleged by Respondent No.2 that Petitioner
No.2 had copied the main feature of its get-up and/or artistic work by
offering for sale the product „Home Walker‟ and that this also constituted
infringement of the copyright registration of Respondent No.2 The said
notice called upon the Petitioner No.2 to immediately cease using the mark
„Home Walker‟ which was deceptively similar to the trademark „Morning
Walker‟ and/or „Walker‟ and/or any mark having prefix or suffix „Walker‟
in respect of Classes 10 and 28 goods including health oxygen equipments
of all kinds.
4. In their reply dated 22nd December 2005, the Petitioners‟ lawyers pointed
out that the marks „Walker‟, „Morning‟, „Easy‟ or any combination thereof
described the nature of the article which was meant for the walking exercise
at home or any other place and therefore were incapable of being registered
as trade marks. Further the words were common to the trade. It was further
contended that the registration of the copyright in „Morning Walker‟ was
also not a work of original art and the same was liable to be rectified. While
it was not denied that Petitioner No.2 Darshan Singh was selling walkers
under the trade mark „Home Walker‟ it was claimed that Petitioner No.2
had adopted the said mark honestly and bonafide. Any infringement of the
trademark or copyright of the Respondent No.2 was denied. It was also
denied that the product of Respondent No.2 was an original work of art
protected under the Copyright Act 1957.
5. It appears that even before the second notice dated 14th December 2005
was sent by the lawyers of Respondent No.2 to the Petitioner No.2,
Respondent No.2 had on 31st October 2005 filed Complaint Case No.
55/1/2005 in the court of the learned Additional Chief Metropolitan
Magistrate („ACMM‟). An application under Section 156 (3) CrPC was also
filed. In the complaint it was mentioned that a letter had been written to the
DCP Crime Branch EOW Cell on 22nd October 2005 but no action had been
taken. An order was passed by the ACMM on 31st October 2005 directing
the DCP Crime EOW Cell to conduct an investigation and submit a report
to the court by 15th February 2006. Thereafter FIR No. 52 of 2006 dated
12th January 2006 was registered at PS Saraswati Vihar. After investigation,
a charge sheet was filed in the court of the learned ACMM on 4 th December
2006. Cognisance of the offence under Section 63 Copyright Act was taken.
Petitioner No.2 was arrested on that date. Later, by an order dated 23rd
January 2006 he was granted bail. Thereafter, this petition was filed praying
that the FIR and the preceding criminal complaint be quashed.
6. When this petition was heard on 28th September 2006 it was submitted by
learned counsel for the State that after investigation the Police was
contemplating filing a cancellation report. In view of the said statement,
learned counsel sought for the petitioner sought permission to withdraw the
petition and it was dismissed as withdrawn. However despite making the
above statement, the Investigating Officer („IO‟) of the case filed a charge
sheet in the court of learned ACMM on 1st December 2006 stating therein
that use of the name/word „Easy Walker‟ by the Petitioners constituted a
copyright violation and that "the description of equipment as level prints on
body is also deceptively similar of (sic to) the infringed Easy Walker
Exercise machine. Hence the offence under Section 63 of the Copyright
Act („CR Act‟) is attracted."
7. In view of the above development, the Petitioners sought revival of the
main petition Crl M C No. 3650 of 2006 by filing Crl M A No. 4129 of
2007. Along with the said application filed on 14th April 2007, the
Petitioners also filed an application Crl M A No. 4130 of 2007 seeking to
challenge the charge sheet. The ground urged was that the charge sheet was
based on the alleged copyright work which does not qualify to be an artistic
work. No copyright registration could have been granted to Respondent
No.2. In the alternative, it was urged that if the said work was granted
registration, then such registration ceased to exist by operation of Section
15 (2) of the Copyright Act, 1957. It was submitted that the design of the
product alleged to have been infringed by the Respondent No.2 is really a
subject matter of the Designs Act 2000 in view of Section 2 (1) (d) of that
statute. It was pointed out that the Petitioners had in any event applied for
cancellation of the copyright registration in favour of the Respondent No.2.
8. By an order 10th January 2008 Crl M A No. 4129 of 2007 was allowed
and Crl M C No. 3650 of 2006 was restored to file. As regards Crl M A No.
4130 of 2007 by the same order a last opportunity was given to the
Respondent No.2 to file a reply. It may be mentioned that against the order
dated 10th January 2008 the Respondent No.2 filed Special Leave Petition
(Crl) No. 1834 of 2008 in the Supreme Court. By an order dated 1st
December 2008 the said SLP was dismissed.
9. It is submitted by Mr. Shailen Bhatia, learned counsel appearing for the
Petitioners that a perusal of the complaint on the basis of which the FIR was
registered would go to show that the essential grievance of the Respondent
No.2 is about the infringement of the design for which registration had been
granted to Respondent No.2. The complaint was, therefore, not of
infringement of a trade mark or copyright. The charge sheet too was only
for the infringement of copyright. It is submitted that the Petitioner has
already filed objections to the registration of the copyright since no
copyright registration ought to have been granted. It is submitted that a
perusal of the charge sheet shows that the IO had compared the products of
the parties although such products by themselves were not covered under
the Copyright Act. The charge sheet had thus made a fundamental error
about the applicability of the Copyright Act 1957. If the complaint was
read as a whole the provisions of Designs Act 2000 alone stood attracted
and that statute did not prescribe any offence. It is accordingly prayed that
the FIR should be quashed.
10. Mr. Pawan Bahl, learned Additional Public Prosecutor („APP‟)
appearing for the State, raised a preliminary objection as to the
maintainability of the present petition. He placed reliance upon the
judgment of the Supreme Court in Hamida v. Rashid @ Rasheed (2008) 1
SCC 474, Som Mittal v. Government of Karnataka (2008) 3 SCC 574 and
Central Bureau of Investigation v. K.M. Sharan (2008) 4 SCC 471 to
contend that the Petitioners have an efficacious alternative remedy before
the trial court at the stage of charge. On merits it is submitted that the
grounds urged in this petition can well be examined by the trial court and
non ground is made out for interference under Section 482 CrPC.
11. Mr. H.P. Singh, learned counsel appearing for the Respondent No.2
submits that it was plain that by using the words „Easy Walker‟, the
Petitioners were violating the copyright as well as the trademark for which
the Respondent No.2 had validly been granted registration. It is sought to be
contended that the Complainant uses its artistic work in various products as
a label and therefore, Section 15 of the Copyright Act is not attracted. It is
stated that as on 26th June 2003 the Complainant had further got registration
of its literature in respect of „Morning Walker‟. In the reply to the
application for urging additional grounds it is urged that an injunction has
been issued by the City Civil Court, Calcutta in Title Suit No. 50 of 2007
restraining the Petitioners from using the trade mark „Morning Walker‟,
Walker, Home Walker‟ and yet the Petitioners continue to violate the said
order. It is pointed out that the label prints on the body of the infringed
goods state "Easy Exerciser - Curve Oxygen Oscillation Physical
Equipment" whereas the packaging box states that "Easy Exercise Easy
Walker Curve Oxygenal Oscillation Physical Equipment." Therefore the
affixing of the mark „Easy Walker" on the packaging alone demonstrated
the malafide intention of the Petitioners. It was apparent and that they were
trying to misrepresent the infringed goods as that of Respondent No.2.
12. This Court first would like to deal with the preliminary objection raised
by the State as to the maintainability of the present petition on the ground
that an efficacious alternative remedy is available to the Petitioners. While
the judgments relied upon by Mr. Bahl, learned APP for the State, no doubt
state that this court should, in exercise of its power under Section 482
CrPC, ordinarily be circumspect in interfering with any criminal
proceedings after the filing of a charge sheet, this is not an inflexible
proposition. It was observed in Madhavrao JiwajiraoScindia v.
Sambhajirao Chandrajirao Angre (1988) 1 SCC 692 that the Court should
also "take into consideration any subject features which appear in a
particular case to consider whether it is expedient and in the interest of
justice to permit a prosecution to continue. This is so on the basis that the
court cannot be utilized for any oblique purpose and where in the opinion of
the Court chances of an ultimate conviction is bleak and therefore, no useful
purpose is likely to be served by allowing a criminal prosecution to
continue." In State of Haryana v. Bhajan Lal 1992 Supp (1) SCC 335
while summarizing the principles laid down in the various judgments of the
Supreme Court till then, the grounds on which it was held that the High
Court would be justified in exercising its power under Section 482 CrPC
were "where the allegations made in the first information report or the
complaint, even if they are taken at their face value and accepted in their
entirety do not prima facie constitute any offence or make out a case against
the accused" and "where the uncontroverted allegations made in the FIR or
complaint and the evidence collected in support of the same do not disclose
the commission of any offence and make out a case against the accused."
As regards the interference by the Court even after filing of the charge sheet
was concerned, in CBI v. K.M. Sharma 2008 (4) SCC 471 the Supreme
Court observed that according to the settled legal proposition, the High
Court ought to have critically examined "whether the allegations made in
the FIR and the charge sheet taken on their face value and accepted in their
entirety would prima facie constitute an offence for making out a case
against the accused." In Neelam Mahajan Singh v. Commissioner of
Police 53 (1994) DLT 389 (DB) it was held by this Court that there is no
restriction or limitation in the exercise of the power of the High Court to
issue a prerogative writ under Article 226 of the Constitution of India to
interfere even after a charge sheet was filed although the said power had to
be exercised with circumspection.
13. The settled position appears to be that the decision whether or not to
exercise the power under Section 482 CrPC in the instant case to quash the
FIR and the charge sheet would require examination of the FIR and the
charge sheet as a whole in order to determine whether even a prima facie
case for the offence under Section 63 of the Copyright Act is made out.
14. In the complaint filed by the Respondent No.2, which has been
substantially reproduced in the charge sheet, it is claimed that the
complainant has "obtained copyright in the original artistic work and type
comprising in the get up, style and shape. It has acquired all rights
attached to the said artistic work including a device and has exclusive right
to use or reproduce the said original artistic work comprising the get up
as well as style with the copyright registration No. A-70290/2005 dated
27.04.05." Under Section 2 (c) of the Copyright Act 1957, "an artistic work
can be a painting, a sculpture, a drawing, an engraving or a photograph,
whether or not any such work possess artistic quality" and also "work of
architecture" and "any other work of artistic craftsmanship". It is possible
that an artistic work can be commercially exploited.
15. The design of a product can also be an artistic work. Under Section 2
(d) of the Designs Act 2000 "design means only the features of shape,
configuration, pattern, ornament or composition of lines or colours applied
to any article whether in two dimensional or three dimensional or in both
forms, by any industrial process or means, whether manual, mechanical or
chemical........" Therefore, when the artistic work in question pertains
essentially to the get-up, shape and style, then the appropriate course to
adopt for the author of such design is to obtain a registration in the design
under the Designs Act 2000. Under Section 15 (2) of the Copyright Act the
copyright in any design which is registered under the Designs Act 2000
shall not subsist under the Copyright Act. That provision further states that
in the event that the copyright in any design has been registered under the
Designs Act and not under the Copyright Act, then such copyright in the
design "shall cease as soon as any article to which the design has been
applied has been reproduced more than fifty times by an industrial process
by the owner of the copyright, or, with his licence, by any other person."
16. Recently in Microfibres Inc. v. Girdhar & Co. 2009 (40) PTC 519
(Del) (DB) it was explained by the Division Bench of this Court that "if the
design is registered under the Designs Act, the design would lose its
copyright protection under the Copyright Act. If it is a design registrable
under the Designs Act but has not so been registered, the design would
continue to enjoy copyright protection under the Act so long as the
threshold limit of its application on an article by an industrial process for
more than 50 times is reached. But once that limit is crossed, it would lose
its copyright protection under the Copyright Act."
17. The Respondent No.2 clearly understood the distinction between the
registration of the design and the registration of copyright. In its notice
dated 28th September 2005 issued to one R.K. Gupta, M/s. Sriram
International, it complained of the passing off of its trademark and design
by R.K.Gupta in respect of „Morning Walker.‟ The details of the four
design registrations of Respondent No.2 were set out in the notice. These
were Registration No. 175740 dated 10th February 1998, No. 179799 dated
28th June 1999, No. 186019 dated 13th July 2001 and No. 190291 dated 25th
October 2002. Therefore, it is plain that the Respondent No.2 held
registration for the design in the product marketed by it, long before it
obtained a copyright registration.
18. There are four separate copyright registrations in favour of Respondent
No.2 in respect of its products. The copyright registration No. 70290/2005
dated 27th April 2005 shows that the title of the work is indicated as
"Morning Walker" and the class and description of the work is shown as
"artistic." It is plain that the copyright is in respect of the artistic work in
the device a photograph of which with the body print of the label „Morning
Walker‟ has been enclosed. Apart from the above copyright registration,
there are registration Nos. L- 25895 dated 16th February 2006 (in the
literary work in „Morning Walker‟ in English and Hindi), No.A-75688
dated 16th February 2006, for the artistic work in "Person doing exercise
with machine label" (of which a photograph has been enclosed) and No. A-
75643 dated 13th February 2006 for the artistic work in the label "Morning
Walker‟ a copy of which is enclosed with the certificate. Therefore, as on
the date of the letter dated 22nd October 2005 made to the DCP Crime
Branch EOW Cell, and on the date of the complaint dated 31 st October to
the learned ACMM, the Respondent No.2 had only the first mentioned
copyright registration i.e. A-70290/2005 dated 27th April 2005. The other
three copyright registrations were granted later and in fact do not find
mention even in the charge sheet filed on 4th December 2006.
19. What is significant is that the complaint made to the learned ACMM,
which has formed the basis of the FIR, makes no mention of the
registrations held by the Respondent No.2 under the Designs Act. This was
also not mentioned in the notice dated 14th December 2005 issued by the
lawyers of Respondent No.2 to Petitioner No.2. In the complaint it was
mentioned that the complainant had "recently come across some certain
wholesale sellers and retailers in the city of Delhi supplying
spurious/counterfeited/pirated copies of the complainant‟s artistic work
including reproduction of the device in material form and use of
identical/deceptively similar trademarks, thereby infringing the
complainant‟s copy right and trade mark." In para 10 of the complaint it
was alleged that the Petitoner No.2 was marketing counterfeit products
"made of low quality and design as well as cheap compared to the sale price
of the complainant in order to completely defraud the customers..." That
the principal grievance of Respondent No.2 was about the infringement of
the design is also apparent from para 12 where it was stated: "In addition,
the illegal reproduction of the complainant‟s copy right in the original
artistic work comprising the get up, layout of the unique style including
the device in the various material form known by the accused
persons...amount to infringement....". In para 17 of the complaint, it was
stated that "the accused persons have knowingly reproduced in material
form the complainant‟s artistic work and infringed the copyright of the
complainant for gain in the course of their trade and business without any
authority/assignment from the complainant and as such have committed the
offence under the provisions of Copyright Act." The complaint which was
essentially about violation of the complainant‟s registered design was made
to appear as if the infringements were of its trademarks and copyright. This
perhaps was on account of the fact that the Designs Act 2000 contains no
provision for prosecuting an infringer of a registered design.
20. Although the complaint as also against the infringement of the
trademark of the Respondent No.2, it was noticed by the IO in the charge
sheet that as of the date of filing of the complaint, the complainant‟s
trademark registration applications were pending. Therefore, in terms of
Section 27 of the Trade Marks Act 1999 no action could be initiated against
the Petitioner No.2 for infringement of the unregistered trade mark.
Therefore, the IO correctly came to the conclusion that the offence under
Section 103/104 of the Trade Marks Act was not attracted in this case. The
IO then proceeded to compare the products „Easy Walker‟ of the Petitioners
with that "Morning Walker" of Respondent No.2 and concluded that "the
name/word „Easy Walker‟ constituted a copyright violation on part of the
Petitioners". It was further concluded that "the description of equipment as
level prints on body is also deceptively similar of the infringed Easy Walker
Exerciser machine."
21. The conclusion arrived at by the IO in the charge sheet that there was a
violation of Copyright Act (after comparing of the two products) was
obviously under a misconception of the law. The product of the Petitioners
is not „Easy Walker‟ but „Home Walker.‟ As on the date of the complaint
the complainant had a copyright registration only in respect of the artistic
work in the „Morning Walker‟. The IO appears not to have considered
either Section 15 (2) of the Copyright Act or the relevant provisions of the
Designs Act, 2000 or the fact that the RespondentNo.2 in fact holds the
registration of the design in respect of its products. Respondent No.2
admittedly held four registrations under the Designs Act in respect of the
product in question even as of that date. Under Section 15 (2) of the
Copyright Act, a copyright granted in respect of a product for which a
registration has been granted under the Designs Act, would cease as soon as
any article to which the design has been applied has been reproduced more
than fifty times by an industrial process by the owner of the copyright.
There can be no manner of doubt that the product of Respondent No.2 has
been reproduced more than 50 times. Therefore, any copyright in such
design would cease by operation of law. The present case appears to be
squarely covered y the observations of the Division Bench of this Court in
Microfibres Inc. v. Girdhar & Co. that: "once the artistic work, by
industrial application transforms into a commercially marketable artefact,
its design falls within the domain of the Designs Act and the protection to
the design founded upon the artistic work is limited by Section 15 of the
Copyright Act and the provisions of the Designs Act." Merely because the
Designs Act does not contain any provision for prosecuting an infringer,
resort cannot be had to Section 63 of the Copyright Act particularly where
the complainant holds registration for the design and has exploited it by
reproducing the product more than 50 times.
22. In the considered view of this Court, the FIR and chargesheet when
examined as a whole do not even prima facie make out a case for violation
of the Copyright Act 1957. In other words, the offence under Section 63 of
the Copyright Act is not even prima facie attracted. Since this was the only
offence for which the chargesheet was filed against the Petitioners, the
resultant criminal proceedings cannot be allowed to continue.
23. Before concluding it requires to be noticed that at the time when the
complaint was filed, the Respondent No.2 had not obtained registrations in
respect of its trademarks. That was the reason why in terms of Section 27 of
the Trade Marks Act no charge sheet was filed for an offence under that
Act. After the filing of the complaint the Respondent No.2 claims to have
obtained registrations for its trademarks and three further copyright
registrations. Therefore, for any act of infringement after the date of the
chargesheet, not forming part of the FIR No.52 of 2006, it would be open to
the Respondent No.2 to seek appropriate remedies available to it in law.
24. For the aforementioned reasons, the Complaint No. 55/1/ 2005 (titled
Spaceage Multi Products Pvt. Ltd. v. Darshan Singh & Ors.) and FIR No.
52 of 2006 dated 12th January 2006 arising therefrom registered at PS
Saraswati Vihar, New Delhi and all proceedings consequent thereto
including the charge sheet dated 4th December 2006 are hereby quashed.
Crl.M.C. No.3650 of 2006 and Crl.M.A. 4130/2007 are allowed. Crl.M.A.
No.5869/06 is disposed of.
25. A certified copy of this order be sent to the concerned MM forthwith.
S. MURALIDHAR, J.
SEPTEMBER 11, 2009
rk
