Polo Sport vs. Sport Polo: Delhi High Court orders Register of Copyrights to cancel copyright registration of Sport Polo owing similarity to well-known mark Polo Sport
“The artistic works in the logo of the respondent no.1 is almost an imitation of the trademarks of the petitioner and is not an original artistic work for the purposes of registration under the Act and deserves to be expunged from the Register of Copyrights.”
– Justice Amit Bansal, Delhi High Court
The petitioner’s trademark ‘POLO SPORT’ has been registered in India since 1967 and has been used for several years. The petitioner is also a registered proprietor of a device mark containing ‘a horse with a person riding it while flinging his club to hit the ball in the sport’. On 19th December 2011, in the case The Polo/Lauren Company L.P. Vs. Rohit S. Bajaj and Ors., the Delhi High Court hasrecognised petitioner’s trademark as a well-known mark.
The petitioner came across the respondent’s copyright registration application published under ‘artistic work’ and alleged that the respondent’s copyright has several similarities with the petitioner’s mark. The respondent misappropriated the words ‘Polo’ and ‘Sport’ entirely. The only distinguishing feature is that respondent no.1 has added four horses with riders playing the polo game, compared to the petitioner’s mark having one horse with a rider playing polo.
The petitioner has thus filed the present rectification petitioner seeking removal of registration made in the Register of Copyright in respect of impugned artwork of the respondent under the name of ‘SPORTS POLO’.
1. Whether registration certificate granted in favor of respondent no.1, i.e., Sandeep Arora should be canceled?
2. Is the respondent’s copyright an “original” artistic work?
The court observed that while comparing two marks, the qualitative differences need to be given preference over the quantitative differences. In the present case, the respondent’s mark has a striking resemblance to the petitioner’s mark. Respondent no.1 has used four horses with riders, tilted in a manner very similar to the logo of ‘horse with a person riding it while flinging his club to hit a ball in the sport of polo,’ which is a registered trademark of the petitioner. Respondent no.1 has also used the wordmarks of the petitioner, i.e., SPORTS and POLO. The respondent’s label ‘SPORTS POLO’ substantially represents the petitioner’s mark ‘POLO SPORT.’ Therefore, the respondent’s copyright is not an original artistic work under the provisions of section 13(1)(a) of the Copyrights Act 1957. Therefore, the petitioner is aggrieved and is entitled to maintain the present petition under Section 50 of the Copyrights Act 1957.
Further, the documents submitted by the petitioner establish that their trademarks have been in the market since 1967. Due to their popularity, the respondents have substantially reproduced the plaintiff’s logo in their logo.
The court further held that under Section 45(2) of the Copyrights Act 1957, the Registrar of Copyrights has to hold an inquiry that no trademark is identical and deceptively similar to such artistic work that has been registered under the Trademarks Act, which stems from the Act’s proviso to Section 45(1). Whereas in the present case, the Registry failed to act in terms of Section 45 of the Act. A careful search of the Register of Trademarks would have indicated the similarity between the petitioner’s trademarks, in respect of which the copyright also exists in the respondents’ artistic work.
In support of the above contention, reference has been made to the case of Marico Ltd. Vs. Mrs. Jagjit Kaur, 2018 SCC OnLine Del 8488 which dealt with the issue of rectification of copyright. The Court in this case observed that any entry made of a work that is not original would be an entry wrongly made in the Register. Further, copyright registration can only be granted to original artistic works, and copyright registration cannot be granted to outcomes that are a reproduction or imitation of other original works. If any person has obtained copyright registration of a work that is not an original work under Section 13 of the Copyright Act, such registration or entry made in the Register would be an entry wrongly made. Justice Amit Bansal of the Hon’ble Delhi High Court allowed the plaintiff’s petition and directed the Register of Copyright to cancel the copyright registration for the artwork titled ‘SPORTS POLO’ under A-136709/2021 from the Register of Copyrights within eight weeks from the order date.
Read the judgement here
— Deepanshi Kapoor; student at Alliance University, Bangalore
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