Fortune Marketing Private Limited v. Gujarat Pesticides & Ors.: Delhi High Court Reinforces Copyright and Trademark Safeguards
Introduction
The judgement delivered by the Delhi High Court on 29 May 2026 in Fortune Marketing Private Limited v. Gujarat Pesticides & Ors is an important decision at the intersection of trademark law and copyright law. The case highlights the safeguards built into the Copyright Act, 1957, to prevent parties from obtaining copyright registrations over artistic works that incorporate trademarks already belonging to others.
The court emphasised that copyright registration cannot be used as an indirect route to secure rights over a mark when trademark registration itself is disputed or opposed.
The decision is significant because it reinforces the legislative purpose behind Section 45 of the Copyright Act, 1957, and protects the integrity of both the Trade Marks Register and the Copyright Register.
The court also clarified the meaning of the expression “person aggrieved” under Section 50 of the Copyright Act and recognised the rights of trademark proprietors to challenge copyright registrations that adversely affect their trademark interests.
Factual and Procedural Background
The petitioner, Fortune Marketing Private Limited, is the proprietor of the well-known mark “ZOOOK” and its variants.
The company has been using the mark since 2013 in relation to electronic products and has secured several trademark registrations as well as copyright registrations in its logo and artistic works.
According to the petitioner, the mark “ZOOOK” is a coined and distinctive expression that has acquired substantial goodwill and reputation through:
- Extensive sales
- Advertising campaigns
- Celebrity endorsements
- Sponsorship of sporting events
- Continuous commercial use
The dispute began when Gujarat Pesticides, the first respondent, filed a trademark application in 2019 for a mark incorporating the word “ZOOOK” in Class 1.
The petitioner opposed the application. Subsequently, the respondent withdrew the application.
However, shortly thereafter, the respondent filed fresh trademark applications for:
- The wordmark “ZOOOK”
- A label mark containing the same expression
These applications were also opposed by the petitioner and remained pending before the Trade Marks Registry.
While these trademark disputes were continuing, the respondent secured copyright registration on 25 April 2024 for an artistic work and packaging label titled “ZOOOK” under Registration No. A-153061/2024.
The petitioner discovered this registration and approached the Delhi High Court under Section 50 of the Copyright Act seeking cancellation of the copyright registration.
The petitioner argued that the respondent had failed to obtain trademark registration and was now attempting to achieve the same result through copyright registration.
It was also alleged that the copyright registration was granted on the basis of an incorrect search certificate issued by the Trade Marks Registry and that the petitioner was never notified despite having a direct interest in the subject matter.
Key Parties and Dispute Overview
| Particulars | Details |
|---|---|
| Petitioner | Fortune Marketing Private Limited |
| Respondent No. 1 | Gujarat Pesticides |
| Disputed Mark | ZOOOK |
| Trademark Use by Petitioner | Since 2013 |
| Trademark Class Involved | Class 1 (Respondent’s application) |
| Copyright Registration Date | 25 April 2024 |
| Copyright Registration Number | A-153061/2024 |
| Legal Provision Invoked | Section 50, Copyright Act, 1957 |
| Primary Relief Sought | Cancellation of Copyright Registration |
Core Legal Issues
- Whether copyright registration can be used to indirectly secure rights over a disputed trademark.
- Whether the respondent obtained copyright registration despite pending trademark opposition proceedings.
- Whether the petitioner qualified as a “person aggrieved” under Section 50 of the Copyright Act, 1957.
- Whether the copyright registration adversely affected the petitioner’s existing trademark rights.
- Whether the registration process was influenced by an incorrect search certificate issued by the Trade Marks Registry.
Petitioner’s Contentions
The petitioner contended that it was the prior adopter and registered proprietor of the mark “ZOOOK” and had established significant goodwill and reputation through long-standing commercial use.
It argued that the respondent’s trademark applications had already been opposed and remained pending before the Trade Marks Registry.
According to the petitioner, the respondent attempted to circumvent trademark law by obtaining copyright registration over an artistic work prominently featuring the disputed mark.
The petitioner further alleged that:
- The respondent failed to obtain trademark registration.
- The respondent sought equivalent protection through copyright registration.
- The Copyright Office granted registration without adequately considering the petitioner’s rights.
- An incorrect search certificate contributed to the registration process.
- The petitioner was not notified despite being directly affected.
Importance of the Decision
This judgement underscores the principle that copyright law and trademark law operate within distinct legal frameworks and cannot be manipulated to achieve indirectly what cannot be secured directly.
The ruling strengthens the safeguards embedded in Section 45 of the Copyright Act, 1957, and protects the integrity of both statutory registers maintained under copyright and trademark law.
It also affirms the right of trademark proprietors to challenge copyright registrations that may adversely impact their existing trademark interests and commercial goodwill.
Dispute Before the Court
The principal dispute before the court was whether the copyright registration granted in favour of Gujarat Pesticides for the artistic work “ZOOOK” was valid.
The petitioner contended that it was the prior adopter, user, and registered proprietor of the ZOOOK mark. It argued that the respondent’s artistic work substantially incorporated the petitioner’s registered trademark and that the copyright registration had been obtained despite pending trademark disputes and conflicting marks already existing on the Trade Marks Register.
The respondent, on the other hand, argued that copyright and trademark rights operate independently. According to the respondent, merely because the petitioner owned trademark rights in the word “ZOOOK” did not mean that the respondent could not obtain copyright registration for an original artistic work containing that word. The respondent further argued that the petitioner was not a “person aggrieved” under Section 50 of the Copyright Act and therefore had no right to seek cancellation of the registration.
The government authorities, namely the Registrar of Copyrights and the Registrar of Trade Marks, defended the issuance of the copyright registration and maintained that the Search Certificate had been properly issued.
Reasoning and Analysis of the Judge
The Court placed considerable emphasis on the proviso to Section 45(1) of the Copyright Act, 1957. Under this provision, where an artistic work is capable of being used in relation to goods or services, the applicant must obtain a certificate from the Registrar of Trade Marks confirming that no identical or deceptively similar trademark has been registered or applied for by another person.
The court explained that this requirement exists to prevent abuse of copyright registration and to ensure that individuals do not copy existing trademarks and then claim copyright protection over them.
Importance of Section 45 of the Copyright Act
- Prevents misuse of copyright registration.
- Protects existing trademark proprietors.
- Avoids overlapping and conflicting intellectual property rights.
- Ensures scrutiny before registration of artistic works used in commerce.
Reliance on Hugo Boss Decision
In reaching its conclusion, the Court relied heavily upon the decision in Hugo Boss Trademark Management GmbH & Co. KG v. Sandeep Arora Trading as Arras The Boss and Others, 2023 SCC OnLine Del 7956. In that case, the Delhi High Court had observed that the purpose of Section 45 is to prevent unscrupulous parties from copying established trademarks and subsequently seeking protection through copyright registration. The court noted that the legislature intentionally incorporated this safeguard because artistic works and label marks often overlap in commercial practice.
Reference to Marico Case
The court also referred to Marico Ltd. v. Mrs Jagjit Kaur, 2018 SCC OnLine Del 8488, where the Delhi High Court recognised that although copyright law and trademark law are separate statutory regimes, conflicts may arise where artistic works are used as trademarks. The proviso to Section 45 was therefore enacted to address precisely such situations.
Procedural Irregularities Found by the Court
Applying these principles, the court found serious procedural irregularities in the present matter. The evidence showed that when the respondent applied for the Search Certificate, the Examination-cum-Search Report dated 1 March 2023 had identified conflicting marks belonging to the petitioner. Despite this, a search certificate dated 26 October 2023 was subsequently issued stating that no similar marks existed.
The court found this contradiction impossible to reconcile. According to the Court, once conflicting marks had already been identified, the subsequent issuance of a certificate certifying the absence of conflicting marks was clearly erroneous. This incorrect certificate became the foundation upon which the copyright registration was granted.
The court observed that the registration process had effectively begun with an inaccurate premise, and therefore the resulting copyright registration could not be sustained.
Timeline of Events
| Date | Event | Observation |
|---|---|---|
| 1 March 2023 | Examination-cum-Search Report issued | Conflicting marks of the petitioner were identified. |
| 26 October 2023 | Search Certificate issued | The certificate stated that no similar marks existed. |
| Subsequent Period | Copyright Registration Granted | Registration was based upon the search certificate. |
Person Aggrieved Under Section 50
Another important issue concerned the meaning of “person aggrieved” under Section 50 of the Copyright Act. The Court rejected the respondent’s argument that the petitioner lacked standing. Since the petitioner was the registered proprietor and prior user of the ZOOOK mark and the impugned artistic work incorporated that very mark, the petitioner had a direct, substantial, and legitimate interest in the dispute. The Court therefore held that the petitioner clearly qualified as a person aggrieved.
Why the Petitioner Qualified as a Person Aggrieved
- Registered proprietor of the ZOOOK trademark.
- Prior user of the mark.
- The impugned artistic work incorporated the same mark.
- Direct commercial and legal interest in the dispute.
- Potential prejudice arising from the copyright registration.
Violation of Rule 70(9) of the Copyright Rules, 2013
The court also found a violation of Rule 70(9) of the Copyright Rules, 2013. This rule requires notice to be given to persons having an interest in the subject matter of the copyright application. Since the respondent was fully aware of the ongoing trademark disputes and oppositions involving the petitioner, the petitioner ought to have been notified. Failure to provide such notice deprived the petitioner of an opportunity to contest the registration before it was granted.
Requirements Under Rule 70(9)
- Notice must be issued to interested parties.
- Persons affected by the registration process should be heard.
- Opportunity to raise objections must be provided.
- Compliance with principles of natural justice is essential.
Importance of Procedural Fairness
The court observed that procedural fairness is an essential component of the registration process. When a party with a direct and obvious interest is denied participation, the resulting registration becomes vulnerable to challenge.
Key Findings of the Court
- The search certificate was issued despite previously identified conflicting marks.
- The certificate formed the basis of the copyright registration.
- The registration process suffered from procedural irregularities.
- The petitioner qualified as a “person aggrieved” under Section 50 of the Copyright Act.
- Rule 70(9) of the Copyright Rules, 2013, was violated.
- Procedural fairness and natural justice were not adequately observed.
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Final Decision of the Court
The Delhi High Court allowed the petition and revoked Copyright Registration No. A-153061/2024 relating to the artistic work and packaging label titled “ZOOOK”.
The court also set aside the search certificate dated 26 October 2023 issued by the Trade Marks Registry.
The original copyright application filed by Gujarat Pesticides was revived for fresh consideration. The court directed the Trade Marks Registry to reconsider the matter from the stage of the Examination-cum-Search Report dated 1 March 2023, issue a fresh Search Certificate after proper examination, and thereafter allow both parties an opportunity to file objections and make submissions before a final decision is taken. The entire exercise was directed to be completed within four months.
Importantly, the Court clarified that it had not expressed any opinion on the ultimate merits of the respondent’s copyright claim and had confined itself to examining the procedural validity of the registration process.
Key Directions Issued by the Court
- Revocation of Copyright Registration No. A-153061/2024 relating to the “ZOOOK” artistic work and packaging label.
- Setting aside of the search certificate dated 26 October 2023 issued by the Trade Marks Registry.
- Revival of the original copyright application filed by Gujarat Pesticides.
- Fresh examination by the Trade Marks Registry from the stage of the Examination-cum-Search Report dated 1 March 2023.
- Issuance of a fresh search certificate after proper examination.
- Opportunity to both parties to file objections and make submissions.
- Completion of the entire process within four months.
Point of Law Settled
The judgement establishes that copyright registration of an artistic work containing a trademark cannot be sustained if the mandatory safeguards under Section 45 of the Copyright Act are not properly followed.
The decision further clarifies that a registered trademark proprietor whose mark is incorporated into an impugned artistic work is a “person aggrieved” under Section 50 of the Copyright Act and is entitled to seek cancellation of the copyright registration.
The judgement also reinforces that an incorrect search certificate issued contrary to the Trade Marks Register can vitiate the entire copyright registration process. Compliance with Rule 70(9) of the Copyright Rules and adherence to principles of procedural fairness are essential requirements when granting copyright registration for artistic works connected with commercial goods and services.
Legal Principles Emerging from the Judgment
- Mandatory compliance with Section 45 of the Copyright Act is essential.
- A trademark owner can challenge copyright registration where its mark forms part of the disputed artistic work.
- An erroneous search certificate can invalidate the copyright registration process.
- Procedural fairness remains a fundamental requirement in copyright registration proceedings.
- Authorities must strictly comply with Rule 70(9) of the Copyright Rules.
Case Details
| Particulars | Details |
|---|---|
| Case Title | Fortune Marketing Private Limited Vs Gujarat Pesticides & Ors. |
| Date of Judgment | 29 May 2026 |
| Case Number | C.O.(COMM.IPD-CR) 24/2024 |
| Neutral Citation | 2026:DHC:4850 |
| Court | High Court of Delhi at New Delhi |
| Judge | Hon’ble Ms Justice Jyoti Singh |
Conclusion
The Delhi High Court’s decision highlights the importance of procedural compliance in copyright registration matters involving trademarks. The judgement underscores that statutory safeguards under the Copyright Act and Copyright Rules cannot be bypassed and that any error in the trademark search process may affect the validity of the entire copyright registration. The ruling further strengthens the rights of registered trademark proprietors to challenge copyright registrations that incorporate their marks and reinforces the principles of fairness, transparency, and due process in intellectual property administration.
