Delhi High Court Directs Removal Of 'Shree Sakshat' Copyright Registration For Copying Heineken's Tiger Beer Logo

The Delhi High Court on Tuesday directed the Registrar of Copyrights to remove from the Register a copyright registration obtained by Vijay Keshav Wagh for the artistic work titled “SHREE SAKSHAT,” holding that it copied in its entirety the TIGER beer logo owned by Heineken Asia Pacific Pte. Ltd.

Justice Tushar Rao Gedela held that a comparison of the two logos showed that Wagh had reproduced Heineken's tiger device in its entirety, with only minor additions that did not alter the dominant feature of the mark.

Heineken Asia Pacific Pte. Ltd., a Singapore-based company engaged in the manufacture and supply of beverages, including beer, had approached the court under Section 50 of the Copyright Act, 1957, seeking rectification of the Register of Copyrights.

The company contended that Wagh had unauthorisedly adopted its well-known TIGER logo in an artistic work titled “SHREE SAKSHAT” and obtained copyright registration for it in 2017.

Heineken argued that the impugned artistic work merely incorporated the tiger device used in its logo, while adding a letter “V” in the background and placing the words “SHRI” (in Hindi) and “SAKSHAT” (in English) above and below the device respectively. The company also contended that Wagh had falsely declared in his copyright application that the work was “unpublished,” despite having earlier claimed prior use of the same mark in a trademark application.

Heineken further submitted that its tiger device constitutes an original artistic work created by its design team and enjoys protection in India by virtue of the Berne Convention.

Wagh's counsel opposed the plea, arguing that no exclusivity could be claimed over the TIGER logo since several brands and trademarks use the word “TIGER” or a tiger device.

Rejecting this argument, the court held that the similarities between the two marks were unmistakable.

“The mere placement of the letter 'V' in the backdrop with the letters “SHRI” (in Hindi) and “SAKSHAT” (in English) placed at the top and bottom of the logo respectively, would not, ipso facto, diminish the effect or the essentiality of the TIGER logo. In other words, the TIGER logo is the dominant feature or the prominent aspect of the entire mark/label of respondent no.1,” the court observed.

The court also noted a procedural lapse on the part of the Trade Marks Registry. It found that the mandatory search certificate issued by the Registry prior to the copyright registration had failed to cite Heineken's earlier registered trademarks.

According to the court, this omission prevented the Registrar of Copyrights from properly examining whether the work claimed by Wagh was original or deceptively similar to an existing trademark.

The court further found that Wagh had made a false declaration in his copyright application by stating that the work was unpublished, despite having earlier claimed use of the mark in trademark proceedings.

“On an overall examination and appreciation of the facts and law, this Court is of the considered opinion that the registration granted to the respondent no.1 vide the Registration Certificate dated 04.05.2017 for the impugned artistic work cannot be permitted to continue in the Register of Copyright,” the court held.

Accordingly, the court directed the Registrar of Copyrights to remove the impugned artistic work from the Register of Copyrights and report compliance within four weeks.