Delhi High Court Revokes Gujarat Pesticides' ZOOOK Copyright Registration Over Flawed Search Certificate

The Delhi High Court has recently revoked a copyright registration granted to Gujarat Pesticides for an artistic work titled "ZOOOK", after finding procedural flaws in the process that led to its grant.

The court noted that the registration was founded on a Trade Marks Search Certificate that was contrary to the Trade Marks Register. It also found that the registered proprietor of the ZOOOK mark was not notified despite having an interest in the subject matter.

Justice Jyoti Singh, in a judgment dated May 29, allowed a petition filed by Fortune Marketing Private Limited, the proprietor of registered ZOOOK trademarks and a copyright registration in its ZOOOK device mark. The court directed that Gujarat Pesticides' copyright application be reconsidered afresh after hearing both sides.

Observing that the process leading to the registration was flawed, Justice Singh held:

"It is thus clear that the start line of the journey for copyright registration was unfortunately incorrect and the destination had to be wrong. The Search Report is thus inaccurate and contrary to the Register of Trade Marks and this is enough to set aside the impugned copyright registration."

Fortune Marketing had approached the Court seeking cancellation of a copyright registration granted on April 25, 2024 in favour of Gujarat Pesticides for a packaging label titled "ZOOOK". It contended that it had been using the ZOOOK mark since 2013. It also pointed to its trademark registrations for ZOOOK and its variants, as well as a copyright registration in its ZOOOK device mark.

The dispute traces back to trademark proceedings between the parties. Gujarat Pesticides had filed a trademark application in 2019 containing the word ZOOOK. The application was later withdrawn after Fortune Marketing filed an opposition.

In December 2022, Gujarat Pesticides moved fresh trademark applications for the word mark ZOOOK and a packaging label incorporating the mark. Both applications drew oppositions from Fortune Marketing and remain pending.

As part of the process for obtaining a Trade Marks Search Certificate, the Trade Marks Registry issued an Examination-cum-Search Report on March 1, 2023. The report flagged several conflicting marks, including Fortune Marketing's registered ZOOOK device marks in Classes 13 and 35.

The court noted that in its response to the report, Gujarat Pesticides stated that registration of one of its earlier marks was pending even though the application had already been withdrawn. The Court also noted that Gujarat Pesticides did not respond to the cited ZOOOK device mark of Fortune Marketing.

Recording this aspect, Justice Singh observed,

"It be also noted that while Respondent No.1 responded to the other cited marks stating that they were abandoned or refused but gave no reply to the device mark of the Petitioner, knowing it had no answer."

Despite the conflicting marks identified in the Examination-cum-Search Report, a Search Certificate was issued on October 26, 2023 stating that there was no registration of similar marks. The Court held that this certificate led to the grant of the impugned copyright registration.

The court also held that Fortune Marketing was a "person aggrieved" and ought to have been notified of the copyright application. According to the court, Fortune Marketing had a real and tangible interest in the registered work because it incorporated the ZOOOK mark.

On the failure to issue notice, Justice Singh held:

"In light of this, Petitioner is also right that Respondent No.1 ought to have notified the Petitioner under Rule 70(9) of 2013 Rules as the Petitioner does have an interest in the subject matter and this requirement becomes even more pronounced in the present case since Respondent No.1 was fully aware that Petitioner was disputing its very claim over the mark ZOOOK and one opposition had succeeded and two are pending."

Holding that the incorrect Search Certificate and the failure to notify Fortune Marketing vitiated the registration process, the Court cancelled the copyright registration as well as the search certificate.

The court revived Gujarat Pesticides' original application. It directed that the matter be reconsidered from the stage of the Examination-cum-Search Report after granting both parties an opportunity to file submissions and be heard.