Delhi High Court Refuses Japan Tobacco's Plea To Remove 'CAMEL COLLECTION' Copyright Registration

Japan Tobacco, which makes CAMEL cigarettes, and its US affiliate Worldwide Brands Inc., which handles the CAMEL brand on clothes, bags and footwear, filed the petition under Section 50 of the Copyright Act, 1957.

They said the CAMEL lettering and camel device have been used since 1913 for cigarettes and since the late 1970s for garments. According to them, Central Wearhouse and Mrs. Veena R. Hinduja, who applied for the registration, simply lifted these artworks and superimposed one over the other.

The registration was granted on 22.10.1997 and claims the label was first published in 1992.

The companies tied this to a 1988 licence that Worldwide Brands gave to Germany's Dornbusch GmbH, allowing it to make CAMEL clothing and outsource the manufacturing. In 1992, Dornbusch outsourced garment production to Gokaldas Exports, a sister concern of Central Wearhouse.

Japan Tobacco argued that this was no coincidence: Central Wearhouse claimed first publication of its label in the same year it began making CAMEL garments for Dornbusch, so it must have known the original marks and copied them. Since Mrs. Hinduja was also a director and shareholder in Gokaldas, they said, that knowledge could be attributed to her.

They also argued that Central Wearhouse had produced nothing to show who designed the work, and when and how, and that the mandatory steps under Section 45(1) were not followed.

Central Wearhouse said Japan Tobacco had no right to bring the case at all. It argued that Japan Tobacco has never made, imported, advertised or sold CAMEL garments in India, that its Indian trademark application for CAMEL was filed on a "proposed to be used" basis and later withdrawn, and that it had exited the Indian market even for tobacco in 2011.

It said the label was designed by Gokaldas's in-house design team and used since 1992, and that its own trademarks for CAMEL and CAMEL COLLECTION claim use from 01.01.1992. Its counsel conceded there was no documentary proof of how the work was conceived, but said this was explained by the long lapse of time and the sale of the business in 2008.

The Court began with Japan Tobacco's legal argument and accepted part of it. Noting that the International Copyright Order, 1999 was published on 06.04.1999, it said that "there is no proscription on the transborder territoriality of copyrights, subject of course, to the provisions of Act."

So a work published abroad can be protected in India. But that did not decide the case. In the Court's words, "whether the artistic work claimed, is in fact an original artistic work entitled to be vested with copyright, is altogether a different matter."

The real question was who first created the work. Under Section 17, the Court said, "an individual or an entity claiming copyrights in an 'Original Artistic Work' has to necessarily establish the fact of being the 'First Owner' in such copyright." Holding a trademark registration would not do.

It "by itself would not be sufficient to establish the owner of the trademark as the 'First Owner' of the copyrights in the artistic work embodied therein. Section 17 of the Act, does not postulate any deeming fiction."

Japan Tobacco's only proof of how the CAMEL artwork came about was a set of books on CAMEL cigarette history.

The Court found that these were never properly proved in court. Central Wearhouse had denied the documents by an affidavit dated 09.03.2023, and Japan Tobacco did not prove them as the law of evidence requires.

"Save and except for the aforesaid books, there is no iota of evidence to establish any of the said averments," the Court said. It added that under the Evidence Act the burden shifts to the other side only after the party making the claim first discharges its own, and that Section 48 of the Copyright Act raises a presumption in favour of the registered owner.

Japan Tobacco also relied on what it called admissions by Central Wearhouse in the connected trademark suit, Japan Tobacco vs. D. Jhamnadas (2018). There, Central Wearhouse had said it exported garments to Dornbusch, the licensee of Japan Tobacco, and had used CAMEL with the camel device since 1992.

The Court agreed these "appear to be admissions" but held they were "not unequivocal or unambiguous or clear", because Central Wearhouse had also claimed it was making CAMEL garments under its own label since 1992, with Japan Tobacco's knowledge. That suit also concerned trademark infringement, where the territorial principle applies strictly, and not copyright.

At best, the Court said, they allowed "only an inferential analysis" that did not establish Japan Tobacco's own First Ownership.

The Court called the arguments on Section 45(1) and Rule 70 of the Copyright Rules, 2013 "academic" and "unpersuasive" given its finding, and did not examine the judgments cited by either side.

"The petitioner has been unable to persuade this Court for rectification of the Register of Copyrights by expunging or removing the impugned copyright registration of respondent no.1. Resultantly, the petition is dismissed," the Court ordered.

For Japan Tobacco: Advocates Peeyoosh Kalra, Gaurav Mukerjee, Saumya Tripathi, Meghana Nair and Rohan Kapoor

For The Central Wearhouse: Advocates Navroop Singh and H.P. Singh