This civil appeal under section 77 of the Copyright Ordinance, 1962 challenges an order of the Copyright Board whereby the respondent's application for rectification and expungement of copyright entries in respect of an artistic work and label design "PONY" in favor of the appellant was allowed. The core legal question was whether the appellant had validly established continuous publication and ownership of the copyright for the artistic work or label design since 1983, or whether the copyright registration was merely an attempt to infringe upon the respondent's established trademark. The Sindh High Court dismissed the appeal, holding that the appellant failed to produce any evidence or documents to substantiate publication or creation of the work since 1983, whereas the respondent demonstrated continuous prior user of the trademark "PONY" for cables and wires since 1986. The court laid down the principle that copyright material cannot be used as a substitute for a trademark, and registration of copyright cannot be utilized as a shield to misappropriate the goodwill and trademark of another person.
1. SAJJAD ALI SHAH, J.---Through this Appeal under section 77 of the Copyright Ordinance, 1962 the appellant has called in question order of the Copyright Board passed in their meeting dated 26-3- 2009 whereby the respondent's application for Rectification of Entries Nos.14735 Copr. And 14736 Copr. Existing in favour of the appellant in respect of artistic work/ label design PONY (PEWC) was allowed and the said entries were expunged.
2. ' Mr. Muhammad Nadeem Qureshi learned counsel for the appellant has contended that the application for registration of copyright filed by the appellant on 26-1-2006 in respect of PVC Telephone Cable "PONY" contained a claim that such artistic design was continuously published since, 1983 and on the basis of such claim, expunged copyright was registered in favour of the appellant on 26-1-2006. Per learned counsel on the other hand the respondent claimed in his Rectification Petition to be the registered owner of Trademark "PONY" and its continuous use since, 1984 and the Board without dilating upon the claim of the appellant as to the continuous publication of such copyright since, 1983 directed expungement of the appellant's copyright.
3. ' On the other hand Mr. All Mumtaz appearing for the respondent contends that the appellant in fact was serving with the respondent and after leaving the job has started a parallel business by adopting the trademark of the respondent. It was contended that the respondents are using trademark 'PONY' in respect of cables and wires since, 1984 and on 1-11-2003 their trademark was registered vide Registration Application No,189679. Learned counsel has further referred to various work order filed along with Counter Affidavit in order to establish that such trademark was in the continuous use of respondent since, 1984. It was next contended that the appellant is not in possession of a single document to establish his claim regarding continuous publishing the expunged copyright. Per learned counsel, soon after registration of expunged copyright in favour of the appellant the respondent filed suit bearing No,108 of 2006 and this Court vide its order dated 12-2-2006 had restrained the appellant from using the respondent trademark "PONY" and for this reason the appellant is not in a position to produce any evidence to show that such copyright was ever published even after February, 2006. Mr. Ali Mumtaz has placed reliance on the judgment of this Court in the case of Haji Muhammad Afzal and Muhammad Yousaf v. Messrs Hitachi Limited 2007 CLD 202 and Pakistan Drug House (Pvt.) Limited v. Rio Chemical Company 2003 CLD 1531 to contend that Copyright material cannot be used as substitute of Trademark.
4. ' I have heard learned counsel for the respective parties and perused the record as well as case- law cited at bar.
5. The record reflects that Messrs National Enterprises which is claimed to be the predecessor-in- interest of the respondent was using Trademark "PONY" in respect of able and wires since, 1986 and even if the benefit of such user is not given to the respondent still there is ample evidence in the shape of work order placed on the respondent by different companies demanding PONY cable to show the user of Trademark PONY by the respondent since, 1995. Perusal of the Counter Affidavit at page 47 reflects work order dated 28-10-1986 placed by Messrs Habib Sugar Mills Limited upon respondent's predecessor-in-interest demanding PONY cable and thereafter work order of Messrs Lucky Cement Limited dated 14-3-1995 at page 51 and several other demanding such cables from the respondent. On the other hand the appellant has totally failed to place anything on record to show that the copyright claimed by the appellant since, 1983 was ever published or even anything to establish the fact that any idea was conceived by him since 1983. Section 4 of the Copyright Ordinance, 1962 provides meaning of word "publication" and gist whereof appears to be that the work copyright whereof is claimed should be published to the public in sufficient quantities.
6. Consequently Mr. Nadeem Qureshi was asked to show any document/evidence in support of appellant claim to have conceived an idea or that the copyright claimed was ever published by the appellant since, 1963 but he was not able to show anything except the appellant's bald claim on the basis of an affidavit filed on 26-1-2006 along with application for registration of copyright.
7. Consequently it leaves no doubt in my mind that the appellant solely for the purposes of taking the benefit of respondent's goodwill with the intention of infringing the respondent's trademark to his benefit had taken a shield of getting it registered with the Registrar of Copyright, In order to curb such practice this Court in the case of Pakistan Drug House (Pvt.) Limited v. Rio Chemical Company 2003 CLD 1531 had proposed to the Ministry of Law, Justice and Parliamentary Affairs, Government of Pakistan to consider amendment in the Copyright Ordinance parallel to section 45 of the (Indian) Copyright Act, 1957 to the following effect:- "[Provided that in respect of an artistic work which is used or is capable of being used in relation to any goods, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trademarks referred to in section 4 of the Trade and Merchandise Marks Act, 1958 (43 of 1958), to the effect that no trademark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by any person other than the applicant]."
8. ' In the circumstances, I see no reason to interfere with the well-reasoned order of the Copyright Board whereby they have corrected a blunder.