ORDER GHULAM MUHAMMAD RAJPUT, CHAIRMAN. - Board by this order will dispose of an application under section 41 of the Copyright Ordinance, 1962 (hereinafter mentioned as the Ordinance) filed by HITACHI Limited, Japan, wherein the applicant has sought rectification of the Register of Copyrights by expunging therefrom the entry of the Registration No. 3286-Copr. Or in the alternative expunging therefrom the word HITACHI and to correct the alleged error or defect in the Register, namely the appearance of the entry of Registration No. 3286-Copr.
2. Facts of the case as given in the application, briefly stated are that the applicant claims itself to be a world renowned company which carries on a worldwide business from Japan and elsewhere as manufacturer and merchant of were range of products which consist of over 20 thousand items. Applicant's net sale, as stated, tor the year ending March 31, 1991 were Yen 7,736,961 million (U.S. $ 54,872 million) while the number of employees were 309,757 and that it had 24 overseas offices, 55 manufacturing companies and 82 sales and services companies all over the world in addition to local agents and distributors.
3. The applicant claims that it is the proprietor of the word HITACHI and a circular design which are either used together and/or separately and independently from one another which are the principal and the main world renowned house marks of the applicant. It is also claimed that w- rd HITACHI also forms an essential part of the corporate name, Hitachi Limited.
4. The applicant has claimed that the words "HITACHI" and "HITACHI CIRCULAR DESIGN" were first ever used by it in the year 1910 in Japan and are currently used on a very large international scale which have, due to good quality of products and intensive publicity campaign, become exclusively associated with the applicant, throughout the world including Pakistan. The applicant has given particulars of trade marks registrations for HITACHI No. 21541, dated 27-2-1954 and of a few others, to show that it has protected the trade mark HITACHI in Pakistan as far back as 1954, which is also the year since when the applicant claims to be using the words HITACHI and HITACHI CIRCULAR DESIGN in Pakistan.
5. It is claimed that the applicant is the original creator, developer, adopter and worldwide proprietor of the marks "HITACHI and HITACHI CIRCULAR DESIGN" and it is also claimed that HITACHI was created from ideographs and hieroglyph which are pronounced "hi" in Japanese meaning "sun" and another pronounced "tachi" meaning rising or standing. The applicant had given extensive publicity to its products under the said marks through multimedia and has given details of expenditure incurred by the applicant for promotion of its said marks. The applicant has also given figures for the sale of its products in Pakistan as well as on worldwide scale and has asserted that as a result of invocation and high level of research, quality control, superiority of products and intensive publicity on the part of the applicant, the marks "HITACHI" and HITACHI CIRCULAR DESIGN have become distinctive of the goods of the applicant and the public associates the products under the HITACHI and HITACHI CIRCULAR DESIGN with the applicant only.
6. It is further submitted that trade marks 'HITACHI and HITACHI CIRCULAR DESIGN' have been used in Pakistan by applicant on its products on a very large scale including authomotive products which are sold in automobile markets manufactured by applicant's related company licensed by applicant to use its trade mark.
7. While assailing the Registration No. 3286-Copr. The applicant has asserted that the registration of HITACHI is totally illegal as it is an imitation of applicant's world renowned HITACHI mark and that the illegal and unauthorised use of the imitated HITACHI mark by the respondents (Zafar Auto and Filter House) is resulting in the dilution of the exclusivity of the HITACHI mark of the applicant and the respondents are misrepresenting as if by obtaining the copyright Registration No. 3286-Copr, they have got registered the imitated HITACHI mark for use as a trade mark. It is claimed that the respondents have not adopted the imitated HITACHI mark bona fide as the marks HITACHI and HITACHI CIRCULAR DESIGN are being used by the applicant since time when the respondents' business was not even in existence.
8. It is further asserted that respondents- intended to deceive the public by creating confusion so that the public may purchase their goods considering them to be the ^goods of the applicant and/or having some association or affiliation with the applicant which clearly amount to fraud. It is also stated that the respondents are not in truth the owners/proprietors of the imitated HITACHI mark which, in any event, cannot be an original artistic work as respects the respondents. It is also alleged that the applicant is a person aggrieved by continual remaining of-the said Registration No. 3286-Copr. On the Copyrights Register, since it is the applicant's mark HITACHI that has been copied in its entirely and made the subject-matter of said registration. Applicant has finally submitted that there appeared to be no justification for imitating the applicant's HITACHI marks as a were world was open to respondents and they could adopt any other word or mark and that it could not merely be a coincidence that respondents designed, thought and adopted bona fide the imitated mark of HITACHI.
9. The respondents in their counter-statement have not basically set up their case on facts but have chosen to raise certain legal objections. The respondents have contended that the applicant is not the person aggrieved as contemplated.By section 41 (2) of the Ordinance and it is not the author of the work. They have also disputed the existence of the Copyrght. On merits they have denied the contents of the application. They have pleaded that the applicant has produced no document showing assignment of mark in its favour as it is neither the original author nor the owner of the work nor domicilee in Pakistan. It has been further asserted by respondents that the applicant itself is pirating the work created by one Namihei Odaira as claimed by applicant itself.
The respondents have also controverted the assertion of applicant that automotive products have been commercialized under the Trade Mark HITACHI and HITACHI CIRCULAR DESIGN. Respondents have further objected that no official documents from Customs, Excise or Income-tax Department have been annexed with the application. It is further contented by respondents that HITACHI being geographical name of a town in Japan, applicant could not claim any right in the same and that registration in favour of respondents is in the artistic work as a whole and not that of word only.
10. The applicant in its affidavit-in-rejoinder has vehemently denied each and every allegation and claim made by respondents in their counter-statement. It has also annexed certain documents including a biographical note of Namihei Odaira in order to show that he was the founder of HITACHI and he was the original author of HITACHI and HITACHI CIRCULAR DESIGN.
11. The case was fixed for final hearing on 30th May, 1995 when the possibility of compromise arose and the cQunsel for the respective parties sought time to seek instructions from their clients.
However, the compromise could not be reached and the case was fixed for October 29,1995 for final disposal on merits.
12. Mr. Hasan Irfan Khan learned counsel for the applicant argued the case in detail and relied upon case-law and on various scholiastic and expository works on the subject of copyright. The substance of his arguments was that there is no copyright in the word HITACHI as wrongly registered in favour of the respondents as it is not an original artistic work and has been copied from applicant's renowned HITACHI name and mark and has the same lettering style as that of the applicant. He stated that there is no copyright in mere words and that in paragraphs 7 and 17 on pages 5 and 10 respectively, of the counter-statement, the respondents themselves have admitted that there can be no copyright in the word HITACHI, and therefore the case of the applicant stands proved and the word HITACHI be expunged from the Register.
13. It was submitted that copyright is an absolute right and that anything which is not work as contemplated by the Ordinance cannot go on the Register as its section 39 (1) and.(2) envisages registration of particulars of "work" only. Mr. Hasab Irfan Khan further asserted that there is no provision in the Ordinance providing for disclaimers^ and therefore, anything not a "worrk"should not be allowed to become part of the Register in order to maintain the purity of the Register.
14. Mr. Khan then stressed that in any event the respondents' work is not an original artistic work as originality in copyright law means simply that some skill, labour or effort has gone into the creation of the "work" and that it must originate with the author and not copied from another work. He submitted that there is no originality in a slavish copy. In support of the above contentions he has cited 1982 RPC 69; PLD 1978 Kar. 161; Laddie, Prescott and Victoria, 2nd Edition para. 3.62; (1916) 2 CH 601; PLD 1970 Kar. 554; 1988 RPC 343 and 1974 RPC 57.
15. It was next argued by Mr. Khan that the respondents are not the owners/proprietors or authors of HITACHI as applicant, the HITACHI Limited is the owner/proprietor thereof since 1910 and it was actually first used in Pakistan in 1954. He has also sought support for his view from Black's Law Dictionary, page 1105; 1992 M LD 2357; PLD 1991 SC 27; PLD 1979 Kar. 83 and PLD 1987 Kar. 356.
16. It was next contended by Mr. Khan that the respondents did not come to the Registrar with clean hands and their adoption of HITACHI is malafide, dishonest, intentional and designed to associate themselves with the world renowned HITACHI Limited', although, it was fully aware of the prior rights, reputaton and good will of the applicant in the HITACHI and HITACHI CIRCULAR DESIGN of the applicant. It was also pointed out that in its counter-statement opposition No. 118/92 in paragraph 6 respondents had admitted that HITACHI is a mark used by the applicant and thereby it had acknowledged its prior knowledge of the same. The learned counsel placed reliance in this behalf on respondents' advertisement in a monthly magazine 'Auto Guide' wherein the respondents had advertised their products by using the expression "World renowned name"--HITACHI FILTER-tested and durable, pressure tested guaranteed. The learned counsel for the applicant has also submitted that respondents have copied even its Urdu writing script and relied on PLD 1990 SC 1074; 1981 SCM R 1039: PLD 1973 Kar. 4 and 1992 M LD 2357 in support of his contention.
17. It was next argued that the applicant is a person aggrieved as its business would be greatly damaged and obstructed by the existence of the entry on the Register of Registration No. 3286- Copr, and for this reason applicant is substantially interested in having the entry of the said registration remoyed/expunged from the Register and it would materially suffer if the entry remained on the register. He relied on 1991 CLC 47; PLD 1983 Kar. 402 and PLD 1975 Kar. 421 in support of his contention.
18. Learned counsel for applicant additionally submitted that the Copyright Board also has tb protect the public interest and even on the ground of public policy alone the registration deserved to be expunged/removed. He augmented his case by referring to 1981 SCM R 1039; PLD 1990 SC 1074; 1987 M LD 91. Lastly he stated certain general principles on the distinction of copyright and trade mark and submitted that a lable or a device could be a subject-matter of both trade mark and copyright. He relied on "Naraynan on Trade Marks", 3rd Edition, paragraph 2 on page 1 and para. 1366 on page 638 as well as on "Naraynan on Copyright", para. 24.05 at page 257 in support of his proposition.
19. Mr. Farooq Amjad Meer, learned counsel for respondents extensively submitted the arguments in support of the impugned registration. The substance of his arguments was that the applicant had to show the existence of the copyright in the word "HITACHI" and that the applicant has not been able to show that it is the person aggrieved within the contemplation of section 41 of the Ordinace. The main thrust of his arguments was on the point that the label on the whole, as registered, comprises of a combination of features out of which HITACHI is one feature and that the word HITACHI is not the subject-matter of the copyright, which is in fact the label as a whole. He, however, conceded that HITACHI perse is not and cannot be a "work" as envisaged by the Ordinance. He asserted that HITACHI has only been used as a title of work and that the Registrar of Trade Marks has already given a decision in favour of the respondents. He, however, agreed that proceedings before the Registrar of Trade Marks under the Trade Marks Act, 1940 have absolutely no bearing on the proceedings before the Copyright Board.
20. Mr. Meer further contended that HITACHI is the name of a place in Japan, and therefore, the applicant cannot claim any monopoly over a common word. To answer the charges of dishonest use and the advertisement clearly referring to the applicant, Mr Farooq Amjad Meer stated that the respondents can do anything after registration and Board has no authority or jurisdiction to check the way and the manner in which the "work" is used by the respondents, even though it may be illegal and mala fide and in contravention of any law.
21. Mr. Khan in rebuttal stressed that under section 3 (2) of the Ordinance even a part of a work cannot be a subject of a copyright, if it contravened the Ordinance, and that a part which is the proprietary feature of another company cannot be allowed to be used alongwith other features on the plea that the objectionable feature constitutes only a part of the whole label. He submitted that HITACHI is the dominant feature of the respondents' registration and that it has been purposely and mala fide used by them. He added that if the respondent claim that there is no copyright in the word HITACHI and that they have got it registering with the Registrar of Trade Marks then why are they insisting on retaining the word HITACHI as part of their copyright registration when no copyright therein is claimed. He added that HITACHI cannot be the title of the label as the copyright has not been sought for a film or a magazine, in which case usually the title is used, and that the title has to be in conformity and/or reflective of the work sought to be registered. He further asserted that at best the title of the work registered by the respondents could be a were design and by no stretch of imagination the label registered can be described by the word HITACHI as its title. He added that HITACHI may be a name of a place in Japan but it is a fact that applicant has popularized it throughout the world including Pakistan as the HITACHI word is a Japanese word. He further contented that the applicant is the author of the work in HITACHI and HITACHI CIRCULAR DESIGN by virtue of section 13 of the Ordinance as the author created the word during the course of his employment with the applicant.
22. The learned counsel for the applicant further submitted that if the Board comes to the conclusion that the copyright exists in the word HITACHI as registered by the respondents, this would mean- that the copyrihgt would first subsist in favour of the applicant as the word HITACHI has been originated by the applicant and is being used since 1910 in Japan and since 1954 in Pakistan, and therefore, the word HITACHI cannot be registered in favour of the respondents. In the alternative he submitted that if the Board comes to the conclusion that there is no copyright in the word HITACHI then on the same principle the copyright cannot subsist in the word HITACHI in favour of the respondents. He submitted that in any event there is no copyright by merely copying a work.
23. The Board has given serious consideration to the arguments of the counsels advanced on behalf of their respective parties and has carefully perused the evidence available on file as, well as the judicial precedents and commentaries referred to by the counsel. In view of the basic objection taken by the respondents it would be in the fitness of things that before taking up any other point, the Board should first ascertain whether the applicant is a person aggrieved within the meaning of section 41 of the Ordinance.
24. In 1991 CLC 47 the term "person aggrieved" has been explained as follows:- "The term 'person aggrieved' should be given a liberal interpretation. Any person interested in mark if obstructed or restricted by any registered mark will be an aggrieved person. Reference can be made to re: Powell's Trade Mark (1884) 11 RPC 4 and Appollinaries Co.'s Trade Mark 8 RPC 137. In Zonephone T.M. (1903) 20 RPC 450, a person who has used before registration trade mark, in 8 RPC 137 an infringer of a trade mark and in Gianacli's T.M. (1889) 6 RPC 467 a defendant in a passing of action, were held to be an aggrieved party. Reference can also be made to Pink v. J.A. Sharwood & Co. Ltd. (1913) 30 RPC 725." In National Bel Co. v. Metal Goods Manufacturing Co. (AIR 1971 SC 898) the following observation was made:- "The expression 'aggrieved person' has received liberal constructions from the Courts and includes a person who has, before registration, used the trade mark in question as also a person against whom an infringement action is taken or threatened by the registered proprietor of such a trade mark.Present injury may be shown to have been suffered by an aggrieved person, but it he demonstrates probability of prevention or adverse effect on extension of trade he will nave a locus standi as a person aggrieved. Reference can be made to Re: Appollinaries Co.'s Trade Mark (1891) 2 Ch. 186 and Moappa v. Ramappa (AIR 1956 Mad. 184). Any person who is substantially interested in taking of the mark from the Register and persons who are substantially prejudiced or damaged by the existence of a mark will fall in the category of persons aggrieved. Reference can be made to Mac. Laboratories (Pvt.) Ltd. v. American Home Products Corporation (AIR 1969 Cal. 342)". In PLD 1983 Kar. 402 it was stated as follows:- "I would like to usefully refer to the case of Powell's Trade Mark 92 Lindley, L.J. Wherein while considering the question if the respondents in the said appeal were persons aggrieved, observed:'Persons who are aggrieved are persons who are in some way or other substantially interested in having the mark ( removed from the register, or persons w] o would be substantially damaged if the mark remained. It is very difficult to frame a nearer definition than that. In the Appolinaris case it was pointed out not as a complete or exhaustive definition that people would be aggrieved if they were in the same trade and dealt in the same article'." The learned Judge further held:- "It would be, to my mind, an unbusiness like construction to place on the term 'aggrieved' to say that it could only be appliable to those who actually had formed a fixed and crystallized intention of dealing in the particular article if permitted to do so. If a man is hampered in his arrangement of business matters in the future by the fact that a trade mark is on the register which ought not to be there, he is a' person who, to my mind, is sufficiently ' aggrieved to come within theiSection".
In PLD 1975 Kar.~421 it was held as follows:- "Clearly, however, on the facts of this case the respondents were substantially interested in having the mark removed from the register inasmuch as they themselves were using it. 1 adopt the observation of Bowen, L.J. In Re: Powell TM 'persons who are aggrieved are persons who are in some way or other substantially interested in having the mark removed from the register, or persons who would be substantially damaged if the mark remained". The question whether such a person has on merits a good case is entirely besides the matter; to require that to be established would be to put the cart before the horse. The maintainability of an action cannot depend on the merit of the claim but upon the standing of the party who makes the claim inasmuch as it must be asked whether there is a real interest which he is attempting to enforce or defend. In my view, therefore, the respondents were a person aggrieved."
25. In view of the above-quoted authoritative pronouncement of law by the superior Courts, the Board is of the opinion that applicant is a person aggrieved, as the applicant has clearly claimed and proved, that it is the worldwide user and owner of the word HITACHI which it is using in Pakistan also and it has filed evidence to show its use of the word HITACHI in Pakistan much prior in point of time than the claim put forward by the respondents. Accordingly it is held that the applicant is a person aggrieved.The next point for consideration is whether the word HITACHI could have been registered. This question hardly needs any serious thought as both the parties agree that there is no copyright in the word "HITACHI" per se, therefore, it is held, without going into the details of the issue that there is no copyright in mere words and that the word "HITACHI" as registered by the respondents did not qualify as an original artistic work and did not possess any originality. The reliance is placed on paragraph 3.62 of Laddie, Prescott and Victoria wherein the learned authors have commented as follows:-- "as a practical matter a defendant who is shown to have plagiarized at least some of those features but claims to have created the rest independently may have more or less difficulty in establishing his claim and perhaps insuperable difficulty, if it should emerge that he has not been frank with the Court."The Board has further been guided in coming' to the above conclusion by 1982 RPC 69, (1916) 2 Ch. 601; PLD 1970 Kar. 554, 1988 RPC 343 and 1974 RPC 57.
26. Having come thus far the next question we have to face is whether anything which is not a "work" can remain on the register. Mr. Hasan Irfan Khan has correctly pointed out that the law has envisaged that only and only a work can be entered on the Register. He has drawn the attention of-the Board to section 2 (of) of the Ordinance which describes as to what consists of "work". He has also, by analogy, drawn the attention of the Board to section 13 of the Trade Marks Act, 1940, which in substance, states that anything which cannot be registered as a trade mark can be allowed to form part of the Trade Marks Register by entering a disclaimer to that effect on the Trade Marks Register. He built up his argument to show that no identical provision exists in the Ordinance which clearly indicates that the Legislature did not want such provision to be enacted in the copyright laws, and therefore, the copyright laws do not permit anything which is not a work, to form part of the Register. He reinforced his argument by pinting out that the Register is meant for information of the public and is open to inspection by any interested party to ascertain the extent of right enjoyed by a certain party. If anything which is not work is allowed to form part of the Register, any third party inspecting the Register would unnecessarily get the wrong impression that any particular word is also registered as a copyright. This, he submitted, could not be the intention of the legislature, and therefore, by allowing the work "HITACHI" on the Register which is not a "work" and in which there is no copyright, the Registrar of Copyrihts has exceeded his jurisdiction and thus the word "HITACHI" is liable to be expunged.
27. The Board after giving due consideration to the arguments advanced by the parties on this point is of the opinion that anythingwhich causes prejudice to a third party and a subject- matter of copyright not being a work, cannot be allowed to remain on the Register and if anything is put on the Register which is not permissible in law, the moment the grievance is brought before the authority, it should be quick to expunge such matter from the Register to maintain its purity.
28. Next question which needs consideration is whether the respondents are owners/proprietors or authors of the word "HITACHI". In this respect while the applicant has filed voluminous evidence to show that it is the proprietor of the word "HITACHI", not only in Pakistan, but worldwide, no supporting documentary evidence has been filed by the respondents. The Board is, therefore, of a view that the documentary evidence clearly establishes that the applicant is the worldwide owner and proprietor of "HITACHI" which is much prior in point of time than the respondents. The Board has been guided in this behalf by 1992 M LD 2357 wherein it has been held that the perSon who first designed or used a trade mark would be entitled to claim its proprietorship unless subsequently he has dealt with the smae and some other person had obtained rights thereto in the manner known to and recognized by law. Similarly in PLD 1979 Kar. 83, while dealing with the concept of proprietorship the High Court of Sindh has held that the claim to proprietorship must be made in good faith and the applicant must be able to justify it if his claim is challenged. If an applicant for registration knows or the circumstances showed that he was aware that another person is proprietor of the mark its claim to proprietorship would^b^-false and his assertions in the application form would be rggd'rtted'tis a' deliberate attempt on his part to deceive the Registrar and if he succeeds in obtaining a registration, on the basis of such deception, it would be liable to be expunged on the ground of fraud.
29. In view of the above-discussed legal and factual position and after giving anxious thought to the submissions of the parties, the Board is of the considered opinion that the circumstances and the evidence clearly show that the respondents are not the proprietors of word "HITACHI" and they have admitted their prior knowledge that HITACHI is the mark of HITACHI LIMITED and, therefore, they knew that the word "HITACHI" is the ownership of the applicant. The respondent's advertisement in "Auto Guide" also clearly suggests that they were aware of the worldwide reputation of. HITACHI LIMITED and they have attempted to associate its products with HITACHI LIMITED, and.Therefore, the Board has come to the conclusion that the "respondents are not the proprietors of the word "HITACHI" andtheir claim to proprietorship/ownership of the same was not honest and they did not come to the Registrar with clean hands. Reference is made to PLD 1991 SC 27; PLD 1990 SC 1074; 1981 SCM R 1039; PLD 1973 Kar. 24 and 1992 M LD 2357. The Board is also of the opinion that it is also, its duty to protect the public interest and in no case it should be instrumental in placing a weapon of deceit in the hands of unscrupulous persons and should curb and prevent dishonesty at its roots rather than to 'et it go free in the market place. Reliance is placed on 1981 SCM R 1039; PLD 1990 SC 1074 and 1987 M LD 91.Before concluding the case, the Board finds it appropriate to reproduce para 24.05 of P. Narayanan on Copyright Laws, which is both illuminative and instructive: "Artistic work used as trade mark. - In the case of an artistic work which is used or capable of being used as a trade mark the application should be accompanied by a certificate from the Registrar of Trade Marks to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered or applied for under the Trade and Merchandise Marks Act, 1958 in the name of another person. This will prevent unscrupulous persons from copying well-known trade mark labels for the purpose of passing of of goods by taking shelter under a false claim of ownership of copyright in the label." In view of the above discussion the Board is satisfied that the applicant has proved its case and accordingly the Board directs that the word "HITACHI" be expunged from Registration No. 3286-Copr. And the Registrar should ensure that the respondents file amended lebels by deleting all and any reference to word "HITACHI" on the label within 30 days.