Hugo Boss Trademark Management GMBH And Co. KG. V. Sandeep Arora Trading As ARRAS The Boss & Ors., C.O.(Comm.Ipd-Cr) 6/2023

Brief

Hugo Boss trademark management (Petitioner) filed a petition in the High Court of Delhi seeking expunction/removal (under section 50 of the Copyright Act 1957) of the copyright registration “Arras the Boss” which was obtained by Sandeep Arora (Respondent). The Court said that the Petitioner will be aggrieved as the trademark obtained by the respondent will dilute the rights of the Petitioner for the mark “Boss”. The Court said that the entry of Respondent’s trademark is wrongly made in the register of trademark and ordered that the copyright registration of the Respondent’s trademark should get cancelled.

Facts

• Petitioner filed the petition in the Delhi High court seeking expunction or removal of the Respondent’s copyright titled ‘ARAAS THE BOSS’.
• The Petitioner’s ‘HUGO BOSS’ trademark was adopted in year 1984 for the purpose of marketing and selling fragrance and perfumes. The Petitioner has registered its trademark in several countries as “HUGO BOSS” and “BOSS”. This trademark has also attained the status of well-known mark.

Issues

• Whether the mark of respondent is deceptively similar to the mark of the Petitioner and whether the work of respondent is the original work?
• Whether the search was accurate and substantial part of the Petitioner’s mark is copied or not?

Court’s Observation

• The court observed that the Petitioner is clearly a person aggrieved owing to its common law rights and statutory rights in the mark BOSS. Further, considering that the Petitioner and Respondent No. 1 are operating in the same trade, i.e., perfumes and fragrances, it is reasonable to believe that the Petitioner would be adversely affected by the impugned Copyright registration held by Respondent No. 1. The Petitioner would be severely aggrieved due to the fact that the registration of the copyright would dilute and erode the rights of the Petitioner in the BOSS mark which forms an integral part of the work for which the respondent has obtained a registration. Thus, the Petitioner is clearly a ‘person aggrieved’
• The court observed that the artistic work of the respondent is not an original work and primarily consists of the mark ‘BOSS’ and has been substantially imitated by Respondent No. 1.
• Copyright registration is only permissible for original works. It is perplexing how the Trade Marks Registry issued an unequivocal search report for the contested work, especially when the Petitioner’s marks were clearly identified as conflicting with the Respondent’s trademark application. The search report itself is riddled with inaccuracies and is inconsistent with the Register of Trade Marks. If an individual or entity falsely describes a work as original when it is not and is a significant imitation of a registered trademark and label, such registration would be erroneously maintained in the Register of Copyrights. Given the Petitioner’s prior and superior rights, the Respondent’s registration is an erroneous entry that should not remain on the register.

Decision

The Petition was allowed and disposed of expunging and cancelling the copyright registration of the Respondent. The Court further held that the Respondent’s work was not an original work and is an imitation of Petitioner’s work.