Nestlé filed an application under Section 50 of the act to expunge an entry in the Copyright Register on the grounds that it was incorrectly entered. The entry was in respect of the KITKAT logo and trade dress. Nestlé contended that the word mark 'KITKAT' embedded in an oval device and using a red and white colour combination constituted a distinguishing visual feature of the KITKAT trade dress, as well as an original artistic work under Section 2(c) of the Copyright Act. It was adopted by Nestlé's predecessor in title, UK company Rowntree Mackintosh, in 1935 and since 1937 it has been extensively commercially used. Nestlé further stated that it had been involved in a number of trademark disputes with Kitkat Food Products; in one such suit Kitkat made submissions regarding its securing of copyright registration in respect of the KITKAT logo and trade dress. Kitkat's reliance on this copyright registration led Nestlé to apply to the Copyright Board under Section 45(1) of the act seeking cancellation of the registration and its removal from the Copyright Register.
Under Section 45(1) an applicant for the registration of an artistic work that is used or is capable of being used in relation to any goods must include a statement to the effect that no identical or deceptively similar trademark has been registered under that act in the name of any other person. As no such statement was made and there was no certificate to that effect from the trademarks registrar, and as Nestlé is the holder of various registered trademarks that are identical or deceptively similar to the impugned artistic work, Nestlé alleged that Kitkat had violated Section 45(1). In addition, Nestlé sought cancellation of the registration on the grounds that the impugned artistic work was identical to Nestlé's registered trademark, which is well known internationally; therefore, it was not an original work and infringed Nestlé's copyright in the KITKAT logo and trade dress.
The board observed that the application raised a variety of questions regarding the violation of rights under both the Copyright Act 1957 and the Trademarks Act 1999. However, it limited itself to the issue of compliance with Section 45(1). Relying on previous cases in which the board had held that non-compliance with Section 45(1) would render a registration incorrect, the board held that violation of that section constitutes grounds for cancellation of the registration and expunction of the entry.
Although the board did not consider the question of deceptive similarity between Kitkat's registered artistic work and Nestlé's registered trademark (the mark KITKAT embedded in an oval device using the red and white colour combination), it did refer to the decision in RG Anand v Delux Films AIR (1978 SC 1618), in which the court set out the following rules to determine similarity:
- Ideas, subject matter, themes, plots or historical or legendary facts cannot come under the purview of copyright. Copyright violation is confined to the form, manner, arrangement and expression of an idea.
- In order to be actionable, a copy must be substantial and material. The test is whether the viewer or the reader, as the case may be, is under the unmistakable impression that the subsequent work is a copy of the original, which at once leads to the conclusion that the other party is guilty of piracy.
- If the same theme is presented in different ways and there are broad dissimilarities, there is no violation of copyright.
- A violation of copyright amounts to an act of piracy and must be proved by clear evidence.