PETITIONER: RAM KISHORE Vs. RESPONDENT: STATE OF U.P. DATE OF JUDGMENT: 28/03/1966 BENCH: ACT: Trade and Merchandise Marks Act, 1958 (Act 43 of 1958),. ss. 77, 92-Time prescribed for launching prosecution-Date of first discovery of infringement of trade mark whether relevant for reckoning such time-Plea of acquiescence when can be raised. HEADNOTE: In 1955 the complainants protested to the appellant that he was infringing their trade-mark but no further action was taken by them at that time. In November 1960, the appellant was found in possession of labels and tobacco tins carrying marks deceptively similar to the complainants' trade mark. After investigation the police lodged in March 1961 a charge-sheet against the appellant in respect of alleged offences under s. 78 read' with s. 77 and P. 79 of the Trade and Merchandise Marks Act 1958. The trial Magistrate convicted the appellant who was however acquitted by the Sessions Judge principally on the ground that the prosecution was barred as it was not instituted within the period prescribed by s. 92 of the Act. In appeal against the order of acquittal the High Court convicted him but granted him a certificate under Art, 134 of the Constitution. HELD:The period under s. 92 of the Trade and Merchandise Marks Act, 1958 commences to run from the date of the commission of the offences charged or from the date of discovery by the prosecutor of the offence charged. The period does not have to be reckoned from the first discovery of infringement of trade-mark by the prosecutor. In this respect s. 92 of the Act of 1958 is materially different from s. 15 of the Merchandise Marks Act 4 of 1889. [73A-D] Ruppell v. Ponnusami Tavan and Anr., I.L.R. 22 Mad 488 and Dau Dayal v. State of Uttar Pradesh, A.I.R. 1959 S. C. 433, distinguished. Abdulsatar Khan Kamruddin Khan v. Ratanlal Kishenalal, I.L.R. 59 Bom. 551 and Emperior v. Chhotalal Amarchand, I.L.R. (1937) Bom. 183, referred to. There was nothing to substantiate the appellant's plea based on s. 77 of the Act that the complainants had acquiesced in his use of the deceptive trade-mark. JUDGMENT:
CRIMINAL APPELLATE JURISDICTION: Criminal Appeal No. 37 of
1964.
Appeal from the judgment and order dated November 26, 1963
of the Allahabad High Court in Government Appeal No. 782 of
1962.
S. P. Sinha, G. L. Sanghi, Ganpat Rai, E. C. Agarwala, S.
S. Khanduja for P. C. Agarwala, for the appellant. Atiquor
Rehman and O. P. Rana, for the respondent.
Antiquor Rehman and O.P. Rana,for the respondent.
69
The Judgment of the Court was delivered by
Shah, J. The appellant was charged before a Magistrate, 1st
Class, at Varanasi with being, on November 25, 1960, in
possession of counterfeit labels which could be used to pass
off his “tobacco tins” as the goods of M /s Nandoo Ram
Khedan Lal bearing ‘Titli” (butterfly) trade-mark, and with
being in possession for ale of “tobacco tins” bearing
counterfeit trade marks of the genuine “Titli” brand trade-
mark of M/s Nandoo Ram Khedan Lal. The Trial Magistrate
convicted the appellant and sentenced him to suffer simple
imprisonment for three months for offences under s. 78 read
with s. 77 and under s. 79 of the Trade and Merchandise
Marks Act 43 of 1958, and directed the two sentences to run
consecutively. In appeal to the Court of Session, Varanasi,
the order passed by the Trial Magistrate was set aside and
the appellant was acquitted principally on the ground that
the prosecution was barred because it was not instituted
within the period prescribed by s. 92 of the Act. The High
Court of Judicature at Allahabad however set aside the order
of acquittal and restored the conviction, but reduced the
sentence on each of the charges to a fine of Rs. 1,000/-.
With certificate granted by the High Court under Art. 134 of
the Constitution, this appeal has been preferred.
M/s Nandoo Ram Khedan Lal-who will hereinafter be called
“the complainants”-carry on in the town of Varanasi,
business in “chewing tobacco”. They were marketing their
product for the last many years under a trade-mark styled
“Titli” (butterfly). The label on the containers of
“chewing tobacco” shows figures of three butterflies on
yellow-green background and the legend “Titli” in Devnagari
and English characters. The appellant who carried on
business also in “chewing tobacco” commenced market his
goods in the name of “Titli” (partridge). The label on the
containers had figures of four butterflies on leaf-green
background, and the legend “Titli” in Devnagari and English
characters. The colour schemes of the butterflies in the
complainants’ label and of the butterflies in the appellants
label were substantially similar.
The complainants gave information to the police in November
1960 that the appellant had infringed their trade-mark by
marketing his goods under a trade-mark calculated to deceive
the purchasers into believing that they were purchasing the
product of the complainants. The police submitted a charge
sheet against the appellant for offences under s. 78 read
with s. 77 and, s. 79 of the Trade and Merchandise Marks
Act, 1958. The Trial Magistrate observed that there was’
close resemblance between the label used by the complainants
and the label used by the. appellant, and that a vast
mejority of users of such tobacco being illiterate were
likely to be “carried” ‘away by’ a pictorial’ device of
“Titli”
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(butterfly)” since they were incapable of reading and
understanding the “descriptions on the label in Devanagri
and in English”. With this view the Sessions Judge and the
High Court agreed. Before us, no substantial argument has
been advanced which would justify us in taking a different
view on this question.
It was however contended for the appellant that the case
against him must still fail because the prosecution was
barred by S. 92 of the Trade and Merchandise Marks Act,
1958, and also because there was such acquiescence on the
part of the complainants as would justify an inference that
they had assented to the appellant using the trade-mark
under which his product was marketed. To appreciate these
two contentions, it is necessary to refer to certain facts.
Some time before 1955 the appellant had started marketing
his goods under the trade-mark “Titli”: there is however no
evidence about the general get-up of the label on the
containers of “chewing tobacco” marketed by him at that
time. On January 6, 1955 the complainants wrote a letter to
the appellant claiming that they were the sole proprietors
of “Titli” brand, that “Titli” was their registered trade-
mark, and the appellant had “with criminal intention started
making illegal and unlawful use of that trade-mark” and had
copied their trade-mark and was using it on similar but
inferior “chewing tobacco” and was passing off his goods in
the market as the product of the complainants; and on those
allegations the complainants called upon the appellant to
desist from selling or disposing of any of the goods with
labels resembling to the complainants’ trade-mark and
thereby deceiving the public into purchasing the appellant’s
product when the public desires to purchase the
complainants’ product and making several other incidental
requisitions. In reply, the appellant denied that the
complainants were the sole proprietors of “Titli” trade-mark
and that in any event the appellant had not used the trade-
mark “Titli” on any goods manufactured by him. The
appellant also claimed that he had been marketing his goods
in the name of “Titli” for many years and that the
complainants were seeking to pass off their product as that
of the appellant. After this correspondence no steps were
taken by the complainants against the appellant till
November 1960.
The appellant was on information lodged by the complainants
prosecuted for offences under S. 78 read with S. 77 and s.
79 of the Trade and Merchandise Marks Act, 1958. The
appellant submitted that whereas the complainants had on
their own admission learnt about infringement of their
trade-mark in 1955, criminal proceedings started in November
1960 were barred under S. 92 of the Trade and Merchandise
Marks Act, 1958. It may be noticed however that the
offences charged against the appellant
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were alleged to have been committed on November 25, 1960,
an& the charge-sheet was lodged in the Court of the
Magistrate, 1st Class, on March 22, 1961. Section 92 of the
Trade and Merchandise Marks Act, 1958, insofar as it is
material, provides:
“No prosecution for an offence under this
Act……………………… shall be
commenced after the expiration of three years
next after the commission of the offence
charged, or two years after the discovery
thereof by the prosecutor, whichever
expiration first happens.”
In substance the appellant in relaying upon the bar of S. 92
seeks to substitute for the words “after the discovery” the
words ” after the first discovery”, and for the words “after
the commission of the offence charged” the words “after the
commission of the first infringement of trade-mark”. The
Legislature has deliberately not used those expressions, and
there is no warrant for substituting them in the section and
thereby substantially modifying the section.
Counsel for the appellant however submitted that in inter-
preting S. 15 of the Merchandise Marks Act 4 of 1889, which
is similar to s. 92 of Act 43 of 1958, the Madras High Court
had in Ruppell v. Ponnusami Jevan and Another(1) held that a
prosecution under s. 15 of the Merchandise Marks Act 4 of
1889 commenced after the expiration of the period prescribed
by the Legislature from the date when the infringement was
first discovered, is barred and that this Court had in Dau
Dayal v. State of Uttar Pradesh(1) affirmed that view. In
Ruppell’s case(1) the accused was charged with committing an
offence punishable under S. 15 of the Indian Merchandise
Marks Act, 1889, on a complaint that the accused had
infringed the complainant’s trade-mark. It appeared at the
trial that the complainant had discovered in 1893 that goods
were sold by the accused marked with a trade-mark which was
similar to his trade-mark, and the complainant had called
upon the accused to discontinue user of the counterfeit
trade-mark and to render an account of sales made by him.
In 1898 the complainant prosecuted the accused for
infringing his trade-mark. The High Court of Madras held
that as the complainant did not show that he believed the
use of the alleged counterfeit trade-mark had been
discontinued after the first discovery and protest in 1893,
prosecution of the accused in 1898 under s. 15 of the Indian
Merchandise Marks Act, 1889, was barred. This view was
followed by the Bombay High Court in Abdulsatar Khan
Kamruddin Khan v. Ratanlal-Kishenlal,(3): The Court observed
in that case that under S. 15 of the Indian Merchandise
Marks Act, 1889, if the offence of infringement of a trade
or property mark is a continuing one, and if no
discontinuance is proved, time runs from the first
(1) I.L.R. 22 Mad. 468.
(3) I.L.R. 59 Bom. 551. (2 ) A.I.R. 1959 S.C. 433.
72
instance of infringement or from the first discovery of the
infringement. Abdulsatar Khan’s case(1) was however
overruled by a full bench of the Bombay High Court in
Emperor v. Chhotalal Amarchand.(2) In that case the Court
dissenting from the judgment of the Madras High Court in
Ruppell’s case(1) and overruling the decision in Abdulsatar
Khan’s case(1) held that under s. 15 of the Indian
Merchandise Marks Act, 1889, starting point of limitation in
all cases is the date of the offence charged.
In Dau Dayal’s case,(1) Venkatarama Aiyar, J., incorporated
substantially the whole of the judgment in Ruppell’s case:
(3) but in Dau Dayal’s case(1) the matter in dispute was
entirely different. In that case the accused was prosecuted
for offences punishable under ss. 420, 482, 483 & 486 I.P.
Code on the allegation that he was in possession of Bidis
which bore counterfeit trade-marks. A complaint was filed
against the accused on March 26, 1954, and after
investigation by the police, a charge-sheet was filed in the
Court of the Magistrate on September 30, 1954. The accused
contended that the offence was discovered on April 26, 1954,
and since process was issued by the Magistrate on July 22,
1955, i.e. more than one year after discovery of the offence
he could not, because of S. 15 of the Merchandise Marks Act,
1889, be prosecuted. This Court rejected the plea raised by
the accused. An excerpt from the judgment in Ruppell’s
case(1) was incorporated only to indicate the general tenor
of s. 15, and not with a view to express approval of all
that was observed therein.
We are however in this case not called upon to consider whe-
ther Ruppell’s case(1) was correctly decided. That case was
decided on the interpretation of s. 15 of the Merchandise
Marks Act, 1889. Suffice it to say that the Legislature has
in enacting the Trade and Merchandise Marks Act 43 of 1958
made a substantial departure from the language used in S. 15
of Act 4 of 1889. For the sake of convenience the material
parts of the two sections may be set out in juxtaposition:
Section 15 of Act 4 of 1889
No such prosecution……….
shall be commenced after the expiration of
three years next after the commission of the
offence, or one year after the first discovery
thereof by the prosecutor, whichever
expiration first happens.
(1) I.L.R. 59 Bom. 551. I.L.R. 22 Mad. 488.
Section 92 of Act 43 of 1958
No prosecution for an offence under this
Act………… shall be commenced after the
expiration of three years next after the
commission of the offence charged, or two
years after the discovery thereof by the
prosecutor, whichever expiration first
happens.
(2) I.L.R. (1937) Bom. 183.
(4) A.T.R. 1959 S.C. 433.
73
The Legislature in enacting s. 92 of Act 43 of 1958 has
clearly made departure from s. 15 of Act 4 of 1889 in
important respects. Whereas under s. 15 prosecution had to
be commenced within three years next after the commission of
the offence or within one year after the first discovery
thereof by the prosecutor, under s. 92 the prosecution must
be commenced before the expiration of three years next after
the commission of the offence charged, or two years after
the discovery by the prosecutor of the offence charged,
whichever expiration-first happens. Under s. 92 it is plain
the period commences to run from the date of the commission
of the offence charged or from the date of discovery by the
prosecutor of the offence charged. The argument which could
be raised under s. 15 and was approved in Ruppell’s case(1)
that the Legislature intended to provide that the period
shall commence from the first discovery thereof by the
prosecutor is plainly not open to the offender infringing
the provisions of the Trade and Merchandise Marks Act under
s. 92. The period has to be computed for the purpose of the
first part of the section from the date of the commission of
the offence charged, and under the second part from the date
of discovery of the offence charged, and not from the first
discovery of infringement of trade-mark by the prosecutor.
The plea that the complainants had assented to the use of
the trade-mark by the appellant, and on that account the
latter could not be said to have falsified a trade-mark or
to have falsely applied the trade-mark, is without
substance. Section 77, it is true, provides that a person
shall be deemed to falsify a trade-mark who either-
(a) without the assent of the proprietor of
the trade mark makes that trade mark or a
deceptively similar mark; or
(b) falsifies any genuine trade mark,
whether by alteration, addition, effacement or
otherwise.
If there is assent of the proprietor to the use by the
accused of a trade mark which is deceptively similar, there
would be no falsification or false application of the trade
mark: but protest against infringement of the complainants’
trade mark cannot be regarded as assent to the use or
application of the false trade mark.
The High Court has on a review of the evidence held that
there was no acquiescence by the complainants from which
assent may be inferred, and we see no reason to differ from
that finding.
The appeal therefore fails and is dismissed.
Appeal dismissed.
I.L.R. 22 Mad. 488.
L/S5-7(a)
74