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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

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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" 70 (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

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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                              71 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.

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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

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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.

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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