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PETITIONER: SUMAT PRASAD JAIN

       Vs.

RESPONDENT: SHEOJANAM PRASAD (DEAD) & ORS

DATE OF JUDGMENT29/08/1972

BENCH: SHELAT, J.M. BENCH: SHELAT, J.M. PALEKAR, D.G. DWIVEDI, S.N.

CITATION:  1972 AIR 2488            1973 SCR  (1)1050  1973 SCC  (1)  56

ACT: Appellant   selling   his   products   in   the   name    of another--Products  not  registered under  Trade  Marks  Act- Whether appellant violated "property mark of the Respondent- Trade mark & property mark distinguished.

HEADNOTE: S.   the  respondent,  who died during the pendency  of  the appeal   before   the   High  Court,   evolved   a   formula manufacturing  a  scent, ’Basant Bahar’, which  became  very popular.  S, applied for registration of the Trade Mark, but the  application  was not granted due to  certain  technical defects. The  appellant had also put up for sale a scent prepared  by him   and   save   it  the  name   of,’Pushp   Raj’   Scent. This  scent,however,did not become popular.  So, he  started putting  up for We his said scent under the name  of  Basant Bahar  in receptacles, similar to those of  the  Respondent, except the name of the manufacturer. The Trial Court convicted the Appellant under s. 482 and  s. 486 I.P.C. and imposed a fine of Rs. 250- on each of the two counts.   On appeal, the Addl.  Session Judge set aside  the said  order  of conviction and  sentence.   The  complainant filed an appeal in the High Court.  Pending the appeal,  the complainant  died.   The  High Court  however,  allowed  the appeal  on  the  ground that though in  the  complaint,  the Complainant  has  used  expressions, such  as,  Trade  Mark, counterfeiting   his  Trade  Mark  etc,  in  substance   the complainant  averred counterfeiting of "property  mark"  and accordingly set aside the order of acquittal On  appeal  to  this Court, the counsel  for  the  appellant challenged  the  correctness of the view taken by  the  High Court. Dismissing the appeal, HELD  : (i) The concept of Trade Mark is distinct from  that of  a  property  mark., A Trade Mark means a  mark  used  in relation to goods for the purpose of indicating a connection in  the  course of trade between the goods and  some  person having the right as proprietor to use that mark.  The  func- tion  of  a  Trade  Mark is to give  an  indication  to  the purchaser as to the manufacture or quality of the goods,  to

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give an indication to his eye of the trade source from which the goods come or the trade hands through which they  passed on their way to the market. [1055F] In re Powell’s Trade Mark (1893) 10 R.P.C. 200, referred to. On the other hand, a property mark, 1893 defined by S.479 of the  Penal  Code,  means a mark used  for  denoting  that  a moveable property belong to a particular person.  Thus,  the distinction between a Trade Mark and a property mark is that whereas the former denotes the manufacture or quality of the goods to which it is attached, the latter denotes the owner- ship  in  them.  In other words a Trade  Mark  concerns  the goods  themselves,  while  a  property  mark  concerns   the proprietor.   A  property  mark  attached  to  the   movable property  of a person remains even if part of such  property goes out of his hands and ceases to be his. [1055 H] 1051 (In  Emperor  v. Dhyabhai Chakasha, 1904 6 Bom.   L.R.,  513 referred to) (ii) To  succeed on the charge under s. 482 and s.  486  the complainant  had to establish that the appellant marked  the scent  manufactured  and  sold by him  or  the  packets  and receptacles  containing  such  scent or  us  do  packets  or receptacles bearing that mark and that he did so in a manner calculated  to  cause it to be believed that  the  goods  so marketed  or  scent  contained in  the,  packets  so  marked belonged  to the complainant.  For the purpose of s.486,  he had  further  to establish that the appellant  had  sold  or exposed  for sale or had in his possession for  sale,  goods having a mark calculated to cause it to be believed that the scent,  was the scent manufactured by and belonging  to  the complainant. [1056 F] (iii)     In the present case, the name ’Basant Bahar’  with the  same  picture,  the same  inscriptions,  and  the  same receptacles, was the ’property mark denoting that the  scent in  question was the one manufactured and belonging  to  the complainant.   From  the  finding arrived at  by  the  Trial Court,  it must follow that the appellant marked  his  scent aid  the packets in which it was packed with the same  name, the  same  picture  and  the  same  inscriptions  with   the intention  of  causing it to be believed that the  scent  so marked, or the scent contained in the said packets, was  the one   manufactured  by  and  sold  in  the  market  by   the complainant.   The appellant thus committed the  offence  of both using a false property mark and of selling goods marked with a counterfeit property mark.  The High Court was  Tight in  setting  aside  the order of  acquittal  passed  by  the Additional  Sessions  Judge and in restoring  the  order  of conviction and sentence passed by the Trail Court. [1057]

JUDGMENT: CRIMINAL APPELLATE JURISDICTION : Criminal Appeal No. 181 of 1969. Appeal  by special leave from the judgment and  order  dated April  10, 1969 of the Patna High Court in  Criminal  Appeal No. 43 of 1966. U. P. Singh and K. C. Dua, for the appellant. Gobind Das and U. S. Prasad for respondent No. 1 (a). B.  P. Jha, for respondent No. 2. The Judgment of the Court was delivered by Shelat,  Acting  C.J.  This appeal,  by  special  leave,  is directed against the judgment and order of the High Court of Patna  whereby  the  High  Court  set  aside  the  order  of acquittal  passed  by  the  Additional  Sessions  Judge  and

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restored the order of conviction and sentence passed by  the Trial Magistrate under ss. 482 and 486 of the Penal Code. One  Sheojanam Prasad (who died during the pendency  of  his appeal before the High Court) was at all material times  the proprietor  of a provisions store’ in Arrah.  He claimed  to have evolved a formula for manufacturing a scent to which he gave  the name of "BASANT BAHAR".  The scent, when put  into market,  soon  became  popular and in  the  course  of  time gathered  custom.  The scent used to be packed  in  cartoons and other receptacles which carried on them the picture of a pari (an 1052 angel)  holding  a  bunch of flowers in  her  hands  and  an inscription "BASANT BAHAR SCENT KHUSHBUON Ka Badahah".   The cartoons  and  receptacles were of green colour and  had  on them in print the name of the manufacturer, namely,  ’Basant Bahar Perfumery Co. Shahabad".  Sheojanam Prasad  thereafter ,applied   before   the  Registrar  of   Trade   Marks   for registration  or  the  trade  mark.   The  application  was, however,  not  granted  as it  contained  certain  technical defects.  His case was that nonetheless the said scent  with the  aforesaid  marks became popular in the  market  as  the scent manufactured and sold by him. The  case  of Sheojanam Prasad was that  the  appellant  was ,also conducting a provisions store in Arrah.  Finding  that his Basant Bahar scent had become popular, the appellant put out for sale a scent prepared by him and gave it the name of Pushp  Rai.   The Pushp Raj scent, however, did  not  become popular  with customers.  The appellant, therefore,  started putting out for sale his said scent under the name of Basant Bahar  in cartoons and receptacles, similar to those of  his (Sheojanam  Prasad),  in the same colour, shape and  size, except  for  one particular only, namely, the  name  of  the manufacturer,  such  name being Basant  Bahar  Chemical  Co. Ltd., Shahabad.  In para 14 ,and 15 of his complaint against the appellant, Sheojanam Prasad averred as follows :               "14.  That the failure of the ’Pushp Raj"  led               the  accused  to  devise  ways  and  means  of               destroying  the  business  credit  of  "Basant               Bahar" by surreptitiously and fraudulently and               deliberately  printing  Trade  Mark  label  of               Basant  Bahar  and packing scents  in  receip-               tacles of the various varieties with  inferior               quality of scent which are easily being palmed               off  as  the  genuine "Basant  Bahar"  of  the               complainant  with the result that the  accused               uses  false  trade  mark  and  sells  inferior               quality Basant Bahar to defame and destroy the               good  name  of the complainant and  his  scent               (Basant  Bahar)  and  make  illegal  gain  for               himself.               15.   That   the,  accused  is   manufacturing               spurious  scent and defrauding the  public  as               genuine,   Basant   Bahar   with   counterfeit               imitation  of Trade mark with the sole  object               of  making  illegal  gain  and  damaging   the               business  reputation  of Basant Bahar  in  the               hope  of boosting up the sale of Pushp Raj  by               damaging Basant Bahar." Before  the  Trial Magistrate the defence taken  up  by  the appellant  was that the Basant Bahar scent was his  original product, that he had put that scent first in the market, and that 1053 it.  was  Sheojanam Prasad who imitated  the  genuine  scent

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evolved by him, and that therefore, there was no question of his  having committed any offence either under s. 482 or  s. 486 of the Penal Code.  Both the parties examined witnesses. The  Trial Magistrate, on such evidence, found (1)  that  it was  the complainant who placed the scent under the name  of Basant  Bahar  first  in the market,  (2)  that  that  scent enjoyed  a better market, (3) that finding that  that  scent had  become  popular, the appellant put out  his  own  scent which  was  of  inferior quality under the  name  of  Basant Bahar, and thus passed off his scent as if it was the  one manufactured  and  marketed by the  complainant.   On  these findings, the Trial Magistrate convicted the appellant  both under  s. 482 and s. 486 and imposed fine of Rs.  250/-  on each of the two counts.  On  appeal by the appellant before the Additional  Sessions Judge, Arrah, the said order of conviction and sentence  was set aside.  The Additional Sessions Judge did not discharge, however,  with the findings of fact arrived at by the  Trial Magistrate,  but held that on the allegations  contained  in the  complaint  a conviction under s. 482 or  under  s.  486 could  not be sustained.  This conclusion was arrived at  on the  reading  of  the  complaint  to  mean  allegations   of counterfeiting the complainant’s trade mark by the appellant and  not  the property mark.  He also held  that  after  the passing  of the Trade and Merchandise Marks Act,  1958  such counterfeiting of trade mark was no longer an offence under the Penal Code. The complainant thereupon filed an appeal in the High Court. Pending  the appeal the complainant, as aforesaid,  died  on July  22,  1967.  Two questions in the main  were  canvassed before the High Court; (1) whether on the death of the  com- plainant the appeal filed by him abated, and whether his son Ashok  Kumar could be brought on record as the legal  repre- sentative  of the deceased complainant, and (2)  whether  on the averments in the complaint and the evidence on record  a case of counterfeiting the property mark of the  complainant could  be maintained.  The High Court was of the  view  that there  was  no provision in the Code of  Criminal  Procedure under which a legal representative of a deceased complainant could  apply for being bought on record for the  purpose  of continuing  an appeal filed by such a complainant.  On  that view.  the  High,  Court dismissed the  application  by  the complainant’s  son  for being brought on record.   The  High Court,  however,  was of the view  ’that  the  complainant’s death did not bring about abatement of the appeal since once a criminal appeal was admitted the High Court’ had to go  on with it and decide it, the real interested party being  not the complainant but the State.  That question, 1054 has  Dot been agitated before us, and therefore, we are  not called  upon to decide it or to express our opinion one  way or the other. On  the second question, the High Court examined  the  aver- ments  contained in the complaint, particularly in paras  14 and  15  thereof,  and  also  the  evidence  on  record  and concluded  that though in the complaint the complainant  had used expressions, such as, "trade mark", counterfeiting  his trade  mark, etc. those expressions had been  loosely  used, and  that in substance the complaint averred  counterfeiting of property mark.  Disagreeing with the construction  placed by the Additional Sessions Judge on the complaint, the  High Court  allowed the appeal set aside the order  of  acquittal passed  by  him and restored the order  of  conviction and sentence  passed  by the Trial Magistrate, Counsel  for  the appellant  challenged the correctness of the view  taken  by

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the High Court. Counsel for the appellant maintained that the view taken  of the  complaint by the Additional Sessions Judge was  correct as  against  that taken by the High Court, that  on  a  fair perusal  of the complaint the case there set out was one  of breach  of and counterfeiting the trade mark "Basant  Bahar" and  that  therefore,  after the passing of  the  Trade  and Merchandise  Marks  Act,  1958 such  counterfeiting  was  no longer  an  offence punishable under the  Penal  Code.   The contention further was that since the corn-’ plainant’s said trade mark was unregistered, he had not even a remedy by way of  a  civil suit under that Act.  The High  Court,  so  the argument  ran, wrongly construed the complaint as one for  a breach  of and counterfeiting the property mark, and  there- fore, the High Court’s order cannot be sustained. The concept of a trade mark is distinct from that of a pro- perty mark.  A mark, as defined by s. 2(1) (i) of the  Trade and  Merchandise Marks Act, 1958, includes a device,  brand, heading,  label,  ticket, name, signature, word,  letter  or numerical or any combination thereof.  A trade mark means  a mark used in relation to good for the purpose of  indicating or  so  as to indicate a connection in the course  of  trade between  the  goods  and some person  having  the  right  as proprietor  to use that mark.  The function of a trade  mark is  to  give an indication to the purchaser  or  a  possible purchaser as to the manufacture or quality of the goods,  to give an  indication to his eye of the  trade  source  from Which the goods come, or the trade hands through which  they pass on their way to the market. (per Bowen, L.J., in In  re Powell’s  Trade  Mark (1).  On the other  hand,  a  property mark,  as defined by s. 479 of the Penal Code means  a  mark used  for  denoting  that a movable property  belongs  to  a particular  person.  Thus, the distinction between  a  trade mark and a property mark is that whereas the former  denotes the (1)  (1893) 10 R.P.C. 200. 1055 manufacture or quality of the goods to which it is attached, the latter denotes the ownership in them.  In other words, a trade  mark concerns the goods themselves, while a  property mark  concerns the proprietor.  A property mark attached  to the  movable  property of a person remains even if  part  of such  property goes out of his hands and ceases to  be  his. In  Emperor  v. Dahyabhai Chakasha(1) the National  Bank  of India used to import bars, of gold for sale in India.   Each bar  was of a uniform size, weight and purity and  had  the words  "National  Bank  of India" inscribed  on  it  as  its property mark.  The gold so imported was known in the market as  ’Nasrana  Bak’,  and acquired a  special  value  in  the market.  The accused placed in the market gold of their  own mark with words ’Nasrana Bak’ inscribed on their bars.   The High  Court of Bombay held that the National Bank  of  India owned  a property mark in the bars imported by it, and  that the  accused  were guilty of  counterfeiting  that  property mark.   It further held that though some of these  bars  had been sold by the Bank and had thus passed out of its  hands, that  that fact did not mean that its property mark did  not remain,  for,  the  function of a property  mark  to  denote ownership  is not destroyed because any part of it on  which it  was  impressed has ceased to be of that  ownership  [see also S. K. Pethilingam Pillai v. N.     M. Rowther(2). The  question then is whether the complaint in substance, if not-in    form,   contained  the  necessary  averments   for bringing the case   under  the  offence  of  using  a  false property  mark  by the appellant and selling  goods  with  a

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counterfeiting  property marks.  To succeed on  the  charges under  s.  482 and s. 486 the complainant had  to  establish that  the appellant marked. the scent manufactured and  sold by him, or the packets and receptacles containing such scent or used packets or receptacles bearing that mark, and   that he did so in a manner reasonably calculated to cause   it to be believed that the goods so marked or the scent  contained in  the  packets and receptacles so marked belonged  to  the complainant.   For the purpose of s. 436, he had further  to establish that the appellant had sold, or exposed for  sale, or  had  in  his possession for sale  goods  having  a  mark calculated  to cause it to be believed that the  scent  mark calculated  to  cause  it  to be  believed  that  the  scent manufactured by and belonging to the complainant. In Dara 3 and 4 of the complaint, the complaint averred that he  had evolved a formula after several attempts  for  manu- facturing  scent  and calling it Basant Bahar  had  put  the scent so manufactured by him in the market sometime in 1952, which (1) (1904) 6 Bom.  L.R. 513. (2) A.I.R. 1969 Mad. 94. 1056 soon  became popular in Shahabad as also in Patna  and  Gaya Districts.   In para 6 of the complaint, he pleaded that  he had  a pari with a bunch of flowers in her hands printed  on the  packets  and receptacles in which the  said  scent  was packed with an inscription "Basant Bahar Scent, Kbushbuon Ka Badshah" and at the foot of such packets and receptacles the inscription  Basant Bahar Perfumery Co., Shahabad.  In  para 12,  he  averred  that  when his  scent  gained  market  and popularity  the  appellant brought out in the  market  scent manufactured  by him under the name of Pushp Raj,  having  a picture  of a lady printed on the packets  and  receptacles, but  the  scent  failed to get customers.  In  para  14,  he pleaded  that  the  scent ’Pushp  Raj’  having  failed,  the accused  adopted "ways and mens of destroying  the  business credit  of Basant Bahar by surreptitiously and  fraudulently and  deliberately printing Trade Mark Label of Basant  Bahar and packing scents in receptacles of various varieties  with inferior kind of scent which are easily being palmed off  as the  genuine  ’Basant  Bahar’ or the  complainant  with  the result  that  the accused uses false trade  mark  and  sells inferior  quality of Basant Bahar to defame and destroy  the good name of the complainant and his scent Basant Bahar  and make illegal gain for himself." In  para 15, he pleaded that the accused  was  manufacturing spurious  scent  and defrauding the public  by  making  them believe  ,that his scent was the genuine Basant Bahar,  that is,   "Basant  Bahar  manufactured  and  belonging  to   the complainant  with  the counterfeit imitation of  trade  mark with the sole object of making illegal gain and damaging the business  reputation  of Basant Bahar of  the  complainant". The  complainant  led evidence of some traders  who  deposed that  they used to purchase scent from both the  complainant and  the accused, that from outward appearances they  looked alike,  and that their customers purchased scent  placed  in the   market  by  the  accused  believing  it  to  the   one manufactured and belonging to the complainant, but later  on returned  it finding it to be of inferior quality.   On  the evidence  on  record the Trial Magistrate  found  (1.)  that Basant  Bahar evolved and manufactured, by  the  complainant appeared  in the market earlier than the scent  manufactured and  sold by the accused, (2) that the accused first  called his  scent Pushp Rai but finding that it did not  sell  well changed  its name into Basant Bahar, (3) that his scent  was

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of inferior quality (4) that the packets and receptacles  in which  the accused packed his scent were exactly similar  in shape  and inscrptions on them, except for the name  of  the manufacture,  namely, Basant Bahar Chemical Co.   Ltd.,  and (5)  that  he presumably did this with a view  to  make  the likely purchasers believed that the scent be sold and 1057 placed  in  the market was the scent with  the  mark  Basant Bahar made and sold by the complainant.  These findings were accepted both by the Additional Sessions Judge and the  High Court. In  our  view the name Basant Bahar with the picture  of  an angel with flower in her hands and the inscription of Basant Bahar  Khushbuon  Ka  Badshah printed  on  the  packets  and receptacles was the property mark denoting that the scent in question  was  the  one manufactured and  belonging  to  the complainant.   From  the findings arrived at  by  the  Trial Magistrate  it  must follow that the  appellant  marked  his scent and the packets and receptacles in which it was packed with   the  same  name,  the  same  picture  and  the   same inscriptions with the intention of causing it to be believed that  the  scent so marked was the one manufactured  by  and sold in the market by the complainant.  The evidence clearly showed  that the scent so marked by him was sold by  him  in the  market  with the intention and object  aforesaid.   The appellant  thus committed the offence of both using a  false property mark and of selling goods marked with a counterfeit property mark.  Though the complainant used the words ’trade mark’  at several places in the complainant it  was  loosely used  as can be seen from paras 14 and 15 of the  complaint. The complainant’s accusation was the use by the appellant of a  property mark with the object of "palming off" to  likely purchasers  his scent of inferior quality as if it  was  the scent  made by and belonging to the complainant and  selling it  or  exposing  it  for  sale  as  if  it  was  the  scent manufactured by and belonging to the complainant. We hold, therefore, that the High Court was right in setting aside  the  order  of acquittal  passed  by  the  Additional Sessions Judge and in restoring the order of conviction  and sentence by the Trial Magistrate. The appeal is dismissed. S.C.                                   Appeal dismissed. 18-L 172S, LIP- CI/73 1058