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PETITIONER: THE STATE OF UTTAR PRADESH

       Vs.

RESPONDENT: HAFIZ MOHAMMAD ISMAIL ANDHAFIZ JAWED ALI

DATE OF JUDGMENT: 09/02/1960

BENCH: WANCHOO, K.N. BENCH: WANCHOO, K.N. IMAM, SYED JAFFER SHAH, J.C.

CITATION:  1960 AIR  669            1960 SCR  (2) 911

ACT:        Criminal  Trial-Counter feit trade mark-Wrappers and  labels        of  soap made to resemble those of another  soap-if  Counter        feit Indian Penal Code, 1860 (XLV of 186o). SS. 28 and 486.

HEADNOTE: The respondents were found selling counterfeit Sunlight  and Lifebuoy  soaps  and  were prosecuted under s.  486  of  the Indian   Penal   Code.   The  Magistrate  found   that   the resemblance  between  the wrappers and labels in  which  the soaps  were  being sold and those of the genuine  soaps  was such  that a person may be deceived by it and convicted  the respondents.  An appeal to the Sessions judge was dismissed. On revision the High Court held that the wrappers and labels were  mere colourable imitations of the genuine trade  mark, but were not counterfeit and acquitted the respondents. 116 912   Held, that the wrappers and labels were counterfeit of the genuine  wrappers  and  labels  of  Sunlight  and   Lifebuoy soaps.order  to  prove  that the wrappers  and  labels  were counterfeit within the meaning of s. 28 of the Indian  Penal Code read with      Explanation  2 thereof the Court had  to decide (i) whether the   wrappers  and labels on  the  soaps sold by -the respondents were made to resemble the  wrappers and  labels of the genuine Sunlight and Lifebuoy soaps,  and (ii)   if  they  were  so  made  to  resemble  whether   the resemblance was such as might deceive a person.  It was  not necessary to import words like " colourable imitation" in S. 28.   Explanation  i  of  s. 28 provided  that  it  was  not essential  to  counterfeiting that the imitation  should  be exact  and  the  High Court had  erred  in  not  considering whether  the resemblane was such as might deceive a  person, inspite  of  the difference detail between the two  sets  of wrappers and labels.

JUDGMENT:        Criminal Appellate Jurisdiction : Criminal Appeal Nos.  129-        130 of 57.

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      Appeals  by special leave from the judgment and order  dated        July 13, 1956 of the Allahabad High Court (Lucknow bench) at        Lucknow  in  Criminal Revisions Nos. 118 and  119  of  1955,        arising court of the judgment and order dated March 31, 1959        of the Second Civil and Sessions Judge, Lucknow in  Criminal        Appeals Nos. 511 and 512 of 1954.        H.   N.  Sanyal, Additional Solicitor-General India,  G.  C.        Mathur, and C. P. Lal, for the appellant         Nuruddin Ahmad and  Naunit Lal, for the respondents.        1960 February, 9. The Judgment of the Cour was delivered by        WANCHOO, J.-These are two connected appeals by special leave        against the judgment of the Allahabad High Court.  The brief        facts  necessary for their disposal are these.  One  Bhagwan        Swarup  Saxena the Trade Marks Investigator, Lever  Brothers        Limits  India (hereinafter called the company)  was  working        Lucknow  on  behalf of the company.  He  came  to  know-that        counterfeit   Sunlight   and  Lifebuoy   soap   were   being        manufactured and sold on a large scale i Yahiaganj and other        places  in Lucknow.  This was investigated on behalf of  the        company  which  manufactured genuine Sunlight  and  Lifebuoy        soaps.  I was found that two soap factories in Lucknow  were        manufacturing  counterfeit Sunlight and Lifebuoy soaps.   It        was also found that Hafiz Mohammad        913        Ismail  and Hafiz Jawed Ali who are the respondents  in  the        two  appeals before us were selling these counterfeit  soaps        in Yahiaganj where they have shops.  Consequently a raid was        made on the two shops with the help of the police on May 19,        1953.  A large .number of soaps were recovered from the  two        shops  which were wrapped in labels said to be  counterfeits        of those in which the genuine Sunlight and Lifebuoy soaps of        the company are sold.  Consequently the two respondents were        prosecuted under ss. 482 and 486 of the Indian Penal Code.        The  Magistrate  found  the case proved and  held  that  the        labels  in  which the respondents were  selling  soaps  were        counterfeit  of the labels of genuine Sunlight and  Lifebuoy        soaps.   He, therefore, convicted the respondents under  ss.        482 and 486 of the Code.  The respondents went in appeal  to        the  Sessions Judge but their appeals were dismissed.   They        then  went  in revision to the High Court.  The  High  Court        held that the cases did not fall within s. 482 of the Indian        Penal Code and therefore acquitted them of the charge  under        that  section.  It further held that the labels or  wrappers        used  on  the  soaps sold by the respondents  could  not  be        regarded  as counterfeit of the genuine wrappers and  labels        of  Sunlight and Lifebuoy soaps though they were  colourable        imitations of the same; it therefore acquitted them under  s        486  also,  without going into the other  points  raised  on        behalf of the respondents.  The applications of the State of        Uttar  Pradesh  for a certificate to appeal  to  this  Court        having been rejected, the State applied for leave to  appeal        to this Court which was granted; and that is how the  matter        has come up before us.        The  learned Additional Solicitor General appearing for  the        State  has not pressed the appeals so far as  the  acquittal        under  s.  482  of the Code  is  concerned.   The  acquittal        therefore  under that section will stand.  He has,  however,        strenuously  urged that the view of the High Court that  the        wrappers  and  labels  are  not  counterfeit  but  are  mere        colourable  imitations  of the genuine trade  marks  of  the        company  is  incorrect inasmuch as the High  Court  has  not        given full effect to the        914             words  of s. 486 in that behalf and the  definition  of        counterfeit’ in s. 28 of the Indian Penal Code.

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           Section 28 is in these terms-                       A person is said to I counterfeit’ who causes        one  thing to resemble another thing, intending by means  of        that  resemblance to practise deception or knowing it to  be        likely that deception will thereby be   practised.        Explanation  l.-It is not essential to  counterfeiting  that        the imitation should be exact.        Explanation  2.-When a person causes one thing  to  resemble        another  thing,  and the resemblance is such that  a  person        might  be deceived thereby, it shall be presumed, until  the        contrary is proved, that the person so causing the one thing        to  resemble  the  other thing intended  by  means  of  that        resemblance  to practise deception or knew it to  be  likely        that deception would thereby be practised.        The relevant part of s. 486 is in these terms-        "  Whoever sells, or exposes, or has in possession for  sale        or  any purpose of trade or manufacture any goods or  things        with a counterfeit trade mark or property mark affixed to or        impressed  upon the same or to or upon any case, package  or        other  receptacle in which such goods are contained,  shall,        unless he proves-        (a)..................................................        (b)...............................................        (c)....................................................        be  punished with imprisonment of either description  for  a        term  which  may  extend to one year or with  fine  or  with        both."        The  contention  on  behalf of the appellants  is  that  the        High .Court in holding that the labels and wrappers in  this        case  were only colourable imitations of the  genuine  trade        mark  labels  and  wrappers  of the  company  and  were  not        counterfeit  has not taken into account the words of  s.  28        and  particularly  of the two Explanations thereof.   It  is        pointed  out that the words " colourable imitation " do  not        appear  in a. 28 which defines the word " counterfeit "  and        the High Court seems to have misdirected itself by  treating        the ,wrappers and labels in this case as colourable        915        imitations and not counterfeit within the meaning of s. 28.        The main ingredients of counterfeiting as laid down in s. 28        are  (i)  causing one thing to resemble another  thing,  and        (ii)  intending  by means of that  resemblance  to  practise        deception  or (iii) knowing it to be likely  that  deception        will  thereby  be practised.  Thus if one thing is  made  to        resemble  another  thing and the intention is that  by  such        resemblance deception would be practised or even if there is        no  intention  but  it  is  known  to  be  likely  that  the        resemblance is such that deception will thereby be practised        there is counterfeiting.  Then comes Explanation 1 to s.  28        which  lays down that it is not essential to  counterfeiting        that   the   imitation   should   be   exact.     Ordinarily        counterfeiting  implies the idea of an exact imitation;  but        for  the  purpose  of the Indian Penal  Code  there  can  be        counterfeiting  even though the imitation is not exact  and-        there are differences in detail between the original and the        imitation  so  long  as the resemblance  is  so  close  that        deception  may thereby be practised.  Then comes the  second        Explanation  which lays down that where the  resemblance  is        such  that  a person might be deceived thereby it  small  be        presumed  until  the  contrary is  proved  that  the  person        causing one thing to resemble another thing was intending by        means  of that resemblance to practise deception or knew  it        to  be  likely that deception would  thereby  be  practised.        This  Explanation lays down a rebuttable  presumption  where        the  resemblance  is such that a person  might  be  deceived

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      thereby.   In such a case the intention or the knowledge  is        presumed unless the contrary is proved.        This  analysis of s. 28 shows that there is no necessity  of        importing  words like I colourable imitation’  therein.   In        order to apply it, what the Court has to see is whether  one        thing  is made to resemble another thing, and if that is  so        and  if  the  resemblance is such that  a  person  might  be        deceived by it there will be a presumption of the  necessary        intention or knowledge to make     the  thing   counterfeit,        unless the contrary is proved.     What the court  therefore        has to see is whether    one thing has been made to resemble        another                  916                  thing.    If  it finds that in fact one thing  has        been made to   resemble  another  it has further  to  decide        whether   the  resemblance  is  such  that  a  person  might        be  deceived.   If  it  comes to  the  conclusion  that  the        resemblance is such that a person might be deceived       by        it,  it  can presume the necessary  intention  or  knowledge        (until the contrary is proved) and counterfeiting would then        be  complete.  Therefore the two things that were  necessary        to  decide  in  this case were (i)  whether  the  labels  or        wrappers  on the soaps sold by the respondents were made  to        resemble the labels and wrappers of the genuine Sunlight and        Lifebuoy  soaps, and (ii) if they were so made to  resemble,        whether resemblance was such as might deceive a person.   If        both these things were found the labels and wrappers in this        case  would  be counterfeit and the necessary  intention  or        knowledge would be presumed unless the contrary was proved.        Now  the Magistrate as well as the Sessions  Judge  examined        the wrappers and labels in this case and compared them  with        the genuine labels and wrappers of the Sunlight and Lifebuoy        soaps  of the company and came to the conclusion that  there        was resemblance between the two sets of wrappers and  labels        and  that  resemblance was so close that a person  might  be        deceived.   On that finding, they held that  these  wrappers        and  labels  were counterfeit because the contrary  was  not        proved before them.  The High Court does not say that  there        is  no  resemblance  between the two sets  of  wrappers  and        labels.   The  very fact that the High Court says  that  the        wrappers  and  labels  found in this  case  were  colourable        imitations  of  the genuine wrappers and labels  shows  that        there was resemblance.  The High Court however has  stressed        the  difference in detail between the two sets  of  wrappers        and labels but seems to have overlooked Explanation 1 of  s.        28  which  says that it is not essential  to  counterfeiting        that  the  imitation  should  be  exact,  even  though   the        Explanation  is  quoted in the judgment of the  High  Court.        What  the  High Court had to decide was  whether  even  with        these differences in detail which had ’also been noticed  by        the Magistrate and the Sessions Judge a person might        917        be  deceived by these wrappers and labels recoverd from  the        respondents’shops.   This aspect of the matter has not  been        considered  by  the High Court at all and it  has  contented        itself  by saying that the wrappers and labels recovered  in        this  case were colourable imitations of the  genuine  trade        marks.   That in our opinion does not dispose of the  matter        so  far as s. 28 is concerned.  The High Court  should  have        found whether the resemblance in this case was such as might        deceive a person.  The High Court bad before it the opinions        of the Magistrate and the Sessions Judge.  Their opinion was        to the effect that the resemblance was such as might deceive        a  person and that the differences in detail did not  affect        that  resemblance.  It was this aspect of the  matter  which

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      the  High Court failed to consider when it went on. to  hold        that the labels and wrappers recovered ’along with the soaps        from the shops of the respondents were not counterfeit.   We        have  looked  at  the  labels  and  wrappers  on  the  soaps        recovered  from the shops of the respondents  ourselves  and        compared  them with the labels and wrappers of  the  genuine        Sunlight  and Lifebuoy soaps and we agree with the  opinions        of  the  Magistrate and the Sessions Judge that  the  resem-        blance is such that a person may be deceived by it.  In  the        circumstances, Explanation 2 to s. 28 will apply and as  the        contrary  was not proved it must be held that the  necessary        intention  or  knowledge was there and  these  wrappers  and        labels are counterfeit of the genuine wrappers and labels of        the Sunlight and Lifebuoy soaps of the company.        The appeals must therefore be allowed; but as the High Court        did  not  consider the points relating to  jurisdiction  and        limitation and whether the respondents were protected  under        el.  (a) and cl. (b)or (c) of s. 486, they will have  to  be        remanded to the -High Court for disposal according to law on        these  points.  We therefore allow the appeals  and  setting        aside  the acquittal of the respondents under s. 486 of  the        Indian Penal Code only send the cases back to the High Court        for disposal on the lines indicated above.                                        Appeals allowed.                                              Cases remanded,        918