Karan Singh Complainant- v. Mohan Lal Accused-.

H.C.P Tripathi, J.:— This is an appeal under Sec. 417(3) of the Code of Criminal Procedure, against an order of acquittal recorded by a Magistrate 1st Class at Aligarh, in a case under Secs. 78 and 79 of the Trade and Merchandise Act 1958 (Act No. 43 of 1958).

2. The applicant had filed a complaint in the court of the Magistrate at Aligarh on 11-5-1960 inter alia on the allegations that he manufactures for sale an allopathic medicine styled as “Ark Karn Prakash—Siktara Ki Bottle” which bears a registered trade mark, that the respondent had set up a shop in front of the applicant's business premises and previously had been selling there a medicine under the name of ‘Sheothara Ki Bottle’ on the pattern of the applicant's medicine, that since it could not command any appreciable sale in the market, the respondent falsified the applicant's trade mark and put a label as ‘Siktara Ki Asli Bottle—Ark Sheoprakash” on his bottles which is an immitation of the applicant's trade mark, and which is creating confusion in the public and deceiving an unwary purchaser as it is passing off in the market as the medicine manufactured by the applicant. This, the applicant asserted, is not only causing great loss to the applicant but had also resulted in deceiving the public and the respondent was, therefore, liable for punishment under the law. On 7-6-1960 the respondent filed a written objection before the trial court challenging the maintainability of the complaint in which he asserted that he was innocent and that a civil suit no. 1 of 1951 had been filed by the complainant against him in the court of District Judge, Aligarh, which was subsequently compromised between the parties, and that the present complaint had been filed only for causing harassment to him and that the matter could not be dealt with by the criminal courts and that if there was any bona fide dispute between the parties the same could be settled only by the civil courts or by the District Judge. He also denied therein to have either falsified complainant's trade mark or to have falsely applied the same to his goods or to have given any false description to his medicine. After the conclusion of the prosecution evidence the respondent filed another written statement on 28-11-1962. In this written statement he admitted that he has been manufacturing for sale an Ayurvedic medicine ‘Ark Sheoprakash—Siktara Ki Asli Bottle’ but he asserted that the label on the same was wholly dissimilar to the complainant's label and could be distinguished even by a naked eye. He again asserted that there was a civil suit between the parties which was compromised and it was one of the terms of the compromise that the parties will continue to sell their respective medicines in the same manner and under the same name and style as they had been doing before. In his statement before the court on 25-9-1962 also the respondent had raised similar pleas against the complainant's allegations.

3. The parties led evidence in the case. The trial court, after hearing them at length, dismissed the complaint on a preliminary point that it was barred under Sec. 92 of the Act because in its opinion the complainant and his chemist “knew well about this falsification and infringement at least before 1956, and even if they came to know about it at the end of 1957 this complaint, which was filed on, 11-5-1960, is clearly time barred.” It will be noticed that the learned magistrate did not decide the case on merits though the case seems to have had a protracted hearing and the parties had led all the necessary evidence. In my opinion it was improper on the part of the magistrate to have refrained from giving his findings on the questions of fact and law which arose in the case when the whole matter was before him.

4. Learned counsel for the appellant has contended that the finding of the trial court that the complaint was barred by time is erroneous in law. I find force in this contention.

5. Section 92 of the Act runs as follows:—

“No prosecution for an offence under this Act……shall be commenced after the expiration of 3 years next after the commission of the offence charged, or 2 years after the discovery thereof by the prosecutor, whichever expiration first happens.”

6. A plain reading of the section would show that a prosecution can be launched either within three years of the offence charged or within two years of its discovery by the prosecutor, whichever happens first. Thus if the offence charged relates to a particular period and if the complaint has been filed within three years of that period it cannot be held to be barred by Sec. 92 of the Act. The learned magistrate, while applying Sec. 92 to the facts of the case, overlooked the first part of the section which enables a prosecutor to commence his prosecution at any time within three years of the specific offence which he charges against the accused. In this case there is evidence on the record that the respondent who had discontinued to style his medicine as ‘Sikatara Ki Bottle’ had again began to do so within three years of the date of the complaint. Both the complainant and his witnesses had testified to this effect in their depositions and the learned magistrate overlooked them.

7. In the case of Bhrigunath Pandey v. Ram Narain Lal Panjiara A.I.R 1959 Pat. 554. a Division Bench of the Patna High Court, after reviewing the case law on the point, quoted with approval the following observation by a Division Bench of the Calcutta High Court reported in A.I.R 1928 Cal. 495:—

“The point is by no means free from difficulty; but we are on the whole satisfied that Mr. Basu's contention is correct. We think that the word ‘offence’ means the ‘offence charged.’

In this view of the law, I hold that the complaint was not barred by Sec. 92 of the Act.

8. However, there is another difficulty in the way of the applicant which appears insurmountable.

9. Before the trial court the respondent was charged under Sec. 78(a), (b) and (d) for falsifying the complainant's trade marks, for falsely applying to his goods any trade mark and for applying false trade description to his goods respectively and also under Sec. 79 of the Act for exposing for sale his bottles of medicine with false trade mark or under false trade description.

10. The relevant portion of Sec. 77 which defines the falsification and false application of trade marks runs as follows:—

“77. Falsfying and falsely applying trade marks.—

(1) 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.

(2) A person shall be deemed to falsely apply to goods a trade mark who, without the assent of the proprietor of the trade mark,—

(a) applies such trade mark or a deceptively similar mark, to goods or any package containing goods;

(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filing or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.

(3) Any trade mark falsified as mentioned in sub-Sec. (1) or falsely applied as mentioned in sub-Sec. (2), is in this Act referred to as a false trade mark.

(4) In any prosecution for falsifying a trade mark or falsely applying a trade mark to goods the burden of proving the assent of the proprietor shall lie on the accused.”

11. On the language of the section, it is abvious that if a person does any or all of the acts mentioned therein with the assent of the proprietor of the trade mark he commits no offence.

12. A similar provision is found incorporated in Sec. 22(2) of the Trade Marks Act of 1940 which was replaced by the present Act. Sec. 22(2) provided as follows:—

“(2) The said right to the use of a trade mark shall not be deemed to be infringed by the use of any such mark as aforesaid by any person—

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark;” or

13. Section 4(3) of the English Trade Marks Act 1938 also provided as follows:—

“(3) The right to the use of a trade mark given by registration as aforesaid shall not be deemed to be infringed by the use of any such mark as aforesaid by any person—

(a) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk of which they form part, the proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or ??? consented to the use of the trade marks; or

(b) in relation to goods adapted to form part of, or to be accessory to, other goods in relation to which the trade mark has been used without infringement of the right given as aforesaid or might ??? the time being be so used, if the ??? of the mark is reasonably necessary in order to indicate that the goods are so adapted and neither the purpose nor the effect of the use of the mark is to indicate otherwise than in accordance with the fact a connection in the course of trade between any person and the goods.”

14. It will be noticed that both under the English Trade Marks Act of 1938 and the Indian Trade Marks Act of 1940 an express or implied consent of the registered holder of the trade mark to its use is a complete answer to a charge of infringement of the aforesaid trade marks. In my opinion, therefore, the word “assent” which finds place in Sec. 77 of the present act, which has replaced the old act of 1940, has to be interpreted in this back ground, and if it is found established on facts that the applicant had ever consented to the use of his registered trade mark either expressly or impliedly, by the respondent, the charge of its infringement levelled against him must fail.

15. The respondent had contended before the trial court that lie had been using the present label on his phials of medicine with the express consent of the applicant arrived at between them by compromise in suit No. 1 of 1951 of the court of District Judge, Aligarh. The aforesaid suit was instituted by the applicant against the respondent under Trade Marks Act V of 1940 in the court of the District Judge, Aligarh on 21-2-1951. A certified copy of the plaint of the suit is on record. In this suit the plaintiff had alleged that he had been manufacturing and selling a medicine under the name of ‘Sikatara Ki Bottle’ or ‘Siktara Ki Asli Bottle’ which, was a registered one and that the defendant had began to immitate their trade mark by describing his medicine falsely as ‘Siktara Ki Bottle’ and by putting a label on his bottles, which, in its general make up and ??? closely resembles the ??? with a view to pass it off as the plaintiff's goods. The plaintiff in that case further prayed inter alia for the following relief:—

“A decree for permanent injunction restraining the defendant from describing his goods as ‘Siktara Kee Bottle or Siktara Kee Asli Bottle’ and copying the name, label and trade mark of the plaintiff be passed in favour of the plaintiff against the defendant.”

16. On 17-8-1953 parties of the suit filed a compromise petition in the case, a certified copy of which (Ex. Kha 1) is on record, which inter alia provided that the plaintiff will continue to sell his medicine under the same name and style as he had been doing before and the defendant will continue to sell his medicine under the same name and style as he had been doing in the past and no party will raise any objection to such sales by the other party. Thus it is clear that as early as in 1953 the applicant had consented to the respondent's continuing to sell his medicine under the name and style of ‘Siktara Ki Bottle’.

17. Learned counsel for the applicant has contended that on the terminology used in the compromise petition it cannot be said that the applicant had consented to the use of a similar deceptive label or mark by the respondent and at the most it can be said that he had consented only to the use of his name. I do not find any substance in this argument. In the civil suit the complaint made by the applicant was that the respondent was selling his medicine as ‘Siktara Ki Bottle’ under a label and trade mark which was a copy of the applicant's trade mark. The applicant had prayed therein a relief of injunction for restraining the respondent from doing so. But ultimately lie compromised and allowed him to sell his medicine under the same name and style as he had been doing before.

18. In any case, I am clearly of opinion that the controversy involved between the parties relates to complicated questions of abandonment of user and express or implied consent of the registered holder of the trade mark, and as such, is not fit to be decided by a criminal court.

19. In the case of Ashutosh Das v. Keshav Chandra Ghosh A.I.R 1936 Cal. 488. a Division Bench of the Calcutta High Court had held:—

“In deciding whether a dispute between the parties over trade marks and commercial designs should be brought in a civil or a criminal Court, the real practical test is that the Criminal Procedure is only to be used in simple and clear cut cases where a speedy relief is required by the prosecution. In all cases where complicated matters of registration, abandonment of user and so on are concerned, it is desirable that the dispute should be decided in a civil Court.”

20. I find myself in respectful agreement with that view.

21. The appeal has no force and is dismissed.

22. Appeal dismissed.