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Noor Mahomed Haji Usman and anr. Vs. the State - Court Judgment

LegalCrystal Citation
SubjectCriminal;Intellectual Property Rights
CourtMumbai High Court
Decided On
Case NumberCriminal Appeal No. 124 of 1956
Judge
Reported inAIR1956Bom700; 1956CriLJ1302
ActsIndian Penal Code (IPC), 1860 - Sections 109, 478, 482, 483 and 486; Trade Marks Act, 1940
AppellantNoor Mahomed Haji Usman and anr.
RespondentThe State
Appellant AdvocateShavksha and ;S.G. Patwardhan, Advs. ;assisted by Lalji Desai and ;B.M. Parikh
Respondent AdvocateR.A. Jahagirdar, ;N.M. Shanbhag, ;S.T. Bhalekar, Advs. and ;Y.V. Chandrachud, Addl. Asst. Govt. Pleader
Excerpt:
criminal - colourable imitation - sections 482, 483 and 486 of indian penal code, 1860 and trade marks act, 1940 - appeal filed against conviction of appellants charged for committing colourable imitation of label of complainant's product - after consideration of evidences and witnesses it found that accused were carrying business and using that label for very long time - there was no colourable imitation as there was no similarity between label of accused and complainant - appeal accordingly allowed and conviction of appellants set aside. - - the first accused as well as the second accused filed lengthy written statements, denying the charges laid against them; shevksha appearing for the appellants has challenged the conclusion of the learned judge referred to above and before i.....dixit, j.1. this appeal arises from a complaint filed by one mahadev shantaram pawar, manager, sable waghire & co. for offences under sections 482, 483 and 486, i. p. c. the prosecution story, as set out in the complaint, is as follows: --the complainant is the bombay manager of the firm of m/s. sable waghire & co. of poona. the firm has a sales office in bombay. accused 1 is a bidi merchant and he carries on business near the null bazar market. accused 2 is a tobacco dealer in poona. the firm of m/s sable waghire & co. manufactures bidis, according to the complainant, for over thirty years and the bidis which arc manufactured are known as 'shivaji bidis' or 'chhatrapati bidis'. the bidis in question together with the labels are the property of the firm and they are registered as a trade.....
Judgment:

Dixit, J.

1. This appeal arises from a complaint filed by one Mahadev Shantaram Pawar, Manager, Sable Waghire & Co. for offences under Sections 482, 483 and 486, I. P. C. The prosecution story, as set out in the complaint, is as follows: --

The complainant is the Bombay Manager of the firm of M/s. Sable Waghire & Co. of Poona. The firm has a sales office in Bombay. Accused 1 is a bidi merchant and he carries on business near the Null Bazar Market. Accused 2 is a tobacco dealer in Poona. The firm of M/s Sable Waghire & Co. manufactures bidis, according to the complainant, for over thirty years and the bidis which arc manufactured are known as 'Shivaji bidis' or 'Chhatrapati bidis'. The bidis in question together with the labels are the property of the firm and they are registered as a trade mark and property mark with the Registrar of Trade Marks, Bombay, the registration number being 12549 of 25-2-1943.

According to the complainant, the goods have acquired popularity and the labels which are printed on rose paper have a distinctive mark in relation to the goods manufactured by the firm. On account of the popularity and eminence of the goods, spurious imitations are made by dishonest traders wanting to make easy money by passing off their spurious and imitated goods of inferior quality as the goods of the firm of M/S Sable Waghire & Co. The firm has four manufacturing centres in the State of Bombay and the firm has employed over a thousand workers at those centres and the daily turn-over of the goods manufactured by the firm is twelve laks of bidis.

2. The Manager says that upon receipt of information from the sales agents and his customers he visited the bidi shop of accused No. 1 and he noticed that the first accused had stored the bidis both in packets and containers exactly similar and identical to the goods manufactured by the firm and that the first accused was selling bidis in those labels and containers to the customers asking for 'Chhatrapati bidis'. He says that on 5-2-1954 and again on 6-2-1954 he along with his salesman approached the first accused and asked for 'Chhatrapati bidis' and he was given a container consisting of twenty packets of twenty-five bidis each for a price of Rs. 2-11-0.

A memo was not given to him in respect of the goods purchased, although one was asked for & at the time of the purchase witnesses Nos. 2 to 6 i.e. the witnesses mentioned in the complaint, asked for 'Chhatrapati bidis' and they were sold 500 and 25 bidis each for a price of Rs. 2-11-0 and Re. 0-2-6 respectively.

3. A further inquiry was made and the complainant noticed that accused No. 1 was in league with accused No: 2 and accused Nos. 1 and 2 were both aiding and abetting each other in the manufacture and sale of the imitated goods with a dishonest intention to cause wrongful loss to the business of M/S. Sable Waghire & Co. The words in Marathi 'Registered Trade Mark No. 63' appearing on the container of the goods of the accused are misleading and they constitute a false statement calculated to cheat the public and the authorities concerned as there is no such trade mark No. 63.

The complainant says that the accused are the makers and manufacturers of false and counterfeit trade marks and property marks and are in possession of instruments and goods for manufacturing the same with criminal intent to manufacture goods, labels and seals of the trade mark of M/S. Sable Waghire & Co. and pass them off to customers asking for the goods of the firm and are thus cheating the customers.

3a. The first accused as well as the second accused filed lengthy written statements, denying the charges laid against them; The learned Magistrate considered the evidence led before him, both oral and documentary, and he came to various conclusions as set out in his Judgment. The main finding which was given by him by looking at Exs. E and F and A and C is that Ex. E bears a colourable imitation of the trade mark which is on Ex. G and Ex. P bears a colourable imitation of the trade mark which is on Ex. A, and having come to that conclusion, he convicted accused 1 of the offence under Section 486 and sentenced him to pay a fine of Rs. 100/- in default to suffer rigorous imprisonment for ten days. He also convicted accused No. 2 and sentenced him to pay a fine of Rs. 100/- in default, to suffer rigorous imprisonment for ten days on the first count and to pay a fine of Rs. 300/- in default, to suffer rigorous imprisonment for one month on the second count. Accused Nos. 1 and 2 feeling aggrieved by the convictions and the sentences imposed upon them, have filed this appeal.

4. Mr. Shevksha appearing for the appellants has challenged the conclusion of the learned Judge referred to above and before I deal with the oral evidence as well as the documentary evidence led ill the case, it is necessary to set out some preliminary facts. A partnership was formed in the year 1944 under the name of M/S Sable Waghire & Co. The partnership was composed of two partners: (1) Shankar Raghunath Sable and (2) Haribhau Maruti Waghire. The partnership agreement provides that the business was to be carried on at Kurla or at such other place or places as the partners may from time to time agree upon and the partnership was to come into operation as from 18-10-1944. The duration of the firm was stated to be at will. The partnership deed says:

'That the firm especially deals in bidis under the brands namely 'Chhatrapati' and 'Shivaji' bidis. The various brands of the snuff shall be 'Cow brand', Chakkar brand', Rajkamal Brand' and 'Bell brand'. The firm may choose any other brand also'.

In the partnership Shankar Raghunath Sable had a ten annas and six pies' share, while Haribhau Maruti Waghire had a five annas and six pies' share. The partner Shankar Raghunath Sable was doing the business of manufacturing bidis in the name of 'Chhatrapati Bidi Works' since about 1925. He has a brother by name by G.R. Sable and it appears that his brother joined the partnership a little later after the partnership was formed. Before the partnership; Sable was carrying on business in bidis which he was manufacturing and sealing and which was his ancestral business. He himself joined the ancestral business in about 1924.

It appears that this ancestral business was turning bidis in the shop at Kurla and as the sales increased, a trade mark of Chatrapati Shivaji on the bidis was introduced. According to Sable, he started selling bidis in bundle of 25 and packets of 20 bundles after 1926 and on the packets were printed the words 'Chatrapati Bidi Works', 'Chhatrapati Shivaji Bidis Prop. S.R. Sable'. He then started a workshop at Poona and his brother G.R. Sable was looking after the workshop. Sable's father died in 1943. The other partner Haribhau Maruti Waghire was doing business in snuff and tobacco also in Poona and it was in that way that Sable and Waghire entered into a partnership business in 1944.

5. In 1943 an application was made for registration of the trade mark. That application was made on 25-2-1943. It was at a time when the partnership had not been formed and so the application was made by Haribhau Maruti Waghire, trading under the name & style of 'Ramchandra Waghire & Co.' In the application it was stated that the business was being done and the trade mark was being used for more than thirty years and there is now no dispute that Haribhau Maruti Waghire was doing business under the firm name 'Ramchandra Weghire & Co.' on the trade mark in respect of the words 'Chhatrapati Shivaji'.

It is also not in dispute now that there was also a trade mark in connection with the picture or portrait of Shivaji and according to the complaint, to which reference has been made already, these were the two trade marks of Sable and Waghire. Mr. Jahagirdar who appears for the complainant says that the trade mark on which he relies is not the trade mark constitutes by the portrait of Shivaji nor by the words 'Chhatrapati Shivaji' but by the mark which has acquired the reputation of a trade mark and in this connection he relies upon the latter part of Section 478, I. P. C. That section so far as material, provides that:

'For the purposes of this Code, the expression 'trade mark' includes a trade mark registered under the Trade Marks Act, 1940, and any mark used in relation to goods 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 to use the mark'.

So far as this contention is concerned, Mr. Jahagirdar says that the trade mark on which he relies is not the two trade marks referred to above but a mark which has acquired the reputation of a trade mark within the meaning of the latter part of Section 478, I. P. C.

6. Before the complaint was filed, there was correspondence between the complainant on the one hand and the accused on the other. It would be convenient to briefly refer to that correspondence. On 24-10-1953 a letter was written on behalf of M/S. Sable Waghire & Co. to accused No. 2 and in that letter it was stated that M/s Sable Waghire & Co. are famous bidi manufacturers of long standing and it has various labels including a label 'Chhatrapati Shivaja' which is well known and the bidis with the said label are, for more than thirty years, popular among the bidi smoking public.

It was stated in the letter that the said Chhatrapati Shivaji label had become a trade mark of the complainant's bidis and it has been, registered as a trade mark under the Trade Marks Act. It was complained that accused No. 2 was found selling bidis with a label which was a colourable imitation of the complainant's famous and old label; 'Chhatrapati Shivaji label'. It was stated that the bidis manufactured by accused No. 2 were of inferior quality and the public were purchasing them as though they were of superior quality. A reply was sent to this letter on behalf of accused No. 2 to M/S. Sable Waghire & Co. and the reply is dated 4-11-1953.

In the reply it was stated on behalf of accused No. 2 that it was not correct to say that the bidis manufactured and sold by the complainant had a standing of thirty years and it was also incorrect to say that the bidis were in great demand in Thana, Bombay, Belgaum and Karwar districts. It was said that Chhatrapati Shivaji label is not the trade mark label of M/S. Sable Waghire & Co. It was pointed out in the reply that accused 2 owned a workshop called Shri Shivaji Maratha Bidi Works which was in existence for about 40-42 years and its product of Shivaji Chhap bidi was being sold for the last 40-42 years. There was then a letter by the firm accused No. 2 on 17-12-1953. In that letter it was pointed out that the firm was surprised to read the reply of accused No. 2 dated 4-11-1953.

It was pointed out that although Chhatrapati Shivaji label had been duly registered under the Trade Marks Act, 1940, accused 2 was deliberately denying the said fact. It was also pointed out that the firm had two registration Nos. 12549 and 12550 and accused 2 was aware of the fact. It was suggested that it was incorrect to say that accused 2's bidi workshop was in existence for about 40-42 years, and that his Shivaji Chhatrapati bidis were sold for 40-42 years. It was pointed out that the main centre of the business of the firm was at Kurla and the letter concluded by reciting that accused 2 should please let the complainant know his trade mark registration number, if accused 2 had any. There was then a letter by accused 2 to M/S. Sable Waghire & Co. on 12-1-1954. In that letter It was pointed out that M/S. Sable Weighire & Co. had started the business about ten years back in the name of Chhatrapati Shivaji bidis and it was said that accused 2's label had been started in the year 1928 and the business was being conducted in the name of Shivaji Maratha Bidi works. The upshot of this correspondence resulted in the filing of a complaint referred to above.

7. In order to understand the evidence in the ease it will be necessary first to mention the nature of the evidence which has been given by the complainant i.e. the Manager of M/S. Sable Waghire & Co. He describes the business carried on by the firm as follows. The bidis are sold in bundles of 25 and packets of 500, each packet containing 20 bundles. The bundle is wrapped in a pink label and on the label the name 'Chhatrapati Bidi Works' appears at the top. By the side of this name the numbers of the trade marks viz. 12549 and 12550 are mentioned.

There is a picture of Shivaji in the centre and below that is the name of S. R. Sable and the address Kurla, G.I.P. is mentioned in Marathi. There are other words in Marathi on the label denoting the quality of the bidis. There is also a picture of Shivaji and the numbers of the trade marks and the name of the works at the bottom with the words 'Seal Bandh' in Marathi on both sides. A bundle of 25 bidis can be seen by reference to Ex. A. A packet containing 20 bundles can be seen by reference to Ex. B. The Complainant paid a visit on 6-2-1954 to the shop of accused 1 in the company of Bhagvandas and some others and a packet was purchased on the occasion, as also a bundle. They are respectively Ex. E and P in the case. The packet of the bidis manufactured by accused 2 is constituted by the document Ex. E and briefly stated, the description as appears upon this packet is 'Shri Shivaii Maratha Bidi Works' with a portrait of Shivaji in the middle. Below that are the words the proprietor V.K. Jadhav, Poona, 2. The complainant's case is that this packet. Ex. E., is a colourable imitation of the packet, Ex. B and Ex. E is a colourable imitation of the bundle, Ex. A. It is to be borne in mind that the principal evidence in this case is the evidence of the two partners of the firm viz. Shankar Raghunath Sable and Haribhau Maruti Waghire. I will refer first to the evidence of Haribhau Maruti Waghire. According to Waghire, after the partnership was formed, the firm started manufacturing bidis in Poona and the Kurla shop of S.R. Sable was converted into a selling centre.

S.R. Sable was selling Chhatrapati Shivaji bidis in bundles of 25 wrapped in a pink label with a picture of Shivaji on it and in packets of 20 bundles. He says that on one side of the packet was pasted a label with a photo of Shivaji on it and when Sable was selling the bundles and the packets the registered number did not appear on either of them. The packet, Ex. B, in relation to which the infringement has been made mentions Proprietor S.R. Sable, Kurla and not M/S. Sable Waghire & Co. It is to be borne in mind that Sable was manufacturing bidis prior to his joining the business in partnership and Waghire was doing business in tobacco and snuff and although the partnership was formed in 1944, Ex. B, which is the packet, did not bear the name of M/S. Sable Waghire & CO. but mentioned the name Proprietor S. R. Sable Kurla, only.

On the other hand, at the top of Ex. E which is said to be the colourable imitation of Ex. B, there is the picture or portrait of Shivaji and manufacturers are said to be 'Shri Shivaji Maratha Bidi Works'. So far as the evidence of Waghire is concerned, he has admitted that he himself had no label for bidis as he was not dealing in Bidis at all and he said that he had no documentary evidence to show that S. R. Sable was using Chhatrapati Shivaji bidi labels before the partnership was formed.

According to Mr. Jahagirdar, the label which is to be found upon the packet, Ex. E, is the colourable imitation of the label upon the infringed packet, Ex. B, and he says that the get up of this label and the general description of the label have acquired the reputation of a trade mark within the meaning of Section 478. Now Waghire has admitted further that the labels were being printed in a press known as Sharada Litho Press and this was being done 7 or 8 years before the date of the complaint and surprisingly enough, the owner of the printing press has not been examined in this case.

Since the case of the complainant is that Ex. E is the colourable imitation of Ex. B, it was up to the complainant to establish that the label, as one finds on Ex. B, was in existence for a number of years so as to be able to acquire the reputation of a trade mark within Section 478 and Mr. Jahagirdas fairly conceded that in support of his contention there was only oral evidence and there was no documentary evidence whatsoever. To that oral evidence I will refer in a moment.

Then we have the evidence of Shankar Raghunath Sable. He has also admitted that he had no documentary evidence to show that he was manufacturing and selling bidis from 1926 in packets like Ex. B. He has further admitted that he had no documentary evidence to show that prior to 1943 he was using labels like those which are on Ex. B. He stated that he started selling bidis wrapped in labels after 1938 or 1939.

It is to be noted that the application for registration was made on 17-1-1943 and from the evidence of Waghire it will be found that the firm received the registration certificate on 15-8-1946 in connection with application No. 12550 and he received the registration certificate on 15-4-1948 in connection with application No. 12549. As the registration certificates were received on 15-8-1946 and on 15-4-1948, it is quite clear that the registration numbers viz. 12549, 12550 could not have appeared upon the labels prior to 1946 or 1948.

The evidence given on behalf of the complainant, however, is that the label to be found on Ex. B was the label which was being used at least for 10/12 years. There is the evidence of a witness examined on behalf of the prosecution and the evidence of a witness Ramchandra Venkatesh Despatri shows that originally the bundles of Sable bidis were wrapped in pink paper with the two ends being open and upon the label there used to be a picture of Shivaji and the packets were packed in a piece of old newspaper and the pink label was pasted on one of the sides of packets.

It is clear, therefore, that in the beginning the packets of bidis manufactured by Sable were packed in a piece of old newspaper and it was only after the registration certificate was issued that the label which one sees upon Ex. B was the label which was used by the firm of M/s, Sable Waghire & Co. There is one significant fact which is to be noted and that is this that upon the label is to be found the name 'Proprietor S. R. Sable' and not the name of the firm 'M/s. Sable Waghire & Co.', although a partnership was formed between Waghire and Sable, who agreed to do business in bidis after the year 1944.

8. Mr. Jahagirdar, however, contended that although there was no documentary evidence to show that the label which one finds on Ex. B was being used by the firm for 10/12 years, there was oral evidence of witnesses which went to show that this label was being used at least for 10/12 years. In this connection he referred first to the evidence of Bhagwandas. Bhagwandas was one of the persons who accompanied the complainant on the occasion of his visit to the shop of accused 1, Bhagwandas' evidence was that Sable Waghire & Co. started manufacturing Chhatrapati Shivaji bidis from 1946,

In effect, therefore, his evidence was that the label was being used by M/S. Sable Waghire & Co. at least from 1946. Mr. Jahagirdar then relied upon the evidence of Ganpat Govind Padam who stated that he sold Chhatrapati Shvaji bidis as also other bidis which were turned in his shop and he stated that he always saw the bidis wrapped in a pink label bearing the picture of Shivaji on it. He also stated that he had been selling such packets like Ex. B for a very long time and the bidis and had always been packed as Ex. B. He stated at the end that he had been selling such bundles and packets for the last more than twenty years.

This last statement is obviously -not correct because he gave evidence in 1955 and this suggests that the bundles and packets were in use at least from 1935. But that was not even the evidence of Waghire himself. This evidence also cannot be accepted because the two registration numbers which are to be found upon the packet viz. 12540 and 12550 could not have been written upon the label at least before 1948.

He then relied upon the evidence of Husseinmiya Dhannuddin and Husseinmiya Dharumddin's evidence was that from the picture of Shivji on the label he came to know that the bidis were manufactured by Sable. Then he relied upon the evidence of Ramchandra Daspatri and Daspatri's evidence was that the packing which was to be seen upon Ex. B had started about 10 or 12 years back. It is noteworthy that this evidence cannot again be true because the label could not contain the numbers 12549 and 12550 before 1946 or 1918. Therefore, the claim made by the firm that the label which is to be found upon Ex. B was in use at least for 10/12 years cannot be true.

There is a further difficulty in the way of Mr. Jahagirdar and that is this that upon the label the proprietor as mentioned is Sable. The proprietor could not be Sable but the proprietor could only be the firm consisting of Waghire and Sable. Therefore, having regard to the evidence adduced on behalf of the prosecution, it seems to us that it is not possible to accept the interested testimony of the partners of the firm of M/S. Sable Waghire & Co. The evidence of the witnesses examined on behalf of the firm cannot also be accepted because their evidence is not, in the main, true. If, therefore we are not satisfied that the label which is to be found upon Ex. B has been in existence for 10/12 years as made out by the complaint, it is not possible to hold that this label has acquired the reputation of a trade mark within the latter part of Section 478.

9. This conclusion receives support from the defence which has been put up by accused 2. Accused 2 has been carrying on business for some considerable time. Accused No. 2 has filed a written statement and in the written statement he has pointed out that he started the business in about 1917 and the business was of making bidis in Poona in the trade name of Shri Shivaji Maratha Bidi Works. He then referred to a dispute which arose between him on the one hand and one Vallabbhai Dalabhai Patel on the other and that dispute arose because Vallabhbhai complained that accused 2 had made an infringement of the trade mark used by him.

It is, therefore, necessary to look at that correspondence. On 28-12-1929 a letter was written on behalf of Vallabbhai Dalabhai Patel to accused 2 and it was stated in that letter that the concern of Vallabbhai Dalabhai Patel was in existence for the last several years at Camp Poona. It was said that Patel had a trade mark in the form of Shivaji picture and the concern had been registered under the name of Shivaji Bidi Works. It was pointed out that Patel had been using that trade mark and accused 2 had been using the same for his own business concern.

A notice was accordingly given to the effect that accused 2 should avoid using the trade mark after the receipt of the notice. This notice was replied to on 3-3-1930 and it was pointed out in the reply given on behalf for the second accused that it was since several years that the Bidi Works had been shifted to Vetal Peth. It was pointed out that the trade mark of the business of the second accused was 'Shri Shivaji Maratha Bidi Works, Poona'. It was further pointed out that the picture used by accused 2 was of Shivaji in the form of a bust, while the picture used by Patel was of Shivaji on horse back and this difference between the pictures of Shivaji in each case was pointed out.

In this connection there is the evidence of witness Narsinhbhai, who is one of the defence witness. In his evidence he stated that he is the brother-in-law of Vallabhbhai, that he knew the complainant as well as accused 2 and that he knew that accused 2 was doing business in bidis and a label which had a picture of the bust of Shivaji and the label was similar to the label, Ex. O. He stated that he was noticing that label since 1924: He then referred to the notice given in 1929 and a reply given by accused 2.

In cross-examination he stated that from 1920 to 1924 notice was not taken of the alleged infringement by accused 2. This evidence of Narsinhbhai in the light of the letter and the reply referred to already shows that the statement of accused 2 in his written statement that he was carrying on business in bidis for a very long time with the picture of Shivaji as a mark upon the label is true. If that is so, it is difficult to accept the contention of the complainant that the business of accused 2 had been started only recently and the label like the one upon Ex. O was a colourable imitation of the label, Ex. B.

It is to be noted that Mr. Jahagirdar has not contended that there is an infringement of any of the two trade marks i.e. trade mark in the form of a picture or portrait of Shivaji and the trade mark in the words of 'Chhatrapati Shivaji'. His contention is that the infringement is in respect of the label as one finds upon the packet, Ex. B and having regard to the evidence adduced in the case which is not supported by any documentary evidence, we are not satisfied that the label, Ex. E, is a colourable imitation of the label, Ex. B.

If it had been shown by Mr. Jahagirdar that this label was in existence for 'a long time, that is to say, for at least 10 to 15 years, then it would have been possible to hold that there was a resemblance between the label as upon Ex. E and upon Ex. B, because it is not necessary to constitute an offence that the label should be exactly identical. Provided there is similarity between the two so as to mislead an unsuspecting customer, the requirement of the law is satisfied. But as upon the evidence we hold that the complainant has not proved that this label has been in existence for 10 to 12 years as suggested by him, it is not possible to hold that accused 2 has committed an infringement of the label as upon Ex. B.

10. In view of this conclusion, it follows that the convictions recorded against the accused are not justified. It may be pointed out that Mr. Shavaksha for the appellants contested the finding of the lower Court that there was a sale by the accused 1 in respect of a packet and a bundle, but as we hold, as to the main finding of the learned Magistrate, that there could not be any colourable imitation as contended for by the complainant, it is not necessary to go into the evidence. The result is that this appeal must succeed.

11. The appeal will, therefore, be allowed, theconviction recorded against accused 1 under Section 486will be set aside and the sentence of fine passedupon him will also be set aside. The convictions recorded against accused 2 under Sections 109 and 483 andalso under Section 482 will be set aside and the sentencesimposed upon him 'will also be set aside. The twoaccused will be acquitted. The fines, if paid, shouldbe refunded to the accused.

12. Appeal allowed.


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