S. P. Jain v. S. Prasad (Dead) (Shelat Acting CJ)

1050 SUMAT PRASAD JAIN ~ _:\_ _v._ SHEOJANAM PRASAD (DEAD) & ORS _August_ 29, 1972 [J. M. SHELAT, Acting C.J. D. G. PALEKAR AND S. N. DWIVEDI, JJ.] ~ 8 _r·_ _Appellant_ _selling his products in tht: name_ _of_ _another-Product!_ _not_ _regiattrtd_ _under_ _Trade_ _Mark!.'_ _Act-Wirttlrer_ _appellant violated "property_ _mark_ _of_ _the_ _Rtspondent-Trctdc_ _mark_ &: _property mark distinguished._ S. the respondent, who died during the pendency of the appeal before the High Court, evolved a formula manufacturing a scent, 'Basant Babar', which became very popular. S, applied for registration of the Trade (" M:uk, but the application was not granted due to certain technical _f._ defect~. The appellant had also put up for sale a scent prepareJ by him and ~ve it the name of, _'Pushp Raj'_ Scent. This scent, however, did not become popular. So, he started putting up for sale his said scent under the name of _Basant Bahar_ in receptacles, similar to thooe of the Respondent, except the name of the manufacturer. D _J •••_ 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 Add!. Session Judge set aside the said order of conviction and sentence. Th~ 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 use<: expressions, such as, Trade Maork, counterfeiting his Trade Mark etc, in substance the complainant E averred counterfeiting of "property mark" and accordingly set aside the order of acquittal E 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 1t pro- F. perty mark .. A Tr&:le 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 tion of a Trade Mark is to give as an proPrietor to use that mark. The func· indication to the purchaser as to the . ~ I ~==·= I ma11ufacuture 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 passed on their way to the market. [1055F} G ·~ In _re_ Powell's Trade Mark (1893) 10 R.P.C. 200, referred to. _'1_ On <he other hand, a property mark, 1893 defined by S.479 of the Penal Code, means a mark used for denoting that a moveable property belonp _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 ownersh'o in them. In other words a Trade Ma-rk concerns the goods themselves, H while a prooerty mark concerns the proprietor. A property mark atta::hed ~ 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] J"" _-_.:.;,.....::---··_ _-- - : ...:._ _.... . .._ 4.- :-; .... #### s. P. JAIN v. S. PRASAD (Dead) (She/at Ac( . • - - ----'" , _mgc.J.)_ 1os1 (J..n _Emperor_ v. _Dhyabhai Cltakasha_ 1904 ' 6 Bom LR _S_ (ii) To succeed .on the charge under - - • 13 referred to) 5 lain~ot had to establish that the appellant 5 · 482 and s. 486 th and sold by him or the pack~ts and reccptact~ked· ~h~ SO!nt rnanu~a~~liD:>­ actets or receptacles beanng that mark an~ cont:un1ng such ~ nt 0 t= ~culatcd to cause it to be believed that th that he d1d so in a m'"annc c;ontain&d in t}'e packets so marked belong~}~d~· so marketed or seen~ _B_ tht purpose _OL_ s.486, he had further to c:stabli·h nc cornpla·mant. For ;old a mark or calculated exposed for to sale cause or it had to be in believed h:S posses t~. ' 1~0 that for sale, the appeUant good.\ having had m.anuracturcd by and belonging to the compl ~ the ~nt, Wa.\ the scent amant. [1056 F] (iii) Jn the prest;nt. case, the name _'Baranr_ _Bahar_ . . . ture the same mscnpttons, and the same receptacl wtth the same ptemark' denoting that the scent in quc:stion wa, the ~· wa~ ~c 'property C belonging to the complainant. From the finding arn~e::~u bactured ~d ;old a mark or calculated exposed for to sale cause or it had to be in believed h:S posses t~. ' 1~0 that for sale, the appeUant good.\ having had Court, which it it was must packed 'follow ':"'ith that the ~he appellant marked his same name, the same scc·t pictu~e ar.d thr an/~ thek c 1,n10 ~l inscriptions With the tntcnt!on of causing it to be '--l.tcved "tha the same . ed . th . uc t e sccot 50 [mar c, ] k d [or ] [t ] h [c ] [sc~n ] t [cont:un ] 10 e sal!! packets, was the one tnanu!aci\Jred by ancJ sold 1n the market by the complainant. The appeUant thus c;ommittecJ the oft:ence of both u~i ng a false property mark and of selling [goods ] rigbt in setting [marked ] as!dc [w1th ] the [a ] [counterfeit ] order of acquittt.l p [property mar] assed by [k. ] t [The Hi] he Addotional [gh ] [Court .,.,. ] ~~ioM Judge ancJ in restoring the orJcr of conviction anJ sentence JX!SScd by the Trail Court. [I 057] CRIMINAL APPELLATE . JURISDICTION : Criminal Appeal No. 181 of 1969. 10 0 [goods ] [marked ] [w1th ] [a ] [counterfeit ] [property mar][k. ] [The Hi][gh ] [Court .,.,. ] £ Appeal by special leave from the jud~cl'lt ~d. ord.:r dated April I 0, 1969 of the Patna High Court lll Cnm1nal Appeal No. 43 _ot_ 1966. _U._ _P. Singh_ and _K._ C. _Dua,_ for the appellant. _Gobind_ _Das_ and _U. S. Prasad_ for respondr:nt No. I (a). _8._ _P._ _Jl1a,_ for respondent No. 2. F The Judgment of 1.he Court was delivered . by . . - aJ b special Leave, IS dircet.!d _Shelat, Acting CJ. Thts appc • Y i h court of Patna agatnst the judgment and orde~ _cf_ the H ~ of acquittal passed whereby the High Court set astde the orde d the order of con#### e by !he Additional Sessions Judge aTo~;~~~istro.te unlier ss. 48 [2 ] F Vtctton and sentence passed by the rt and 486 of the Penal Code. . tl penJ~ncy or d' d durtJ!g IC - the . One Sheojanam Prasad (who te, 1 all materill nmcs ve hts app.:al before the l[inh Court) was ha He claimed to Ita pr . . . " re in Arra . b'ch h" gave opnctor of a prov1stons sto . a scent to w [1 ] ut 'into evolve{} a formula for m-anufactu~og Th~ scent, w~cn p a there& ###### It rh~ rutme of '"DASANT DAHAR: the course ol tun:na other lrtarkct, !>oon bccaml! popular and u~ed in cartoons _ari_ (1111 cusrom. The scent used to be p:tck h picturl! of a _P_ rccept:u.:Jes ~hich carried on thcnl [1 ] e .~ ##### ... ' j ###### . .. . ' 10!>2 SUPREME COURT REPORTS [1973] 1 S.C.R. angel) hoJding 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_ _BahlfT_ _Perfumery_ _Co._ ~hahabad". Sheojanam Prasad therl!after applied before the Reg1strar of Trade Marks for registration of ~e tra~e mark .. The ai:plication was, however, not granted as 1t contruned certam •techmcal defects. His case was that nonetheless the said scent with the aforesaid marks became popular in the market as the scent manufactt~;ed and sold by him. The case of Sheojanam Prasad was that the appellant was also conducting a provisions store in Arrah. Finding that his _Bar;ant_ _Bahar_ scent had become popular, the appellant put out for sale a ~cent prepared by him and gave it the name of _Pushp_ _Raj._ The Pushp Raj scent, however, did not become popular with custnmers. The appellant. therefore, started putting out for sale his said scent under the name of _Basant 3ahar_ 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 a<; folio,,s : . \ B ## • ~: ###### ' "14. That the failure of the ''Pushp Raj'' ~ed the accused to devise ways and means of destroy1.n~ the business credit of "Basant Bahar" lly surrephtlously and fraudulently and deliberately printing Tr~de M~rk label of Basant Bahar and packmg scents m r~cclp­ tacles of the various varieties with inferior quahty. of scent which are easily being palmed off as the genume "Basant Bahar" of the complainant with the res~lt t~at the accused uses false trade murk and sells mfenor qunlitv Basant Bahar to defame and destroy the good name Jof the complainant and. his scent (Basant Bahar) and make illegal gain for hnnself. J 5. That the accused is ~anufacturin¥ spurious scent and defrauding the public as genume Bas~nt Bahar with counterfeit imitation of Trade mark \~tth1 the sole object of making megal gain ?nd damagmg: the. business reputation of Basant Bahar m t~e hop~ of boosting up the sale of Pushp Raj by damagmg Ba~ant Bahar." ###### s~fore the Trial Magistra1e the defence t~~n up. by the appellant was that the Basant Bahar sc~nt was hts ongm~ i~ot duct that he had put that scent first m the market, an a ' ;.,'·-- .,. ~ ;. #### c ,, -. j J) #####, -~ _;,- .... # E ' ##### .\ . G H A B #### c D E F G H S. P. JAIN _v._ s_ PRASAD _(Dead)_ _(She/at,_ _Acting· C.J.)_ !053 it was Sheojanam Prasad who imitated •the genuine scent 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 Jinding that that scent had become popular, the appellant put out his own scent which was of inferior quality under the name of _Baso,. Bahar,_ and thus passed off his scent as if it was the one ###### manufactured and marketed qy the complainant On these findings, the Trial Magistrate convicted the appe11ant 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 1he death of the complainant the appeal filed by him abated, and whether his son Ashok Kumar could be brought en record as the legal representative of the deceased complainant, and (2) whether on the averments in the complaint and the evidenre on .. ecord a case of counterfeiting the property mark of the complaina-nt could be maintained. The High Ccurt 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 brought on record for the purpose of continuing an aopea1 filed by such a complainant. On that view: the High Court dismissed the application bv the complainant's son for being brought on record. The Hig:h Court, however, was of the view •that the complainant's death did not bring ab'1ut abatement of the apoeal since once a criminal appeal was admitted the Hioh Court had to go on with it and decide it, the real interested party being not the complainant, but the State. Timt oue'ition SUPREME COURT REPORTS [ 1973] 1 S.C.~. has not been agitated before us, and therefore, we are not called upon to decide it or to express our opinion one way or the other .. A li ###### c D E F G H On the second question, the High Court examined the averments contamed 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 expreosions, such _as,_ "trade mark'', counterfeiting hjs trade mark:, etc. those expressions had been loosely used, and that in sub6tance the complaint averred counterfeiting of property mark. Dis!lgreeing with the construction placed by the Additional Sessions Judge ou lhe complaint, the High Court allowed the appeal, set aside the order of acquittal passed by him and res~ored the order of conviction and sentence passed by the Trial Magistrate. Counsel for the appellant challenged the correcU1ess of the view taken by the High Court. Counsel for the appellant maintained that the view taken cl the complaint by the Additional .Sessions Judge was correct a~ against tha~ mken by '1:he 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 _"Dasant Bahar"_ and that thereforo . . at'ter 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 complainant'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 therefore, the High Court's order cannot be sustained. The concept of a trade mark is distinct from that of a property mark. A mark, as defined by s. 2(1) (j) 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 goods for the purpose of indicating or so as to indicate a connection in the course of trade between the gO<><Jl: 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 ~:rce from which the goods come, or the trade hands through WLtCh they pass on their way t9 the market. (per Bowen, L.J., in _In_ _re_ _Powell's_ _Tra.de_ _Marke)._ On the other hand, a pro-· perty 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 ( (J) (1893) 10 R.P.C. 200. s. P. JAIN _v._ s. PRASAD (Dead) _(Shilat,_ _Acting_ C.J.) 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 W.e goods themselves, while a property mark con cerns the proprietor. A property mark. attached to the movable property of a person remains even if part of such property goo; out of bis hands and ceases to be his. In _Emperor_ v. _Dahyabhai_ _Chakasha(_ [1] ) the National Bank of India used to import ban; of gold for sale in India. Each bar was of a untorm size, weight and puri'y 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 _'Nas ... ana 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 guiHy 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 th~t 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 no~ in form, contained the necessary averments for bringing the case under [1] the offence of using a false property mark by th.e appellant and selling goods with a 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 b:. believed that the goods so marked or the scent contaihed 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 posssession for sale goods having a mark cillculated 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 complamant. ). ,\ #### c [) E F G In Para 3 and 4 of the complaint, the complaint averred that he had evolved a formula after several attemms tor manuH facturing scent and calling it _Basant_ _Bahar_ had put the ~cent so manufactured by him in the market sometime in 1952, whica ~~(1)~~ ~~(1904) 6~~ ~~Born.~~ ~~LR. 513.~~ (2) A.T.R. 1969 Mad. 94. 1056 SUPREME COURT REPORTS (1973] 1 S.C.R. soon became popular in Shahabad as also in Pa1tna and Gaya Districts. In para 6 of the complaint, he pleaded that he had a _pwi_ with a bunch of flowers in her hands printed on the packets and receptacles in which the said scent was packed with an inscription _''BcJsant_ _Ballar_ _Scent, Kbushbuon_ _Ka_ _Badshah''_ and at the foot of such packets and receptacles the jnscription Basant Bahar F·~rfumery Co., Shahabad. In para 12, he averred ifuat 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. s~ent failed to get constomers. ln para 14, he pleaded that the scent _'Pushp_ _Raj'_ having failed, the accused adopted "ways and mens of destroying the business credit of _Bm·ant Bahar_ by surreptitiously and fraudulently and deliberately printing Trade Mark Label of _Basant Bahar_ and packing scents in receptacl·~s of various varieties wi:th inferior kind of scent which are easily being palmed off as the genuine _'Basant Bahar'_ or the complainant with 1the 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." A B ### c [) E In para 15, he pleaded that the accused was manufacturi1. ". spurious scent and ck~fniuding 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 tht counterfeit imitation of trade mark with the sole object of m2~~~g illegal gain and damaging the business reputation of _Basant_ _Bahar_ of the complainant". The complpainant led evidence of some trader::; who deposed that they used to purchase scent from both the complainant and th·~ accused, that from outward appeal 'allces they looked aJike, and that th:eir customers. purchased scent placed in the market by the accused believinK it to the one manufactured and belonging to the complainant, but later on · returned it finding it to be of inferior quality. On the evid~nce on record the Trial Magistrate found ( 1) that _Basant_ _Bahar_ evolved and manufactured by the complainant appeared in me market earlier than the scent manufactured and sold by "the accused, (2) that 'the accused first called his scent _Pushp_ _Raj_ but finding. that it did not sell well changed its name into Basant Bahar, ( 3) 1that his sc.~nt was of inferior quality ( 4) that the pack•:!ts 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 \Vith a view to make th.~ likely purchasers believed that the scent he sold and G H A B ### c E F S. P. JAIN _v._ s. PRASAD _(Dead) (Shelat, Acting_ C./.) 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 th•.e 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_ _Klwshbuon_ _Ka_ _Badshalz_ 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 into~ntion and obiect aforesaid. The appellant thus committed the offence of both using a fa1se property mark and of selling goods marked with a counterfeit property marie 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 comp1ainant and selling: it or exposing it for sale as if it was the scent manufactured by and belonging to the complainant. We hold, [1] thuefore, thaL the High Court was right in setting aside the order of acquittal passed by the Additional S·~ssions Judge and in restoring the order of conviction and sentence by the Trial Magistrate. The appeal is dismissed. S.C. _Appeal dismissed._ 18-Ll72SuP. CT/73 ~ I