P L D 1959 (W (PLP)

"Explanation No. 1.--‑It is not essential to counterfeiting that the imitations should be exact." Explanation No. 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 resem blance to practise deception or knew it to be likely that deception would thereby be practised." It is proved that the labels 9xh. P. 6/1‑780 are counterfeit of the genuine labels which are trade mark of Messrs Reckitt and Colman Ltd., but the learned counsel for the petitioners argues that they did not have the intention to deceive nor knew it to be likely that deception would thereby be practised and are not, therefore, guilty under section 483, P. P C. Explanation 2 to section 28, P. P. C. raises a presumption against them and the petitioners have in no way rebutted the presumption. The trade mark of `Robin Ultramarine for Ultramarine Blue is so well‑known that the petitioners must have known that the printing of the labels was intended to deceive or at least knew it to be likely that it would be used to practise deception thereby. The statements made by the petitioners to Muhammad Rafi and Ch. Nisar Ahmad P. W. also leave no doubt that they knew that the labels which they had printed were its counterfeit. The fact that the label which they had printed was slightly different, makes no difference so long as there is such visual resemblance as can deceive; and Explanation 1 to section 28, P. P. C. shows that it is not essential for counterfeiting that the imitation should be exact. The learned counsel for the petitioners has not argued that the petitioners are entitled to an acquittal under section 8 of the Merchandise Marks Act on the ground that his case falls under any of its clauses. No such case is made out on the record. The printing of the counterfeit labels by the petitioners evidently was on their own account. The application of section 485, P. P. C. to the', facts proved is not challenged for the petitioners. It is proved that they had in their possession dyes Exh. P. 7 to Exh. P. 9 for preparing counterfeit labels and they acre, therefore, also guilty under section 485, P. P. C. also.

8. The learned counsel, however, argues that section 15 of the Merchandise Marks Act is a bar to ‑he prosecution of the petitioners under sections 483 and 485, P. P. C. This section reads as follows :‑ "Section 15.‑No such prosecution as is mentioned in the last foregoing section shall be commenced after the expiration of three years next after the commission of the offence, or one year after the first discovery thereof by the prosecutor, which ever expiration first happens." In this case the reference to the prosecution in section 14 of the Act is to "any prosecution for an offence against any of the sections of the Pakistan Penal Code, as amended by this Act, which relate to trade, property and other marks". Thus offences under sections 483 and 485, P. P. C. can be prosecuted within three years of its commission or within one year of its first discovery, whichever expires earlier. Abdul Karim (P. W. 1) has stated that he came to know for the first time in October 1956, that their labels were being counterfeited and six months thereafter the complaint in this case was filed. The statements of the petitioners also show that they printed the counterfeit labels from the dyes (Exhs. P. 7 to 9) in or after October 1956. Consequently, the prosecution of the petitioners was commenced in about six months of the first discovery by the prosecutor and is thus within time. The learned counsel, however, drew my attention to a statement made by Ch. Abdul Karim after the charge on 10th June 1957 that they had purchased some counterfeited packets from a shop in the beginning of 1956 and argues on its basis that the prosecution is time‑barred. This was a statement made by him at the prior trial. The petitioners claimed de novo trial, and the trial of the case started afresh. The attention of the witness was not drawn to the earlier statements which cannot be used in this case. The bar of limitation for the prosecution of the petitioners under section 15, Merchandise Marks Act does not operate.

9. Let us assume for the sake of argument that Ch. Abdul Karim P. W. had purchased some packets of Ultramarine Blue with the counterfeit labels in the beginning of 1956 from a shop and see whether the prosecution is barred. This is a legal question which may be gone into as there is a conflict of authority. I propose to examine the case law which has been cited and the provisions of section 15 of the Merchandise Marks Act, 1889. 1n Ruppell v. Ponnusami Tavan and another (I L R 22 Mad, 488) the complainant discovered in 1893 that goods were being sold marked with what was alleged to be counterfeit trade mark, and called upon the persons so selling to discontinue the use of the said alleged counterfeit trade mark and to render an account of the sales. The right to proceed further was reserved, but no action was then taken. In 1898, upon its being ascertained that the same trade mark was being used by them, a prosecution under sections 482 and 486, P. P. C. was commenced by Ruppel. It was held that it was perfectly clear that the complainants were aware of the alleged infringement so long ago as 1893 and there was nothing to show that they believed that the use of the alleged counterfeit trade mark was discontinued and was lately renewed, and section 15 of the Merchandise Marks Act provided that no prosecution could he commenced after expira tion of one year after first discovery of the offence by the prosecutor. In this case it was thus held that the offence which was being prosecuted in 1898 was commenced in 1893, and continued to be committed without the complainant taking any action and he could not be permitted to prosecute the accused for it after one year of its first knowledge. The next case is Muhammad Jeiva Motalla v. H. S. Wilson (12 Cr. L J 246) in which the accused was prosecuted in 1908 under section 482, P. P. C. on the charge that he had sold oil which was not oil manufactured by the Burma Oil Company Limited in second‑hand tins of that company's make, without obliterating the company's trade mark on the tins. He was acquitted on the ground that he had no fraudulent intent. He was prosecuted again in 1910 for a similar offence under section 482, P. P. C. This time he was acquitted on the ground that the complaint was barred under section 15 of the Merchandise Marks Act, relying on Ruppel v. Ponnusami Tavan and another.

10. Akhoy Kumar Dey and others v. Emperor (A I R 1928 Cal. 495), Nagendra Nath Saha v. Emperor (A I R 1930 Cal. 274) and Muhammad Ahmad v. Bezwada Venkanna (A I R 1931 Mad. 276) take the view that the offence contemplated in section 15 of the Merchandise Marks Act is the offence with which the accused is charged. In Akhoy Kumar Dey and others v. Emperor some men employed by the National Bank of India bought one bar of gold on 10th March 1926 and another on 19th March 1926 from the accused which bore a mark which was counterfeit of the bank's trade mark. Several similar bars were also recovered by the police on search of the shop on 22nd March 1926. The accused was prosecuted under section 486, P. P. C. for selling goods marked with a counterfeit trade mark. The defence was that the gold bars were composed of bator gold and the accused had been selling such bars with this mark for several years. As the trial Court had found that the accused had been selling gold bars with the counterfeit mark, it was contended for the accused that the offence must have been known to the bank and as they had taken no action, the prosecution of the accused was barred under section 15, Merchandise Marks Act. The counsel relied on the two cases cited above and Abdul Majid v. Emperor (36 I C 168). The Court held that the word "offence" specified in section 15 meant "the offence charged", and if it had meant only the infringement of the A trade mark, the section would have said so. Though it was observed that the "point was not free from difficulty", it was held that sales on 10th and l9th of March 1926 were not barred. In Nagendra Nath Saha v. Emperor it was admitted that the complainant first came to know of the infringement of his trade mark in September 1927 and he brought the case under section 482, P. P. C. in March 1929. It was, therefore, argued that the case was brought more than a year after the first discovery of the offence and the prosecution was barred. In this case it was established that after the original discovery in September 1927, some action was taken by the complainants and as a result the accused gave a verbal undertaking not to make use of the trade mark. It was contended nevertheless that the complainants must have known that the accused was going on infringing the trade mark because their places of business were only a hundred steps apart. The Court upon these facts held‑-- "Therefore it comes to this that after the original discovery in September 1927, the accused had given an undertaking to resist from infringing the trade mark any further and that there is nothing to show that before June 1928 the complainant was aware that there had been a fresh infringement. It is contended that nevertheless limitation must run from the original discovery in September 1927. Mr. Chaudhry for the Crown has contended that if that be so, then the undertaking would be meaningless and that the complainant would be put upon his watch to see whether there was going to be another infringement within one year of the first discovery ; and it might be that, if there was a subsequent infringement after one year of the original discovery, then the second offence not be punishable at all. This position reduces the argument advanced on behalf of the appellant to an absurdity. But as has been pointed out in the case referred to above that the offence mentioned in section 15, Merchandise Marks Act, is the offence charged and this seems to me to be the only common sense view that can be taken in the present case. In this case the prosecution is clearly within time." In Muhammad Ahmad v. Bazwada Venkanna, the accused were prosecuted under sections 482 and 486, P. P. C. Some of the prosecution witnesses had admitted that the accused had been using the counterfeit trade mark for four or five years. The trial Court found that the accused's trade mark had been in use for five years and the case was time‑barred. The accused were discharged. The Sessions Judge stated that the starting point of limitation was the termination of three years from the date of the first offence, meaning thereby the first of a series of offences, i.e., the first sale of bottle of the scent. On revision it was held :‑ "But there is nothing about a series in section 15, Act 4, nor in section 486, I. P. C. In fact section 486 specifically confines the offence to selling a thing, `goods or things'. The prosecution is within time if launched within three years of the specific offence complained against." The order of discharge was set aside.

11. The above cases came up for consideration in In re: Abdul Satar Khan‑Karamuddin Khan (A I R 1935 Born. 359). After discussing them, Broomfield, J., came to the conclusion that though the matter was by no means free from difficulty, the better view seemed to be that‑-- "Where the offence of infringement of a trade or property mark is a continuing one, and no discontinuance is proved, time runs under section 15 from the first instance of infringe ment, or from the first discovery of infringement." This was a case under section 482,

1. P. C, and it appeared from the evidence that the complainant came to know from 1st that this trade mark was being infringed by the accused. This continued up to 24th July 1933 (sic) when he prosecuted the accused on the allegation that a customer had then been misled on account of the use of the trade mark by the accused. Divatia, J., observed‑ "It would be the first discovery of the use of the false trade mark and not the first discovery of any deception practised upon a customer on account of the use of such trade mark that is to be taken as starting point." The Court came to the conclusion that the case was covered by Ruppel v. Ponnusami Tevan and another and held that the prosecution was time barred.

12. The reported case law having been noticed, section 15 of the Merchandise Marks Act may now be considered. The section incorporating the relevant portion of section 14 of the, Act reads as follows :‑‑ "On any prosecution for an offence against any of the sections of the Pakistan Penal Code as amended by this Act, which relate to trade, property and other marks, no prosecu tion shall be commenced after the expiration of three years after the commission of the offence or of one year after the first discovery thereof by the prosecutor, whichever expiration first happens."

13. On the plain construction of this section, it is clear that no prosecution shall be commenced after three years of "the commission of the offence", or of one year after the first discovery' thereof, i.e., the commission of the offence. In either case the reference is to "the offence". The material question to decide is when was the offence committed or when did the complainant first come to know of its commission ? The section does not speak of a series of acts, but if an accused continues to commit the offence for over a year to the knowledge of the complainant who stands by without taking any action, there can be no doubt that the prosecution would be barred. Where, however, isolated offences are committed or where it appears that the commission of the offence had ceased or the complainant was assured that the offence would not be committed or the offences were com mitted by different persons, there is no reason why each offence should not give a starting point of limitation. Every case must be decided on its own facts: In some cases the offence may be complete as soon as it is committed, as when a trade mark' is counterfeited, or it may be a continuing offence where, e.g., dies or materials for counterfeiting are kept by an accused person. The prosecution must be commenced within three years, of the offence or within one year of first knowledge of it,; commission. In the instant case, the complainant no doubt discovered a shopkeeper selling a packet of Ultramarine Blue with a counterfeit label in the beginning of 1956, but no connec tion is established between that shopkeeper and the petitioner. The offences with which the petitioners are charged are in no way connected with that act. Therefore the prosecution of the petitioners is not barred: Mr. Karam Ilahi Chauhan had, therefore, to argue that once a trade mark had been counterfeited or used by `A' no prosecution for counterfeit ing or user could be launched after one year of the first discovery whoever might commit the offence. The argument is untenable for it must lead to absurd results. On this reasoning even if "A" is successfully prosecuted for counterfeiting a trade mark on 1st January 1950, not only he but others also could not be prosecuted for counterfeiting it after 2nd January 1951 provided the complainant came to know of it on that very day. This could not be the intention of the Legislature. On this construction the protection afforded to trade and property marks will disappear. In order to avail of the bar of limitation. it must be shown that the accused and no another person had been counterfeiting or using the trade mark to the knowledge of the complainant for more than a year before the prosecution can be held as time barred. The cases in which a trade mark no longer remains an exclusive trade mark by long user by others stand on a different footing. In the instant case it is not the case of the petitioners that they have been committing the offence to the knowledge of the complainant for over a year. As has been stated, the petitioners themselves say that the counterfeiting took place in October 1956. The complainant came to know of the commission of the offence by the petitioners in March 1957 and as the complaint was lodged on 1st April 1957 it is well within time.

14. Finally, it is argued that a sentence of imprisonment should not be imposed as the petitioners have not been deriving any substantial benefit by the commission of the offence and in any case they should not be sent back to jail as they have been released on bail by this Court. It is true that the peti tioners have not been making any substantial profit and as they have already been released on bail, it will not be proper to send them back to the jail. They have, however, caused consider able loss to the complainants and a substantial sentence of fine is necessary. I, therefore, order that in addition to the sentence already undergone by them, they shall each pay a fine of Rs. 250 on each count. In default of payment of fine they shall each undergo three months' rigorous imprisonment on each count. K. B. A. Order accordingly.