P L D 1987 Lahore 257 (PLP)

Facts necessary for decision of this petition are briefly stated below :‑ On a police report, Riasat Ali accused‑petitioner was prosecuted for counterfeiting Trade Mark `POLKA' and `SALVA' used by Asad Rafi complainant for manufacture of vermicillies. He was acquitted from the charge under section 420/482, P. P. C. by a Magistrate 1st Class, Faisalabad after recording evidence vide judgment dated 13‑3‑1985. Asad Rafi com plainant challenged the acquittal of Riasat Ali through a revision under section 439‑A, Cr. P. C. before Additional Sessions Judge, Faisalabad who vide impugned judgment dated 14‑9‑1986 accepted the same, set aside the acquittal of Riasat Ali and remanded the case for fresh decision according to law. Hence this petition for quashment of the remand order dated 14‑9‑1986.

2. The learned counsel for the petitioner pressed this petition only on the ground that in order to constitute an offence of counterfeiting trade mark under section 482, P. P. C., it was necessary that the trade mark should be a registered trade mark under the Trade Marks Act (Act No. V) of 1940. This petition was admitted only to consider this question. The learned counsel for the complainant has controverted the contention on behalf of the petitioner.

3. It is admitted by both the learned counsel that a civil suit between the parties regarding the Trade Mark `POLKA' and `SALVA' is pending adjudication in civil Court. It is further admitted by both the parties that the matter is also under consideration with Registrar, Trade Marks. The precise question which requires consideration in this petition is whether in order to constitute an offence under section 482, P. P. C. it is necessary that the trade mark should be a trade mark registered under the Trade Marks Act, 1940. I, therefore, need not go in merits of the case. Trade mark is defined in section 478, P. P. C. which is reproduced blow :‑ "A mark used for denoting that goods are the manufacture or merchandise of a particular person is called a trade mark, and for the purpose of this Code the expression `trade mark' includes any trade mark which is registered in the register of trade marks kept under the Trade Marks Act, 1940 (V of 1940)." The property mark is defined in section 479, P. P. C. which is given as follows :‑ "A mark used for denoting that movable property belongs to a parti cular person is called a property mark." According to section 480, P. P. C., a person is said to use a false trade mark if he marks any goods or any case, package or other receptacle containing goods, or uses any case, package or other receptacle with any mark thereon, in a manner reasonably calculated to cause it to be believed that the goods so marked, or any goods contained in any such receptacle so marked, are the manufacture or merchandise of a person whose manu facture or merchandise they are not. The definition of trade mark in section 478, P. P. C. is not exhaustive. According to this provision of law, a mark used for denoting that the goods are the manufacture or merchandise of a particular person is called a trade mark. It also includes trade mark registered under the Trade Marks Act, 1940. The word "include" in this section indicates that the definition is not exhaustive or confined to the trade mark registered under the Trade Marks Act. trade mark property can be acquired by user as well. A mark to be a trade mark must be a mark used for denoting that goods are the manufacture or merchandise of a particular person. It must be some visible or concerete design affixed to goods to indicate that they are the manfacture of the person whose property the trade mark is. A mark which from long use has come to be associated in the market that goods are manufactured by a particular person is his trade mark. To determine whether a mark A has become a trade mark, the Court is to take into consideration the extent to which its use has rendered the mark in fact distinctive of the goods in question. It is, therefore, not necessary that in order to constitute an offence under section 482, P. P. C. the trade mark must be a trade mark registered under the Trade Marks Act. It was held in Lakhan Chandra 8asak and another v. King Emperor (1) that "a mark used in six years can (1) A 1 R 1925 Cal. 149 become trade mark within section 482, P. P. C." In Muhammad Raza v. The Emperor (1), it was held that "where a trade mark in question is distinctive mark which the firm has been using over ten years, the firm using it acquired property in that mark as indicating that all goods which bear it have been manufactured by the firm and any flagrant immitation of the same will bring the act within purview of section

482. Registration of the trade mark is not necessary to complete the title to trade mark in India." In P. A. Pakir Muhammad v. Emperor (2). it was held that in India there is no method by which a trade mark may be registered but property in or in respect of a mark may be acquired by user. "The above cited judgments were delivered before enforcement of Trade Marks Act, 1940. In spite of that I am of the view that the definition of trade mark as provided in section 478, P. P. C. is not exhaustive. It also includes the trade mark acquired by a person by long user. In view of this I do not find any merits in this petition which is accordingly dismissed. I have avoided expressing any opinion on merits of the case. The trial Court will come to its own conclusion on facts after recording evidence in the trial.

4. As the respective rights of the parties are subject‑matter of dispute in civil Court and also are under consideration before the Registrar, Trade Marks, I consider it proper to stay the criminal proceedings before the Magistrate till the decision of the respective rights of the parties by the =Registrar, Trade Marks/Civil Court. s. G. D./R.‑ I I /L. Order accordingly. (1) A I R 1930 Oudh 360 (2) A I R 1929 Rang. 322