P L D 1969 Karachi 245 (PLP)

This revision petition is at the instance of Haji Danu Mian Saudagar, son of Bakhsha Ali, of East Pakistan, who is one of the four partners of a firm working under the name and style of "Hajee Thread Manufacturing Company, Korbaniganj, Chit tagong" and directed against the judgment dated 18‑5‑1966 of Additional Sessions Judge, Karachi (Mr. Mehdi Ali Siddiqui), whereunder he while maintaining his conviction under section 486, P. P. C., recorded by Mr. Anwar M. Shaikh, M. I. C., Karachi on 2‑10‑1964, converted the sentence of three months' R. I. to three months' S. I. and also remitted the fine of Rs. 1,000 or in default three months' further R. I.

2. The facts leading up to this revision petition briefly are that the petitioner and his other partners constituted a firm working under the name and style of "Hajee Thread Manufactur ing Company, Korbaniganj, Chittagong". They manufactured thread nalkies in East Pakistan with a Trade Mark of "Tibet" on the said goods. Shaikh Muhammad Idrees, a Director of Koh‑i‑Noor Chemical Company Limited, Burns Road, Karachi, instituted a complaint on 15‑7‑1961 against the petitioner and four others, namely

1. Haji Muhammad Lal Maah Sodagar,

2. Haji Sultan Ahmad Sodagar,

3. Muhammad Ismail, and

4. Muhammad Ali. Under sections 482/483/485 and 486, P. P. C. read with section 9 Merchandise Marks Act, on the allegation that the complainant's firm, among other trade marks, was the proprietor of trade mark "Tibet", which trade mark the Koh‑i‑Noor Chemical Company Ltd., Karachi, was using on their goods since 1936, that due to the good quality of the goods of the complainant's firm and to the extensive publicity of the same, the complainant's trade mark "Tibet" had become very popular in the public and the word `Tibet' "has become associated in the minds of the public as representing the manufacture of the complainant's firm and none others", that the accused "have recently commenced marking their thread nalkies with the said trade mark `Tibet' and passing them out in the market in a manner reasonably calculated to cause it to be believed that the goods marked are the manufacture and merchandise of the complainant's firm", and that "the appearance of the said spurious goods of the accused in the market with the said false counterfeit trade mark the accused are getting wrongful gain and the complainant's firm is suffering substantial loss in money and reputation inasmuch as the unwary public are thus led to believe that they are purchas ing the product of the complainant's firm".

3. It may be mentioned here that Messrs Haji Thread Manufacturing Company had moved the Deputy Registrar of Trade Marks, Chittagong for registration of the trade mark in respect of cotton sewing thread. The mark sought to be registered comprised of the word "Tibet", and the device of mountain inside a circle on the allegation that they had been using the same since September 1960. An objection was raised by the trade marks Registry Karachi, against the registration of the said trade mark on the ground that the word `Tibet' was the geographical name and that there was another application No. 34915, pending for registration of the same trade mark by Messrs Kohinoor Chemical Co., Ltd., Karachi. The petitioner's firm, feeling aggrieved from the order of the Deputy Registrar, refusing to register the trade mark, went up in appeal to the High Court Dacca, and a Division Bench comprising A. S. Chowdhury and K. M. Hassan, JJ., by its judgment dated 20th December 1965, allowed the appeal, set aside the order of the Deputy Registrar, and directed him "to take steps for advertise ment inviting opposition and hearing the parties and dispose of the application for registration in accordance with law."

4. Mr. A. K. Brohi, learned counsel for the petitioner, in formed me that in pursuance of the judgment of the High Court, Dacca, the Deputy Registrar has since registered the trade mark of the petitioner's firm. This fact was not controverted by the learned counsel for the State.

5. The petitioner and his co‑accused pleaded not guilty and the principal defence raised was that the complainant did not manufacture thread and that the petitioner had made inquiries about it from the Chittagong Trade Mark Office. He further stated that "the complainant has class No. 3, while mine is

23. The Trade Mark Office told me that I could manufacture it. The case has been filed against me at Karachi in order to harass me".

6. The trial Court after recording the evidence of the complainant and the petitioner and the evidence which the accused produced, while acquitting the other co‑accused, convicted the petitioner under section 486, P. P. C. and sentenced him to three months' R. I. and a fine of Rs. 1,000 or in default three months' further R. I.

7. On appeal the learned Additional Sessions Judge as already stated, maintained the conviction and sentence of three months, but the nature of the sentence was altered from rigorous imprisonment to simple imprisonment and the fine was also remitted,

8. Mr. A. K. Brohi, learned counsel for the petitioner, vehemently argued that the necessary ingredients of an offence under section 486, P. P. C. were wholly wanting and, therefore, the conviction of the petitioner could not be sustained in particular when by the order of Division Bench of the Dacca High Court, referred to earlier, the trade mark in question had been registered in the name of the petitioner. The learned counsel strongly emphasised that the principal ingredient for conviction under section 486 was that the accused had in possession "for sale‑or manufacture any goods‑with a counter feit trade mark." The learned counsel further argued that the other pre‑requisite ingredient of the offence under section 486 was that the mark within the meaning of section 478, P. P. C. must be a mark associated with the same kind of goods and since admittedly the complainant is not manufacturing any threads but on the contrary is manufacturing soap, cream, brush, blades, battery cells and ink etc., therefore, the question of counterfeiting or posing or trying to pose the thread as manufacture of the complainant would simply not arise. With a view to reinforcing his argument the learned counsel has drawn my attention to various Trade Marks Journals, where almost similar trade marks, with minor modification, had been registered in respect of different goods. For instance, at page 46 of the Trade Marks Journal (No. 12, January 1, 1952), Trade Mark No. 9,970 is the picture of scissors cigarettes. Below that picture the following words occur:‑ "In use upon goods covered by the specification other than cigarettes, the mark shall be varied by the substitution of the name of such goods for the word `cigarettes'." My attention was drawn to Trade Marks Journal (No. 55, August 1, 1955), where the trade mark "Scissors" has been registered for safety match. At page 682 of the Trade Marks Journal (No. 86 March 1, 1958) the picture of Bagla with the word "Bagla" has 'been registered for soap for M. Mukhtar Bhatti, trading as Kausar Soap Factory, Sialkot. At page 231 of the Trade Marks Journal (July 1, 1958) is the picture of "Bagla" in regard to sewing and embroidery thread and thread ball and cotton yarn. At page 190 of the Trade Marks Journal (No. 89, June 1, 1958) is the trade mark in regard to cigarette with "Passing Show", and at page 493 of the Trade Marks Journal (No. 120, January 1, 1961), Passing Show Mark has been registered for washing soap of Muhammad Saleheen. Similarly at page 49 of the Trade Marks Journal (No. 19, August 1, 1952) is the picture of Elephant with trade mark manufactured tobacco, Pakistan Tobacco. Company Limited, and at page 13 of the Trade Marks Journal (No. 55, August 1, 1955), is the picture of Elephant for cork, articles of cork agglomerate. At page 713 of the Trade Marks Journal (No. 124, May 1, 1961) is the picture of Elephant registered for knitting wool, with the words "wool 4 PLY" shown in the picture. Similarly at page 19 of the Trade Marks Journal (No. 51, April 1, 1955) a peacock with the words "peacock bird brand" has been registered for rice and prepara tions made from rice for Joseph Heap & Sons Ltd., a British Company, and the picture of the peacock with some other words below the picture has been registered at No. 8610 (Trade Marks Journal No. 53, June 1, 1955), denoting grinding and polishing wheels etc.

9. Mr. A. H. Pirzada, learned counsel for the complainant,, on the other hand, tried to argue that mens rea was not a necessary ingredient of an offence under section 486, P. P. C. and further that it was also not a condition precedent for that. offence that the trade mark is in respect of identical goods and that the mere fact that the accused had adopted a trade mark for" different kind of goods which was likely to deceive the unwary customers, would come under the mischief of that section.

10. By my short order dated 26‑11‑68 I accepted the? revision petition, set aside the conviction and sentence of the petitioner and acquitted him of the charge. This judgment would furnish the reasons thereof.

11. Section 478, P. P. C. is in the following terms:‑ "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." It will be noticed that a trade mark denotes some symbol consisting in general of a picture, label, word or words, which is applied or attached to a trader's goods, so as to distinguish them from similar goods of other traders. It will, therefore, be `'f' noticed that there can be no infringement of trade mark when the trade mark is adopted in respect of different kinds of goods. Section 486 is in the following terms: "Whoever sells, or exposes, or has in possession for sale or any purpose of trade or manufacture, any goods or thing with a counterfeit trade mark or property mark affixed to or impressed upon the same or to or upon any case, package or other receptacle in which such goods are contained, shall unless he proves‑ (a) that, having taken all reasonable precautions against committing an offence against this section, he had at the time of the commission of the alleged offence no reason to suspect. the genuineness of the mark, and (b). . . . . . . . . . . . (c). . . . . . . . . . . . The word "trade mark", which is prefaced by the word. "counterfeit" is very significant, and the said word is defined in, section 28 as follows: "A person is said to counterfeit, who causes one thing to resemble another thing, intending by means of that resemblance to practise deception, or knowing it to be likely that deception will thereby be practised. * * * * * * * * * * * * * * * * * * * * * * * * It will be plain from the language of the section that intention to "practise deception" by causing one thing to resemble another is a necessary ingredient of counterfeit and there fore, mens rea is a condition precedent of the offence under that section.

12. I now examine sections 8 and 10 of the Trade Marks Act, 1940, which have material bearing on the point. Section 8 is in the following terms: "No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would‑ (a) by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a Court of justice; or (b) be likely to hurt the religious susceptibilities of any class of the citizens of India, or (c) be contrary to any law for the time being in force or to morality." Under clause (a) a trade mark would be refused, if it was likely to deceive or cause confusion. Section 10 deals with prohibition of registration of identical or similar trade mark, and reads thus: "10 (1) Save as provided in subsection (2), no trade mark shall be registered in respect of any goods or description of goods which is identical with a trade mark belonging to a different proprietor and already on the register in respect of the same goods or description of goods, or which so nearly resembles such trade mark as to be likely to deceive or cause confusion. (2) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, subject to such conditions and limitations, if any, as the Registrar may think fit to impose. (3) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other, in respect of the same goods or description of goods, the Registrar may refuse to register any of them until their rights have been determined by a competent Court." It will be noticed that under subsection (1) the prohibition is in regard to registration of trade mark in respect of goods or C description of goods, which is identical with the trade mark belonging to a different proprietor and (2) that there should be identical trade mark belonging to different proprietor in respect of the same goods or description of goods, or which so nearly resembles such trademark as to likely to deceive or cause confusion. In other words, the registration of trade mark can be refused only in regard to any goods when a different proprietor has already obtained a registration of the trade mark in regard to same goods. To put it differently, the emphasis is on similarity of goods belonging to two different proprietors with a view to avoiding deception that the goods of one are being posed for the goods of another proprietor. The following instances of goods have been held to be different descriptions in the United Kingdom (1) Chewing tobacco on the one hand and Tobacco (smoking, pipe) and cigarettes on the other, (Thomas Bear & Sons (India) Ltd. v. Prayag Narain (1941) 58 R P C 25). (2) Flour and bread (Spillers Ltd.'s Application (1953) 70RPC51). (3) Small arms and ammunition on the one hand and cycles, motor‑cycles and other motor vehicles on the other (Birmingham Small Arms Co.'s Application (1907) 24 R P C 563). (4) Iron sheets on the one hand and wire, iron and steel on the other (In re: Edwards' Tm., (1885) 30 Ch. D 454). (5) Milk (dried) and Butter or cheese (Smith's Application (1923) 40 R P C 77). (6) Perfumery, cosmetics, preparations for the hair and dentifrices and soap or detergents (Lever Brothers, Port Sunlight Ltd. v. Sunniwite Products Ltd. (1949) 66 R P C 84). (7) Soap & Washing machinery Price's (Patent Candle Co.' Ltd. v. Jeyes' Sanitary Compounds Co. Ltd. (1902) 19 R P C 17). (8) Tobacco (smoking, for the pipe) and chewing tobacco (Thomas Bear & Sons (India) Ltd. v. Prayag Narain (1941) 58 R P C 25). Reference may also be made to the Textile Trade Marks Advisory Committee having advised that piece‑goods of cotton, silk and wool are goods of the same description, but that yarn and threads are not goods of the same description. Reference may also be made to Lastex Manufacturing Co. Ltd. v. Lastex Yarn and Lactorn Thread Ltd. ((1947) 64 R P C 142 ), wherein it was held: "That if the goods are not the same but are of the same description regard must be had to that fact in considering whether the marks so resemble each other as to be likely to deceive. In other words, in such a case the tribunal would not as readily come to the conclusion that the mark is likely to deceive as in the case where the goods are the same." I would wind up the examination of the authorities by making a reference to the decision of the Privy Council in Thomas Bear & Sons (India) Ltd. v. Prayag Narain and another (AIR 1940 P C 86). The following two questions came up for decision: (1) Whether there was a monopoly in the use of trade mark. (2) Whether a manufacturer of smoking tobacco selling his goods under a certain trade mark was likely to suffer when another manufacturer of chewing tobacco using similar mark was likely to deceive public that they were purchasing chewing tobacco manufactured by the former. Their Lordships answered both the questions in the negative. The following observation of the House of Lords may profitably be reproduced: "The trade mark contains in itself a clear and distinct description of the commodity to which it is 'affixed, it is not pirated by the use of a mark which, although in other respect is similar, does not contain or give the same descriptions and which is impressed upon an article which is not of the nature or quality so described."

13. It follows from the above authorities that no one has a monopoly in the trademark and that before conviction under section 486 can be recorded it must be proved that the accused had in his possession for sale or any purpose of trade or manufac ture any goods "with a counterfeit trade mark".

14. Judged in the light of the tests laid down by the authorities, referred to above, a person is said to "counterfeit" trade mark within the meaning of section 28 only when the two prerequisite conditions concur, namely, (1) that the accused had caused "one thing to resemble another thing" both things must be either same or of similar description and (2) that the accused had intended by that resemblance to practise deception or is saddled with the knowledge that while causing that resemblance it was likely that deception would thereby be occasioned. Since the offending trade mark used by the petitioner is in regard to different goods, not having even remote resemblance to the goods manufactured by the complainant, the two pre requisite conditions are wholly wanting in the instant case, and for that reason the conviction of the petitioner cannot be sustained. A. E. Petition accepted.