THE STATE OF UTTAR PRADESH versus HAFIZ MOHAMMAD ISMAIL AND HAFIZ JAWED ALI

W J.-These are two connected appeals by special leave againt the judgment of the Allahabad High Court. The brief fa<>ts necessary for their disposal are these. Oue Bhagwan Swarup Saxena, the Trade Marks Investigator, Lever Brothers Limited India (hereinafter called the company) was working in Lucknow on behalf of the company. He came to know that counterfeit Sunlight and Lifebuoy soaps were being manufactured and sold on a large scale in Y ahiaganj and other places in Lucknow. This was investigated on behalf of the company which manufactured genuine Sunlight and Lifebuoy soaps. It was found that two soap factories in Lucknow were manufacturing ,counterfeit Sunlight and Lifebuoy soaps. It was also found that l!a.fiz Mohammad Ismail and Hafiz Jawed Ali who are the respondents in the two appeals before us were selling these counterfeit soaps in Yahiaganj where they have shops. Consequently a raid was made on the two shops with the help of the police on May 19, 1953. A large number of soaps were recovered from the two shops which were wrapped in labels said to be counterfeits of those in which the genuine Sunlight and Lifebuoy soaps of the company are sold. Consequently the two respondents were prosecuted under ss. 482 and 486 of the Indian Penal Code.

pp. 912–913

The Magistrate found the case proved and held that the labels in which the respondents were selling soaps were counterfeit of the labels of genuine Sunlight and Lifebuoy soaps. He, therefore, convicted the respond.ents under ss. 482 and 486 of the Code. The respondents went in appeal to the Sessiom; Judge but their appeals were dismissed. They then went in revision to the High Court. The High Court held that the cases did not fall within s. 482 of the Indian Penal Code and therefore acquitted them of the charge under that section. It further held that the labels or wrappers used on the soaps sold by ~he respondents could not be regarded as counterfeit of the genuine wrappers and labels of Sunlight and Lifebuoy soaps though they were colourable imitations of the same; it therefore acquitted them under s 486 also, without going into the other points raised on behalf of the respondents. The applications of the State of Uttar Pradesh for a certificate to appeal to this Court having been rejected, the State applied for leave to appeal to this Court which was granted; and that is how the matter has come up before us.

p. 913, margin H

The learned Additional Solicitor General appearing for the State has not pressed the appeals so far as the acquittal under s. 482 of the Code is concerned. The acquitt.al therefore under that section will stand. He has, however, strenuously urged that the view of t.he High Court that the wrappers and labels are not counterfeit but are mere colourable imitations of the genuine trade marks of the company is incorrect inasmqch as the High Court has not given full effect to the words of s. 486 in that behalf and the definition of ' counterfeit' in s. 28 of the Indian Penal Code.

pp. 913–914, margin H

Section 28 is in these terms-

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" 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. . ·

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Explanation 1.-It is not essential to counterfeiting that the imitation should he exact.

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Explanation 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 resemblance to practise deception or knew it to be likely

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that deception would thereby be practised." The relevant part of s. 486 is in these terms-

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" Whoever sells, or exposes, or has in possession for sale or any purpose of trade or manufacture any goods or things 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) ....... ········································ ............... . (b) .................•....•........................•..........•......

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(c) .............................................................. . be punished with imprisonment of either description for a term which may extend to one year or with

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fine or with both." The contention on behalf of the appellants is that the High Court in holding that the labels and wrappers in this case were only coloura hie imitations of the genuine trade mark labels and wrappers of the company and were not counterfeit has not taken into account the words of s. 28 and particularly of the two Explanations thereof. It is pointed out that the words "colourable imitation" do not appear ins. 28 which defines the word "counterfeit " and t)J.e High Court seems to have misdirected itself by treating the wrappers and labels in this case as colourable imitations and not counterfeit within the meaning of s. 28.

pp. 914–915

The main ingredients of counterfeiting as laid down in s. 28 are (i) causing one thing to resemble another thing, and (ii) intending by means of that r:esemblance to practise deception or (iii) knowing it to be likely that deception will thereby be practised. Thus if one thing is made to resemble another thing and the intention is that by such resemblance deception would be practised or even if there is no intention but it is known to be likely that the resemblance is such that deception will thereby be practised there is counterfeiting. Then comes Explanation 1 to s. 28 which lays down that it is not essential to counterfeiting that the imitation should be exact. Ordinarily counterfeiting implies the idea of an exact imitation; but for the purpose of the Indian P'enal Code there can be counterfeiting even though the imitation is not exact and there are differences in detail between the original and the imitation so long as the resemblance is so close that deception may thereby be practised. Then comes the second Explanation which lays down that where the resemblance is such that a person might be deceived thereby it shall be presumed until the contrary is proved that the person causing one thing to resemble another thing was intending by means of that resemblance to practise deception or knew it to be likely that deception would thereby be practised. This Jl}.rplanation lays down a rebuttable presumption where the resemblance is such that .a person might be deceived thereby. In such a case the intention or the knowledge is presumed unless the contrary is proved.

p. 915

This analysis of s. 28 shows that there is no necessity of. importing words like ' colourable imitation ' therein. In order to apply it, what the Court bas to see is whether one thing is made to resemble another thing, and if that is so and if the resemblance is such that a person might be deceived by it there will be a presumption of the necessary intention or knowledge to make the thing counterfeit, unless the contrary is 11roved. What the court therefore has to see is whether one thing has been made to resemble another thing. If it finds that in fact one thing ma.de to resemble another it has further whether the resemblance is such that a person be deceived. If it comes to the conclusion resemblance is such that a person might by it, it can presume the necessary intenion ledge (until the contrary is proved) and counterfeiting would then be complete. Therefore the that were necessary to decide in this case were (i) whether the labels or wrappers on the soaps sold the respondents were made to resemble the wrappers of the genuine Sunlight and Lifebuoy soaps, and (ii) if they were so made to resemble, resemblance was such as might deceive a person. both these things were found the labels and in this case would be counterfeit and the intention or knowledge would be presumed contrary was proved.

pp. 915–916

Now the Magistrate as well as the Sessions examined the wrappers and labels in this compared them with the genuine labels and of the Sunlight and Lifebuoy soaps of the and came to the conclusion that there blance between the two sets of wrappers and that that resemblance was so close that might be deceived. On that finding, they these wrappers and labels were counterfeit the contrary was not proved before them. Court does not say that there is no between the two sets of wrappers and very fact that the High Court says that and labels found in this case were colourable tions of the genuine wrappers and labels there was resemblance. The High Court stressed the difference in detail between of wrappers and labels but seems to have Explanation 1 of s. 28 which says that essential to counterfeiting that the imitation be exact, even though the Explanation the judgment of the High Court. What Court had to decide was whether oven differences in detail which had also. been noticed the Magistrate and the Sessions Judge a person· be deceived by these wrappers and labels recoverd from the respondents' shops. This aspect of the matter has not been considered by the High Court at all and it has contented itself by saying that the wrappers and labels recovered in this case were colourable imitations of the genuine trade marks. That in our opinion does not dispose of the matter so far as s. 28 is · concerned. The High Court should have found whether the resemblance in this case was such as might deceive a person. The High Court had before it the opinions of the Magistrate and the Sessions Judge. Their opinion was to the effect that the resemblance was such as might deceive a person and that the differences in detail did not affect that resemblance. It was this aspect of the matter which the High Court failed to consider when it went on to hold that the labels a·nd wrappers recovered along with the soaps from the shops of the respondents were not counterfeit. We have looked at the labels and wrappers on the soaps recovered from the shops of the respondents ourselves and compared them with the labels and wrappers of the genuine Sunlight and Lifebuoy soaps and we agree with the opinions of the Magistrate and the. Sessions Judge that the resemblance is such that a person may be deceived by it. In the circumstances, Explanation 2 to s. 28 will apply and as the contrary was not proved it must be hPld that the necessary intention or knowledge was there and these wrappers and labels arc counterfeit of the genuine wrappers and labels of the Sunlight and Lifebuoy soaps of the company.

pp. 916–917

The appeals must therefore be allowed; but as the High Court did not consider the points relating to jurisdiction and limitation and whether the respondents were protected under cl. (a) and cl. (b) or (c) of s. 486, they will have to be remanded to the High Court for disposal ac0ording to law on these points. We therefore allow the appeals and setting aside the acquittal Of the respondents under s. 486 of the Indian Penal Code only send the cases back to the High Court for disposal on the lines indicated above.

p. 917

Appeals allowed. Oases remanded,

p. 917