Case Note & Summary
The appellant, Ram Kishore, a trader in chewing tobacco at Varanasi, was prosecuted for offences under Sections 78 read with 77 and 79 of the Trade and Merchandise Marks Act, 1958. The complainants, M/s Nandoo Ram Khedan Lal, had been marketing chewing tobacco under the registered trademark 'Titli' (butterfly) with a distinctive label showing three butterflies on a yellow-green background. The appellant used a similar mark 'Titli' (partridge) with four butterflies on a leaf-green background, which the lower courts found deceptively similar, particularly given the large number of illiterate consumers. In 1955, the complainants wrote to the appellant alleging infringement and demanding cessation, but no legal action was taken then. In November 1960, the complainants informed the police, leading to a charge-sheet filed on March 22, 1961 for offences committed on November 25, 1960. The trial Magistrate convicted the appellant and sentenced him to simple imprisonment for three months on each charge, to run consecutively. The Sessions Judge acquitted, holding the prosecution barred under Section 92 of the Act. The High Court set aside the acquittal, restored the conviction, but reduced the sentence to a fine of Rs. 1,000 on each charge. The appellant appealed to the Supreme Court by certificate under Article 134 of the Constitution. The appellant raised two main contentions: first, that the prosecution was barred by limitation because the complainants had first discovered the infringement in 1955; second, that the complainants had acquiesced in his use of the trademark under Section 77. The Supreme Court rejected both. On limitation, the Court held that Section 92 of the 1958 Act materially differed from Section 15 of the Merchandise Marks Act, 1889. The 1958 provision uses the expressions 'commission of the offence charged' and 'discovery thereof by the prosecutor', omitting the word 'first' and the phrase 'the offence' as in the 1889 Act. Therefore the period of limitation begins from the date of the specific offence charged or its discovery by the prosecutor, not from the first discovery of any infringement. The Court distinguished Ruppell v. Ponnusami and Dau Dayal v. State of U.P., noting that Dau Dayal did not approve the Madras view and that the Bombay Full Bench in Emperor v. Chhotalal Amarchand had overruled earlier Bombay decisions. Since the offence charged was committed on November 25, 1960 and the charge-sheet was filed on March 22, 1961, the prosecution was within time. On acquiescence, the Court observed that there was no evidence to substantiate the appellant's plea; the mere fact that the complainants did not take action after their 1955 protest did not amount to acquiescence or assent. The Court also found no reason to disturb the concurrent finding of deceptive similarity. Accordingly, the Supreme Court rejected the appellant's contentions and upheld the conviction.
Headnote
A) Criminal Law - Limitation for Prosecution - Section 92 of the Trade and Merchandise Marks Act, 1958 - The period of limitation commences from the date of commission of the offence charged or from the date of discovery thereof by the prosecutor, not from the first discovery of infringement. The court compared Section 15 of the Merchandise Marks Act, 1889 which used 'first discovery' and 'commission of the offence', while Section 92 of the 1958 Act deliberately used 'offence charged' and 'discovery thereof'. The appellant's prosecution for offences committed on November 25, 1960 with charge-sheet filed on March 22, 1961 was not barred. Held that the appeal on limitation failed. B) Trademark Law - Acquiescence - Section 77 of the Trade and Merchandise Marks Act, 1958 - A plea of acquiescence requires evidence of assent by the trademark proprietor to the alleged infringing use. The complainants protested in 1955 but took no action until 1960; this delay alone did not establish acquiescence. The appellant failed to substantiate any conduct by the complainants justifying an inference of consent. Held that the plea of acquiescence was rejected. C) Trademark Infringement - Deceptive Similarity - Sections 78 and 79 of the Trade and Merchandise Marks Act, 1958 - The lower courts concurrently found that the appellant's label with four butterflies and legend 'Titli' was deceptively similar to the complainants' 'Titli' label, especially for illiterate consumers. The Supreme Court found no substantial argument to differ from this finding. Held that the conviction for trademark infringement was maintainable.
Issue of Consideration
Whether the prosecution was barred by limitation under Section 92 of the Trade and Merchandise Marks Act, 1958 because the complainants first discovered infringement in 1955; whether the complainants had acquiesced in the appellant's use of the deceptive trademark under Section 77 of the Act.
Final Decision
The Supreme Court rejected the appellant's contentions on limitation and acquiescence, thereby upholding the High Court's conviction. The prosecution was held not barred under Section 92 because the period runs from the date of the offence charged or its discovery, not from first discovery of infringement. The plea of acquiescence failed for lack of evidence. The conviction and sentence of fine imposed by the High Court stood affirmed.
Law Points
- Legal points not extracted
- The period of limitation under Section 92 of the Trade and Merchandise Marks Act
- 1958 commences from the date of commission of the offence charged or from the date of discovery thereof by the prosecutor
- whichever first happens
- the period is not reckoned from the first discovery of infringement of trademark
- Section 92 of the 1958 Act materially differs from Section 15 of the Merchandise Marks Act
- 1889 by omitting the word 'first' and using 'offence charged'
- acquiescence under Section 77 requires positive evidence of assent by the trademark proprietor
- mere delay in taking action is insufficient.
