JUDGMENT
1. This criminal appeal No. 2547 of 1963 is connected with criminal misc. application No. 2619 of 1964. The criminal appeal originally came up for hearing before brother M.H. Beg, J. sitting singly who referred certain points to a larger Bench and also the whole case for decision by it. The respondent had also filed an application under Section 561-A, Cri. P. C. on 13-9-1964 praying that the hearing of the appeal should be stayed as a civil suit had been filed by the appellant against the respondent and was pending and same questions of fact and law arose for consideration in the criminal appeal. Accordingly, this application has also been referred to this Bench for decision.
2. On 5-4 1963 a complaint had been filed by Shameem Ahmad alleging that the firm Mohammad Ishaq Mohammad Ghulam, a registered firm with its head office at Katni in district Jabalpur had been manufacturing Bins with trade mark No. 303 and that the respondent started manufacturing Biris, which appeared to be limitations of Biri No. 303, and making bundles of the Biris in such a manner as was calculated to cause it to be believed that it was the trade mark and the property mark of the complainant's firm and were thus using a false trade mark and property mark and selling them marked with a counterfeit trade mark and property mark.
3. The respondent pleaded not guilty and alleged that he had been prosecuted due to business rivalry. He stated that his biri No. 303 and its property mark and tradt mark, design and colour were registered, and that there was a difference in the bundle of the Biris and those of the complainant's firm.
4. On behalf of the complainant Shameem Ahmad P. W. 1, Qazi Azizulrahiman, P. W. 2, Qusaruddin P. W. 3, Adalat P. W. 4 and Mahabir P. W. 5 were examined and respondent examined Keramull D. W. 1. The learned Magistrate framed a charge under Section 482, I. P. C. in the following words:
''That since the month of October/November, 1962, you counterfeited Trade Mark and Property Mark of Biri No. 303 of firm Mohd. Ishaq and Mohammad Ghulam of Katni district Jabalpur of Madhya Pradesh to denote it that it was the property of your firm though it was not so in a manner reasonably completed to cause if to be believed that such goods were the property of your firm by manufacturing fraudulently Biri No. 303 representing it to be Biri No. 303 thereby committed an offence punishable under Section 482 of the I. P. C."
5. The learned Magistrate referred to a decision of this Court in Kundan Lal v. State, AIR 1958 All 643 and came to the conclusion that the respondent had not counterfeited either property mark or the trade mark of Biri No. 303 of the complainant's firm. With regard to the trade mark he observed that it could not be held to be a counterfeit of that of the complainant's firm because it was not an exact copy of the trade mark of the complainant's factory. He held that in those circumstances coupled with the evidence on record and the fact that the respondent had his Biri trade mark and property mark registered, the respondent had not been proved to be guilty and acquitted him.
6. Referring the case for decision to a larger Bench, brother M.H. Beg, J. also mentioned the following four points specifically:
1. Whether the criminal appeal should be stayed during the pendency of the civil suit?
2. Whether the view taken in AIR 1958 All 643 is different from and overruled by the view taken by the Supreme Court in State of U. P. v. H.M. Ismail. AIR 1960 SC 669?
3. Whether the assumption that a prosecution for the infringement of a trade mark lay under Section 482, I. P. C. is untenable after the amendment of the Indian Penal Code by the Trade and Merchandise Marks Act of 1958 and whether this amendment has the effect of removing the violations of rights in trade marks from the purview of Section 481, I. P. C.?
4. Whether the certificate of registration relied upon by the learned Magistrate in acquitting the respondent was not really a registration of the trade mark or property mark at all?
7. With regard to point No. (1) the contention of the learned counsel for the appellant Is that In this case the application of the appellant for interim Injunction in the civil suit filed for a perpetual Injunction had been dismissed because of the Magistrate's order of acquittal which was not a correct order, and that in these circumstances It was necessary that the appeal should not be stayed and should be heard and decided. On behalf of the respondent reliance was placed in Kanhaiya Lal v. Bhagwan Das, 26 Cri LJ 1485 at p. 1488: (AIR 1926 All 30 at p. 33) wherein Sulaiman, J. (as he then was) sitting singly observed:
"Had I not come to the conclusion that these proceedings should be quashed, I would have had no hesitation in saying that these proceedings ought to be stayed pending the disposal of the civil case. Obviously it would be highly undesirable that the same dispute should be allowed to be fought out in two Courts, namely, Criminal and Civil Courts. simultaneously."
He observed further that the inherent power of the High Court to slay proceedings is very wide and has been exercised in several cases by this Court.
8. In the first place, that case was not one of stay of appeal at all. Reliance had been made by the Sessions Judge of Kanpur recommending that a case under Section 467, I P. C pending in the Court of a 1st Class Magistrate should be stayed till the civil suit was finally disposed of. The position would be entirely different when a criminal case has been decided by a Magistrate and that decision affects the exercise of discretion by the Civil Court in deciding an application for temporary injunction by one of the parties to the civil suit. The object of staving the original criminal case before it is decided by the Magistrate is to avoid any change in the position of the parties fighting the civil suit. To stay an appeal after the decision by the Magistrate would have a contrary effect, for one of the parties to the civil litigation would have a decision of the Magistrate in its favour. In these circumstances the discretion of the High Court should not be exercised in favour of the respondent and against the appellant.
9. Learned counsel for the respondent also relied on Ladha Shah v. Zaman Ali, AIR 1925 Lah 289 (2). In that case the complain ant had mortgaged certain land to the accused in pursuance of the agreement between the parties in satisfaction of a decree which the accused held against the complainant But the accused in spite of this proceeded to execute the decree against the complainant The complainant thereupon prosecuted the accused alleging that the complainant had been cheated over the mortgage. As observed by Campbell, J. it was obvious that the question between the parties was whether the decree against Zaman Ali had been satisfied or not by the transfer to the decree-holder of certain land and the executing court was the proper place for this matter to be decided, and that the contents of the complaint and the statement of the complainant recorded by the Magistrate made it perfectly clear that the Magistrate should have dismissed the complaint summarily.
In these circumstances the court observed that the parties should not be encouraged to resort to the criminal courts in cases in which the point at issue between them is one which can more appropriately be decided by a civil Court That was also a case in which the proceedings were pending in the court of Magistrate and there were special circumstances in the case in which Campbell, J. considered It proper to quash the proceedings. As already mentioned there are special circumstances in the present case arising out of the acquittal of the accused which affected the decision of the application for interim injunction made by the appellant in the civil suit. In these circumstances the decision of the appeal should not, in our opinion, be stayed.
10. With regard to point No. (3) it has been conceded by the learned counsel for the appellant that it was not a case of using a false property mark or selling goods marked with a counterfeit property mark, or counterfeiting a property mark, and that Sections 479, 481, 482 and 486 I. P. C. did not apply. It appears that in the complaint the appellant himself mentioned Sections 482 and 483 I. P. C. and did not refer to any section of the Trade and Merchandise Act. The matter of using a false trade mark, counterfeiting a trade mark and selling goods with counterfeit trade mark have been removed from the provisions of the Indian Penal Code by amendment made by the Trade and Merchandise Marks Act of 1958. The appellant made allegations in paragraph 4 and 5 of the complaint which clearly show that his was a case also of making use of a false trade mark, counterfeiting a trade mark and selling goods with a counter fit trade mark. It was consequently not correct for the learned Magistrate to frame a charge only under Section 482 of the Indian Penal Code. In such a case the Magistrate is not to be guided merely by the section put on the complaint by the complainant, but hag to frame a charge or charges on the basis of the allegations in the complaint as well as the statements of the witnesses before the charge is framed. Section 77 of the Trade and Merchandise Marks Act 1968 runs as follows:
(1) A person shall be deemed to falsify a trade mark who, either,--
(a) without the assent of the proprietor of the trade mark makes that trade mark or deceptively similar mark; or
(b) falsifies any genuine trade mark, whether by alternation, addition, effacement or otherwise.
(2) A person shall be deemed to falsely apply to goods a trade mark who, without the assent of the proprietor of the trade mark-
(a) applies such trade mark or a deceptively similar mark, to goods or any package containing goods;
(b) uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling, or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark.
(3) Any trade mark falsified as mentioned in Sub-section (1) or falsely applied as mentioned in Sub-section (2), is in this Act referred to as a false trade mark.
(4) In any prosecution for falsifying a trade mark of falsely applying a trade mark to goods, the burden of proving the assent of the proprietor shall lie on the accused.' This section deals with falsifying and falsely applying trade marks. Clause (1) of that section also deals with the case of a person who without the assent of the proprietor of the trade mark makes a deceptively similar mark and Clause (2) with the application of a deceptively similar mark. Section 78 provides penalties for offences for applying false trade marks, trade description etc. and Section 79 for selling goods to which a false trade mark or a false description has been applied. As for the question of Section 482 of the Indian Penal Code, under which action only a charge was framed, it has already been conceded by the learned counsel for the appellant that it was not a case covered by that section. But since no charge had been framed in respect of the use and application of a false trade mark falsifying or counterfeiting a trade mark and selling goods with a false or counterfeit trade mark the case will have to be sent back to the Magistrate for a fresh trial. We do not, however, desire to express, nor should be taken to have expressed, any opinion on the merit of the case.
11. So far as the second point is concerned, we find that the decision of the Supreme Court in AIR 1960 SC 869 (Supra) and of the Allahabad High Court in AIR 1988 All 648 (Supra) related to an offence committed before the amendment in the Indian Penal Code. At that time provisions of Section 482 of the Indian Penal Code in deciding what amounted to counterfeiting a trade mark were relevant for the decision of that case. In view of the concession the learned counsel for the appellant that Sections 482 and 486 I. P. C. do not apply to the complaint it is consequently not necessary for us to decide for the purposes of this case the question whether AIR 1958 All 648 (Supra) has been overruled by the Supreme Court in AIR 1960 SC 669 (Supra).
12. As for the fourth point we find that the document relied upon by the respondent it not registered by the Registrar of Trade Marks in accordance with the provisions of the Act. Admittedly, it has been registered by the Sub-Registrar of Assurances, Calcutta and is merely a registration of the declaration on behalf of the respondent by the United Magic Company Private Ltd. through their representative Anil Kumar Dutta. Such a registration will not help the respondent as a registration under the Trade and Merchandise Marks Act 1958.
13. The result is that the application under Section 561-A, Criminal Procedure Code is dismissed and the appeal is allowed. The acquittal is set aside and the case sent back to the District Magistrate for a fresh trial after framing a fresh charge. The District Magistrate will either try the case himself or transfer it to any Magistrate competent to do so other than the Magistrate who originally tried it. This order will govern both the Criminal Appeal No. 2547 of 1968 and the connected Criminal Miscellaneous Case No. 2619 of 1964.