iminal Appeal No 37 of 1964
Appeal from the judgment and order dated November 26 1963 of the Allahabad High Court in Government Appeal No 782 of 1962
section P Sinha G L Sanghi Ganpat Rai E C Agarwala section section Khanduja for P C Agarwala for the appellant
Atiquor Rehman and O P Rana for the respondent
Antiquor Rehman and OP Ranafor the respondent
69 The Judgment of the Court was delivered by Shah J
The appellant was charged before a Magistrate 1st Class at Varanasi with being on November 25 1960 in possession of counterfeit labels which could be used to pass off his tobacco tins as the goods of M s Nandoo Ram Khedan Lal bearing Titli butterfly trade mark and with being in possession for ale of tobacco tins bearing counterfeit trade marks of the genuine Titli brand trade mark of Ms Nandoo Ram Khedan Lal
The Trial Magistrate convicted the appellant and sentenced him to suffer simple imprisonment for three months for offences under section 78 read with section 77 and under section 79 of the 43 of 1958 and directed the two sentences to run consecutively
In appeal to the Court of Session Varanasi the order passed by the Trial Magistrate was set aside and the appellant was acquitted principally on the ground that the prosecution was barred because it was not instituted within the period prescribed by section 92 of the Act
The High Court of Judicature at Allahabad however set aside the order of acquittal and restored the conviction but reduced the sentence on each of the charges to a fine of Rs 1000 
With certificate granted by the High Court under article 134 of the Constitution this appeal has been preferred
Ms Nandoo Ram Khedan Lal who will hereinafter be called the complainants carry on in the town of Varanasi business in chewing tobacco
They were marketing their product for the last many years under a trade mark styled Titli butterfly
The label on the containers of chewing tobacco shows figures of three butterflies on yellow green background and the legend Titli in Devnagari and English characters
The appellant who carried on business also in chewing tobacco commenced market his goods in the name of Titli partridge
The label on the containers had figures of four butterflies on leaf green background and the legend Titli in Devnagari and English characters
The colour schemes of the butterflies in the complainants  label and of the butterflies in the appellants label were substantially similar
The complainants gave information to the police in November 1960 that the appellant had infringed their trade mark by marketing his goods under a trade mark calculated to deceive the purchasers into believing that they were purchasing the product of the complainants
The police submitted a charge sheet against the appellant for offences under section 78 read with section 77 and section 79 of the 
The Trial Magistrate observed that there was  close resemblance between the label used by the complainants and the label used by the
appellant and that a vast mejority of users of such tobacco being illiterate were likely to be carried away by  a pictorial  device of Titli 70 butterfly since they were incapable of reading and understanding the descriptions on the label in Devanagri and in English
With this view the Sessions Judge and the High Court agreed
Before us no substantial argument has been advanced which would justify us in taking a different view on this question
It was however contended for the appellant that the case against him must still fail because the prosecution was barred by section 92 of the  and also because there was such acquiescence on the part of the complainants as would justify an inference that they had assented to the appellant using the trade mark under which his product was marketed
To appreciate these two contentions it is necessary to refer to certain facts
Some time before 1955 the appellant had started marketing his goods under the trade mark Titli there is however no evidence about the general get up of the label on the containers of chewing tobacco marketed by him at that time
On January 6 1955 the complainants wrote a letter to the appellant claiming that they were the sole proprietors of Titli brand that Titli was their registered trade mark and the appellant had with criminal intention started making illegal and unlawful use of that trade mark and had copied their trade mark and was using it on similar but inferior chewing tobacco and was passing off his goods in the market as the product of the complainants and on those allegations the complainants called upon the appellant to desist from selling or disposing of any of the goods with labels resembling to the complainants  trade mark and thereby deceiving the public into purchasing the appellant s product when the public desires to purchase the complainants  product and making several other incidental requisitions
In reply the appellant denied that the complainants were the sole proprietors of Titli trade mark and that in any event the appellant had not used the trade mark Titli on any goods manufactured by him
The appellant also claimed that he had been marketing his goods in the name of Titli for many years and that the complainants were seeking to pass off their product as that of the appellant
After this correspondence no steps were taken by the complainants against the appellant till November 1960
The appellant was on information lodged by the complainants prosecuted for offences under section 78 read with section 77 and section 79 of the 
The appellant submitted that whereas the complainants had on their own admission learnt about infringement of their trade mark in 1955 criminal proceedings started in November 1960 were barred under section 92 of the 
It may be noticed however that the offences charged against the appellant 71 were alleged to have been committed on November 25 1960 an the charge sheet was lodged in the Court of the Magistrate 1st Class on March 22 1961
Section 92 of the  insofar as it is material provides No prosecution for an offence under this Act     shall be commenced after the expiration of three years next after the commission of the offence charged or two years after the discovery thereof by the prosecutor whichever expiration first happens In substance the appellant in relaying upon the bar of section 92 seeks to substitute for the words after the discovery the words  after the first discovery and for the words after the commission of the offence charged the words after the commission of the first infringement of trade mark
The Legislature has deliberately not used those expressions and there is no warrant for substituting them in the section and thereby substantially modifying the section
Counsel for the appellant however submitted that in inter preting section 15 of the Merchandise Marks Act 4 of 1889 which is similar to section 92 of Act 43 of 1958 the Madras High Court had in Ruppell vs Ponnusami Jevan and Another1 held that a prosecution under section 15 of the Merchandise Marks Act 4 of 1889 commenced after the expiration of the period prescribed by the Legislature from the date when the infringement was first discovered is barred and that this Court had in Dau Dayal vs State of Uttar Pradesh1 affirmed that view
In Ruppell s case1 the accused was charged with committing an offence punishable under section 15 of the  on a complaint that the accused had infringed the complainant s trade mark
It appeared at the trial that the complainant had discovered in 1893 that goods were sold by the accused marked with a trade mark which was similar to his trade mark and the complainant had called upon the accused to discontinue user of the counterfeit trade mark and to render an account of sales made by him
In 1898 the complainant prosecuted the accused for infringing his trade mark
The High Court of Madras held that as the complainant did not show that he believed the use of the alleged counterfeit trade mark had been discontinued after the first discovery and protest in 1893 prosecution of the accused in 1898 under section 15 of the  was barred
This view was followed by the Bombay High Court in Abdulsatar Khan Kamruddin Khan vs Ratanlal Kishenlal3 The Court observed in that case that under section 15 of the  if the offence of infringement of a trade or property mark is a continuing one and if no discontinuance is proved time runs from the first 1 ILR 3 ILR 2   72 instance of infringement or from the first discovery of the infringement
Abdulsatar Khan s case1 was however overruled by a full bench of the Bombay High Court in Emperor vs Chhotalal Amarchand2 In that case the Court dissenting from the judgment of the Madras High Court in Ruppell s case1 and overruling the decision in Abdulsatar Khan s case1 held that under section 15 of the  starting point of limitation in all cases is the date of the offence charged
In Dau Dayal s case1 Venkatarama Aiyar J incorporated substantially the whole of the judgment in Ruppell s case 3 but in Dau Dayal s case1 the matter in dispute was entirely different
In that case the accused was prosecuted for offences punishable under sections 420 482 483  486 IP Code on the allegation that he was in possession of Bidis which bore counterfeit trade marks
A complaint was filed against the accused on March 26 1954 and after investigation by the police a charge sheet was filed in the Court of the Magistrate on September 30 1954
The accused contended that the offence was discovered on April 26 1954 and since process was issued by the Magistrate on July 22 1955 ie more than one year after discovery of the offence he could not because of section 15 of the Merchandise Marks Act 1889 be prosecuted
This Court rejected the plea raised by the accused
An excerpt from the judgment in Ruppell s case1 was incorporated only to indicate the general tenor of section 15 and not with a view to express approval of all that was observed therein
We are however in this case not called upon to consider whe ther Ruppell s case1 was correctly decided
That case was decided on the interpretation of section 15 of the Merchandise Marks Act 1889
Suffice it to say that the Legislature has in enacting the 43 of 1958 made a substantial departure from the language used in section 15 of Act 4 of 1889
For the sake of convenience the material parts of the two sections may be set out in juxtaposition Section 15 of Act 4 of 1889 No such prosecution  shall be commenced after the expiration of three years next after the commission of the offence or one year after the first discovery thereof by the prosecutor whichever expiration first happens
1 ILR ILR Section 92 of Act 43 of 1958 No prosecution for an offence under this Act  shall be commenced after the expiration of three years next after the commission of the offence charged or two years after the discovery thereof by the prosecutor whichever expiration first happens
2 ILR 4 ATR 73 The Legislature in enacting section 92 of Act 43 of 1958 has clearly made departure from section 15 of Act 4 of 1889 in important respects
Whereas under section 15 prosecution had to be commenced within three years next after the commission of the offence or within one year after the first discovery thereof by the prosecutor under section 92 the prosecution must be commenced before the expiration of three years next after the commission of the offence charged or two years after the discovery by the prosecutor of the offence charged whichever expiration first happens
Under section 92 it is plain the period commences to run from the date of the commission of the offence charged or from the date of discovery by the prosecutor of the offence charged
The argument which could be raised under section 15 and was approved in Ruppell s case1 that the Legislature intended to provide that the period shall commence from the first discovery thereof by the prosecutor is plainly not open to the offender infringing the provisions of the under section 92
The period has to be computed for the purpose of the first part of the section from the date of the commission of the offence charged and under the second part from the date of discovery of the offence charged and not from the first discovery of infringement of trade mark by the prosecutor
The plea that the complainants had assented to the use of the trade mark by the appellant and on that account the latter could not be said to have falsified a trade mark or to have falsely applied the trade mark is without substance
Section 77 it is true provides that 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 a deceptively similar mark or b falsifies any genuine trade mark whether by alteration addition effacement or otherwise
If there is assent of the proprietor to the use by the accused of a trade mark which is deceptively similar there would be no falsification or false application of the trade mark but protest against infringement of the complainants  trade mark cannot be regarded as assent to the use or application of the false trade mark
The High Court has on a review of the evidence held that there was no acquiescence by the complainants from which assent may be inferred and we see no reason to differ from that finding
The appeal therefore fails and is dismissed
Appeal dismissed


Summary:
In 1955 the complainants protested to the appellant that he was infringing their trade mark but no further action was taken by them at that time
In November 1960 the appellant was found in possession of labels and tobacco tins carrying marks deceptively similar to the complainants  trade mark
After investigation the police lodged in March 1961 a charge sheet against the appellant in respect of alleged offences under section 78 read  with section 77 and P 79 of the 
The trial Magistrate convicted the appellant who was however acquitted by the Sessions Judge principally on the ground that the prosecution was barred as it was not instituted within the period prescribed by section 92 of the Act
In appeal against the order of acquittal the High Court convicted him but granted him a certificate under Art 134 of the Constitution
HELDThe period under section 92 of the commences to run from the date of the commission of the offences charged or from the date of discovery by the prosecutor of the offence charged
The period does not have to be reckoned from the first discovery of infringement of trade mark by the prosecutor
In this respect section 92 of the Act of 1958 is materially different from section 15 of the Merchandise Marks Act 4 of 1889
73A D Ruppell vs Ponnusami Tavan and Anr ILR and Dau Dayal vs State of Uttar Pradesh   distinguished
Abdulsatar Khan Kamruddin Khan vs Ratanlal Kishenalal ILR and Emperior vs Chhotalal Amarchand ILR  referred to
There was nothing to substantiate the appellant s plea based on section 77 of the Act that the complainants had acquiesced in his use of the deceptive trade mark