Monday, 30 January 2017

Whether Trade mark which is registered subsequently will relegates back to date of application?

 Having   bestowed   my   thoughts   to   the
submissions   made,   Mr   Sawant,   learned   Counsel   for
the applicant  was right in pointing out that the
application under the provisions of Sections 23 of
the  Trade  Marks  Act of  1958 came  to be  moved  on
24th  July,   1992   and   even   though   same   is   granted
subsequent   to   the   date   of   offence,   however,   such
registration   relegates   back   to   the   date   of
application   and   as   such,   the   applicant   holds
appropriate registration of the goods in question
under the provisions of Trade Marks Act. 
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
 BENCH AT AURANGABAD
                              
CRIMINAL REVISION APPLICATION NO.163 OF 2004
Perfetti Van Melle India Pvt. Ltd.,

V
The State of Maharashtra

           CORAM :  N.W. SAMBRE, J.
          
               DATE :  1st SEPTEMBER, 2016
Citation: 2016 ALLMR(CRI)4913

Pursuant   to   the   complaint   filed   by   the
representative   of   the   applicant­Company,   Crime
No.   3032   of   2000   came   to   be   registered   for   an
offence punishable under section 77, 78, 79, 21(2)
of   the   Trade   &   Merchandise   Marks   Act,   1958
(hereinafter   shall   be   referred   to   as   the   “Trade
Marks Act”) and Section 51 and 63 of the Copyright
Act, 1957.


2. The   complaint   as   is   lodged   speaks   of
following facts :
The applicant is the producer of Toffies,
bubbles   and   candies   and   also   engaged   in   the
business of selling the same.   It is then claimed
that, the Italian Company Perfetti S.P. is helping
the   applicant   Company   to   produce   and   sell
“Alpenliebe”   candies   w.e.f.   1995.     It   is   then
claimed that in September, 1999, it was noticed by
the applicant that when Kasturi Fine Foods (I) Pvt.
Ltd.,  and  Atlantic  Confectionery   Private   Limited,
situated at Dhule  are marking  Narial Indich in a
similar label to that of one used by the applicant
and as such there  is infringement  of Trade Marks
Act and Copyright Act. As such, same has resulted
into registration of crime in question.  
3. So   far   as   the   above   referred   crime   is
concerned,   the   same   was   preceded   with   suit   for
injunction   bearing   No.   1   of   1999   initiated   at

District   Court,   Dhule,   against   the   respondentaccused,
  which   I   am   informed   that   the   said   suit
came to be disposed of with certain observations as
regards   recalling   of   goods,   disposal   of   the   same
etc.     As   such,   civil   proceedings   have   already
attained   finality   under   both   the   above   referred
statutes i.e. Trade Marks Act and Copyright Act. 
4. The respondent­accused thereafter moved an
application   under   Section   239   of   the   Code   of
Criminal   Procedure   seeking   discharge   on   29th
August,   2000   and   learned   Magistrate   vide   order
below Exh. 16 i.e. application for discharge, has
allowed the same on 2nd January, 2004.
5. The   reason   for   allowing   the   said
application   is   that   the   applicant   has   failed   to
disclose   any   registration   under   Trade   Marks   Act.
Apart from above, what is noticed by the Magistrate
is,   there   is   no   iota   of   evidence   to  prima   facie
infer   the   constitution   of   offence   under   both   the
above referred statues.

6. As   such,   original   complainant­applicant
herein   has   questioned   the   order   of   discharge   on
merits. 
7. This   Court,   on   22nd  November,   2004,   has
admitted the present revision based on the certain
judgments   cited   by   the   applicant   so   as   to
substantiate   that   the   registration   under   the
Copyright Act is not required. 
8. In   the   above   referred   background,   Mr
Sawant,   learned   Counsel   for   the   applicant   would
urge   that   the   application   for   discharge   has   been
allowed by the learned Magistrate contrary to the
scheme  of both the statues, as according to him,
there   is  prima   facie  material   before   learned
Magistrate to constitute the commission of offence
under the relevant provisions.  He would then urge
that   the   respondents­accused   are   required   to   be
stand to trial.

9. Learned A.P.P. supports the above referred
submissions   of   the   learned   Counsel   for   the
applicant. 
10. Learned   Counsel   for   respondents­accused
has   tried   to   demonstrate   that   maximum   punishment
has been provided is three years for the offences
under both the statues.   He would then urge that
looking to the fact that the alleged offence came
to be registered on 15th May, 2000, the prosecution
of the respondents, particularly looking to their
age, will hardly serve any purpose, as there is no
subsequent   complaint   from   applicant   that
respondents­accused have involved in similar types
of offences.  He would then submit that perusal of
the record  of the present  case would also depict
that   the   applicant   has   not   placed   on   record   any
material   to   infer   as   regards   constitution   of
offence   under   relevant   provisions   of   both   the
statues,   as   neither   material   for   demonstrating
Copyright nor evidence for substantiating the claim
under Trade Marks Act is brought on record.

11. Having   bestowed   my   thoughts   to   the
submissions   made,   Mr   Sawant,   learned   Counsel   for
the applicant  was right in pointing out that the
application under the provisions of Sections 23 of
the  Trade  Marks  Act of  1958 came  to be  moved  on
24th  July,   1992   and   even   though   same   is   granted
subsequent   to   the   date   of   offence,   however,   such
registration   relegates   back   to   the   date   of
application   and   as   such,   the   applicant   holds
appropriate registration of the goods in question
under the provisions of Trade Marks Act. 
12. This takes me to the next point as regards
the offence under the relevant provisions.  Section
29 of the Trade Marks Act provides for infringement
of   registered   trade   mark   and   Section   31   provides
for registration under the Act to be prima facie
evidence of validity of such Trade Mark. Section 77
of the Act provides for falsifying and false supply
of Trade Mark as is alleged in the present case and
Sections 78 and 79 provide for penalty of applying

false   Trade   Marks,   description   etc.     which   is
punishable   with   maximum   period   of   two   years   and
fine and in exceptional cases below six years.  So
far as Section 79, which provides for penalty for
selling goods to which false Trade Marks or false
description is supplied, is punishable for a period
of 3 years and fine.
13. It is required to be noted that though the
registration   qua   Trade   Mark   brought   on   record,
however,   there   is   hardly   any   material   placed   on
record,   much   less   copy   of   charge­sheet   so   as   to
constitute offence under the Copyright Act or claim
as   has   been   alleged   in   the   first   information
report, commission of crime under the Trade Marks
Act.
14. Apart from above, this Court is required
to   take   judicial   note   of   the   fact   that   the   suit
being   No.   1   of   1999   is   already   disposed   of   way
back. 

15. Having regard to the fact that the offence
is   punishable   with   maximum   of   three   years   and
fine, in my opinion, the respondents­accused have
suffered for a period of sixteen years, as present
proceedings   are   pending   against   them   as   hanging
sword.  In my opinion, there is also sufferance of
respondents­accused.
16. The   civil   suit   has   already   attained
finality, as the applicant has not questioned the
verdict of the civil suit.
17. In   my   opinion,   no   case   for   exercising
revisional   jurisdiction,   at   this   stage,   is   made
out.  As such, Criminal Revision Application fails
and stands rejected. 
 (N.W. SAMBRE, J.) 

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