Ram Kishore vs. State of U.P.: A Landmark Ruling on Trade Mark Infringement, Limitation, and Acquiescence
Introduction
Trade mark law exists to protect honest traders from unscrupulous competitors who attempt to ride on the goodwill and reputation built by others over years of diligent business conduct. When a trader copies the mark of another, the public gets deceived and the genuine trade mark owner suffers both economically and reputationally. The criminal provisions embedded in trade mark legislation are specifically designed to deter such dishonest conduct. The Supreme Court of India, in its judgment dated March 28, 1966 in Ram Kishore vs. State of Uttar Pradesh, addressed two critical and interrelated questions arising from a criminal prosecution for trade mark infringement under the Trade and Merchandise Marks Act, 1958. The first question concerned whether the prosecution was barred by the law of limitation under Section 92 of that Act, and the second was whether the conduct of the trade mark owner amounted to acquiescence, thereby legitimising the infringer's continued use of the deceptively similar mark. The Supreme Court's ruling in this case settles important points of law regarding how limitation is to be computed in criminal proceedings involving trade mark offences and what constitutes assent or acquiescence on the part of a trade mark proprietor.
Factual and Procedural Background
The complainants in this case were a firm by the name of M/s Nandoo Ram Khedan Lal, engaged in the business of selling chewing tobacco in the city of Varanasi. For many years prior to the events in question, they had been marketing their product under the registered trade mark "Titli," which in English means "butterfly." The label on their tobacco containers was distinctive and recognisable — it featured figures of three butterflies set against a yellow-green background, with the word "Titli" printed in both Devnagari and English characters.
The appellant, Ram Kishore, was also engaged in the business of selling chewing tobacco in Varanasi. At some point before 1955, he began marketing his own product under the name "Titli," which in his case was intended to refer to "partridge." However, the label on his tobacco containers bore figures of four butterflies set against a leaf-green background, again with the word "Titli" inscribed in both Devnagari and English characters. The colour schemes of the butterflies on both labels were substantially similar to each other.
In January 1955, the complainants wrote a formal letter to Ram Kishore asserting that "Titli" was their registered trade mark and that he had, with criminal intention, started making unlawful use of their trade mark by copying it and marketing similar but inferior chewing tobacco, thereby passing off his goods as those of the complainants. They called upon him to immediately stop selling goods bearing labels resembling their trade mark. Ram Kishore replied to this letter denying all the allegations. He claimed he had never used the trade mark "Titli" on his goods and further asserted that he had in fact been marketing his goods under that name for many years, and that it was the complainants who were attempting to pass off their product as his. After this exchange of letters in 1955, no further legal action was taken by the complainants for several years.
Then, in November 1960, the complainants lodged information with the police that Ram Kishore was infringing their trade mark. On November 25, 1960, Ram Kishore was found to be in possession of counterfeit labels that could be used to pass off his tobacco tins as the goods of the complainants bearing the "Titli" butterfly trade mark, and he was also found in possession of tobacco tins bearing counterfeit versions of that trade mark for the purpose of sale. A charge-sheet was filed in the Court of the Magistrate, 1st Class, Varanasi on March 22, 1961.
The Trial Magistrate convicted Ram Kishore and sentenced him to simple imprisonment for three months for offences under Section 78 read with Section 77 and Section 79 of the Trade and Merchandise Marks Act, 1958, and directed that the two sentences run consecutively. On appeal, the Sessions Judge at Varanasi set aside the conviction and acquitted Ram Kishore primarily on the ground that the prosecution was barred by limitation under Section 92 of the Act, since the complainants had come to know of the infringement as early as 1955. The matter then came before the High Court of Judicature at Allahabad, which overturned the acquittal and restored the conviction, but reduced the sentences on each charge to a fine of Rs. 1,000 each. Ram Kishore then obtained a certificate from the High Court under Article 134 of the Constitution and preferred the present appeal before the Supreme Court of India.
The Dispute
The central dispute before the Supreme Court revolved around two distinct but connected arguments advanced by the appellant Ram Kishore to challenge his conviction.
The first argument was that the prosecution was barred by limitation under Section 92 of the Trade and Merchandise Marks Act, 1958. The appellant's case was that since the complainants had themselves admitted, through the letter written in January 1955, that they were already aware of his use of the "Titli" mark, the two-year limitation period from the date of discovery of the offence had long since expired by the time they lodged the complaint in November 1960. In other words, the appellant was arguing that time began to run from the first discovery of the infringement in 1955, and not from the date of the actual offence charged in 1960.
The second argument was that the complainants had, through their long silence between 1955 and 1960, acquiesced to the use of the trade mark by the appellant. The appellant contended that this acquiescence effectively amounted to assent by the proprietors of the trade mark, and that under Section 77 of the Act, making a deceptively similar mark without the assent of the proprietor is what constitutes falsification. Since there was assent through acquiescence, the argument ran, no offence had been committed at all.
Reasoning and Analysis of the Court, Including Judgments Discussed
The judgment was delivered by Justice J.C. Shah on behalf of a three-judge bench comprising Justice K.N. Wanchoo and Justice S.M. Sikri as well.
On the factual question of whether there was a close resemblance between the two labels that was likely to deceive buyers, the Court noted that the Trial Magistrate had examined the labels carefully and found that the vast majority of users of such tobacco being illiterate were likely to be misled by the pictorial device of "Titli" (butterfly), since they could not read the descriptions on the labels in Devnagari or in English. Both the Sessions Court and the High Court had agreed with this finding, and the Supreme Court found no reason to disturb it, observing that no substantial argument had been advanced before it that would justify a different view.
On the question of limitation, the Court undertook a careful and detailed analysis of Section 92 of the Trade and Merchandise Marks Act, 1958. The Section, to the extent relevant, reads: "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."
The appellant's argument on limitation was essentially that the words "discovery thereof" in Section 92 should be read to mean the "first discovery" of infringement, which had occurred in 1955. The Court firmly rejected this interpretation, saying that the Legislature had deliberately not used the phrase "first discovery" or the phrase "commission of the first infringement," and there was no warrant for reading those words into the statute. The offence charged was the specific act committed on November 25, 1960, and the prosecution was commenced by filing the charge-sheet on March 22, 1961, well within two years of the discovery of that offence and well within three years of its commission.
To support this reasoning, the Court engaged in an important comparative exercise between Section 15 of the earlier Merchandise Marks Act, 1889 and Section 92 of the new Act of 1958. Under Section 15 of the Act of 1889, the language was: "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." The Court pointed out that the older provision had expressly used the phrase "first discovery" and the limitation period was one year. The new provision in the Act of 1958 had replaced "first discovery" with simply "discovery" and extended the limitation period to two years. This was described by the Court as a deliberate and significant departure by the Legislature.
The Court examined three earlier judicial decisions in this context. The Madras High Court in Ruppell v. Ponnusami Jevan and Another, ILR 22 Madras 468, had held, while interpreting Section 15 of the old Act of 1889, that a prosecution commenced more than one year after the first discovery of infringement was barred, even if the infringement was a continuing one. In that case, the complainant had discovered in 1893 that goods were being sold bearing a counterfeit mark similar to his, had protested to the accused, but then waited until 1898 to prosecute. The Madras High Court ruled this was barred. This view was then followed by the Bombay High Court in Abdulsatar Khan Kamruddin Khan v. Ratanlal-Kishenlal, ILR 59 Bombay 551, which held that where infringement is a continuing offence, time runs from the first instance of infringement or from the first discovery of that infringement.
However, the Bombay High Court later overruled its own earlier decision in a Full Bench judgment in Emperor v. Chhotalal Amarchand, ILR (1937) Bombay 183. The Full Bench dissented from the Madras view in Ruppell's case and overruled Abdulsatar Khan's case, holding that the starting point of limitation under Section 15 of the Act of 1889 was in all cases the date of the offence charged, not the date of first discovery.
The appellant had also relied upon the Supreme Court's earlier decision in Dau Dayal v. State of Uttar Pradesh, reported as 1959 CriLJ 524, suggesting that this Court had approved the view in Ruppell's case. The Supreme Court in Ram Kishore's case carefully analysed Dau Dayal and clarified that in that case, the accused was being prosecuted under Sections 420, 482, 483 and 486 of the Indian Penal Code for being in possession of bidis bearing counterfeit trade marks. The complaint was filed on March 26, 1954 and the charge-sheet was submitted on September 30, 1954. The accused had argued that since the offence was discovered on April 26, 1954 and the Magistrate issued process on July 22, 1955 — more than one year after discovery — the prosecution was barred under Section 15 of the old Act. The Supreme Court had rejected this plea. While the judgment in Dau Dayal had incorporated passages from the Madras judgment in Ruppell's case, the Court in Ram Kishore clarified that this had been done only to indicate the general tenor of Section 15 and not to express approval of everything decided in Ruppell's case. In any event, the Court in Ram Kishore concluded that it need not decide whether Ruppell's case was correctly decided, because the matter before it was governed by Section 92 of the new Act of 1958, which had consciously departed from the language of Section 15 of the old Act. Under Section 92, time runs not from the first discovery but from the discovery of the specific offence charged.
On the second argument of acquiescence, the Court turned to Section 77 of the Act, which provides that a person shall be deemed to falsify a trade mark who, without the assent of the proprietor, makes that trade mark or a deceptively similar mark, or who falsifies any genuine trade mark by alteration, addition, effacement or otherwise. The appellant argued that because the complainants had written a letter in 1955 and then done nothing for five years, their silence amounted to tacit assent to his use of the mark. The Court rejected this argument clearly and logically. A protest against infringement is the very opposite of assent. The complainants had written a strong letter in 1955 demanding that Ram Kishore stop using their mark. That letter was not an act of acquiescence; it was an assertion of rights. The Court held that protest against infringement of a trade mark cannot under any interpretation be regarded as assent to the use or application of the false trade mark. The High Court had also, on a review of all the evidence, found that there was no acquiescence on the part of the complainants from which assent could be inferred, and the Supreme Court found no reason to take a different view.
Final Decision of the Court
The Supreme Court dismissed the appeal and upheld the conviction of Ram Kishore as restored by the High Court of Allahabad. The Court affirmed that the prosecution was not barred by limitation since it was initiated in respect of the specific offence committed on November 25, 1960, and not in respect of any earlier alleged infringement. The Court also confirmed that the mere silence of the complainants between 1955 and 1960, following their letter of protest, did not amount to acquiescence or assent to the use of the infringing mark. The fine of Rs. 1,000 on each of the two charges, as imposed by the High Court, stood.
Point of Law Settled in the Case
This judgment settles a significant and lasting point of law in the field of trade mark jurisprudence in India. The Supreme Court definitively clarified that under Section 92 of the Trade and Merchandise Marks Act, 1958, the limitation period for a criminal prosecution is to be computed from the date of the commission of the specific offence charged, or from the date of discovery of that specific offence by the prosecutor, and not from the date of the first discovery of any infringement of the trade mark. This interpretation is grounded in the deliberate and conscious departure made by the Legislature in the Act of 1958 from the language of the earlier Act of 1889, which had used the words "first discovery." By omitting the word "first" and replacing it with simply "discovery" of the offence charged, Parliament made plain that each continuing act of infringement gives rise to a fresh cause for prosecution, and the limitation is to be counted from the date of the offence actually charged. The judgment also reinforces the legal principle that a formal protest by a trade mark proprietor against infringement is the antithesis of acquiescence, and cannot be construed as assent under Section 77 of the Act.
Case Details
Title: Ram Kishore Vs. State of Uttar Pradesh
Date of Order: March 28, 1966
Case Number: Criminal Appeal (with certificate under Article 134 of the Constitution of India)
Neutral Citation: MANU/SC/0181/1966
Equivalent Citations: AIR 1966 SC 1820; 1966 CriLJ 1500; [1966] Supp SCR 68
Name of Court: Supreme Court of India
Name of Hon'ble Judges: Justice J.C. Shah, Justice K.N. Wanchoo, and Justice S.M. Sikri
Disclaimer: Readers are advised not to treat this as a substitute for legal advice as it may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
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Headnote
Ram Kishore vs. State of Uttar Pradesh, AIR 1966 SC 1820
Supreme Court of India | March 28, 1966 | Justice J.C. Shah, Justice K.N. Wanchoo, Justice S.M. Sikri
Trade and Merchandise Marks Act, 1958 — Sections 77, 78, 79, 92 — Criminal prosecution for trade mark infringement — Limitation — Acquiescence.
The appellant was convicted for possessing counterfeit labels and tobacco tins bearing a mark deceptively similar to the registered "Titli" (butterfly) trade mark of the complainants. The complainants had first written to the appellant protesting infringement in January 1955, but filed a criminal complaint only in November 1960 in respect of offences committed on November 25, 1960. The appellant contended that the prosecution was barred under Section 92 of the Act since the complainants had discovered the infringement in 1955, and further that the complainants' long silence amounted to acquiescence and hence assent to the use of the mark under Section 77 of the Act.
Held, dismissing the appeal: (1) Section 92 of the Trade and Merchandise Marks Act, 1958 deliberately departed from the language of Section 15 of the Merchandise Marks Act, 1889 by omitting the word "first" before "discovery." Under Section 92, the period of limitation is to be computed from the date of commission of the specific offence charged or from the date of discovery of that specific offence, and not from the date of first discovery of any infringement. The prosecution initiated in respect of offences committed on November 25, 1960 was therefore within time. (2) A formal letter of protest by the trade mark proprietor against infringement does not constitute assent to the use of the infringing mark within the meaning of Section 77. Silence following a protest is not acquiescence amounting to assent. No acquiescence by the complainants was established on the facts.
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