S.J. Deshpande, J.
1. This revision application arises out of an order of conviction and sentence under sections 78(a) and 79 of the Trade and Merchandise Marks Act, 1958 recorded by the learned Metropolitan Magistrate and the petitioner-accused was sentenced to pay a fine of Rs. 1000/-.
2. The aforesaid conviction and sentence was maintained by the Appellate Judge in appeal filed by the petitioner-accused before him. That appellate order is dated March 25, 1980. In the result, the petitioners' conviction is maintained, he stands sentenced to pay a fine of Rs. 1000/- on each count, in default simple imprisonment for three months. The petitioner-original accused seeks to challenge this appellate order by way of revision in this Court.
3. A few facts may be stated briefly as follows :---
Respondent No. 2 Prabhudas Mohanlal Thakkar who is Officer of Duke's Co. Pvt. Ltd. filed a complaint before the Metropolitan Magistrate, 23rd Court, Esplanade, Bombay, that the petitioner company runs a factory in the name and style "New Hindustan Soda Factory", Balmiya Road, Mahim using the counter trade mark of the complainant's company and sells the bottles containing aerated water manufactured by his company. It was stated that the complainant's company manufactures aerated waters and put them for selling in bottles bearing their registered trade mark 'Duke's'. The complainant-company has got exclusive right of this trade mark since 1889 and complainant's drinks which are sold under this trade mark are very popular in the market.
4. The petitioner embossed on the bottles which he was selling in the market as 'Dew's', which is deceptively similar to the trade mark of the complainant's company. It was stated that the petitioner falsified the trade mark and he is guilty of the commission of offences under sections 78(a) and 79 of the Trade and Merchandise Act, 1958.
5. It is alleged that on the basis of this information on or about 17th December, 1975, the complainant lodged his complaint, which was sent to the police for investigation and on February 19, 1976, similar 3500 bottles approximately of value of Rs. 5000/- were seized from the shop of the petitioner. The application for return of the said property was rejected on 25th February, 1976.
6. The petitioner-accused appeared before the Magistrate and admitted that Exhibit 'C' is one of the bottles of aeraetd water, which he was selling. He also admitted that the complainant's company has registered trade mark as 'Duke's'. The defence of the petitioner was that the trade mark used on Exhibit 'C' is not deceptively similar. It is quite distinct from trade mark on goods (bottles) of the complainant's factory. He set out certain items of distinction and maintained that there is no possibility of customers being deceived. It is also said by the petitioner that he sells his bottles to the whole-sale dealers openly and there is no question of deception. All these points are taken in defence. The defence has also examined a witness in support of his case.
7. The complainant himself is examined in this case and one Police Officer was examined. On the basis of the evidence led before the learned Magistrate the learned Magistrate after comparing the bottle Exhibit 'B' and Exhibit 'C' and examining the record of the case and points of defence came to the conclusion that the mark 'Dew's' used by the petitioner is deceptively similar to the one which is used by the complainant-company. In normal circumstances, a common man making a demand for the said Exhibit 'B' 'Duke's' is likely to be confused for Exhibit 'C', which is counter mark used by the petitioner. The petitioner has not brought any material to show that he had no intent to defraud. The learned Magistrate came to the conclusion that trade mark used by the petitioner is capable of creating confusion in the minds of the customers. Relying on some evidence regarding the use of the bottles of the company on earlier occasions, according to the learned Magistrate, it cannot be said that the petitioner must be acting not using Exhibit 'C' without intent to be defraud.
8. In regard to the offence under section 79 of the said Act, the petitioner failed to prove that he has taken any reasonable precautions against committing the offence. There is no evidence to show that the petitioner was acting innocently. Therefore, the learned Magistrate held that the accused-petitioner has committed an offence under sections 78(a) and 79 of the Trade Merchandise Marks Act, 1958.
9. In the Appellate Court the petitioner maintained and repeated the same contentions. It was contended that there are so many distinctive marks of Exhibit 'C' and that it cannot be deceptively similar to Exhibit B. A reference was also given to the letters and lines embossed on the two Exhibits 'B' and 'C' and many other important distinction which was pointed, related to phonetics in uttering of these words 'Duke's' and 'Dew's'. All these circumstances were considered by the learned Appellate Judge and taking over-all view of the evidence on record the learned Appellate Judge confirmed the findings made by the Magistrate. He also held that it is quite possible that the word 'Dew's' embossed on Exhibit 'C' and designs in which they are placed and other similarities even the sound of the wording 'Dew's' is deceptively similar with the mark of the complainant's company. Therefore, the product used by the petitioner was held to be deceptively similar and the conviction was upheld by the learned Appellate Judge.
10. The petitioner desires to challenge this conviction in this revision. The learned Advocate for the petitioner contended that the prosecution has not led any evidence of the customers to show that any particular person was defrauded by the use of the counter mark. It was stated that the evidence of the complainant in this respect is uncorroborated and quite interested when the complainant deposes that the customers are being defrauded. The learned Advocate for the petitioner invited my attention to a judgment of the Privy Council reported in Willian Dimech v. Goffredo Alessandrao Chertien, A.I.R. 1931 Privy Council 15. Relying on this judgment of the Privy Council it was contended that it is essential for the prosecution that the goods are similar to the goods of the complainant-company and it must be further proved that similarity has been deceptive. The action, which the Privy Council was dealing with, was related to an infringement of the trade mark on the civil side. It was held that :---
"If the use by the defendants of their firm name does in fact necessarily result in their goods being taken for the goods of plaintiffs, the continued use by the defendants of that firm name would become fradulent".
The Privy Council was dealing with civil case and they have observed as under:
"No one was called to say that he had been deceived or that he would be deceived by the words..........".
Relying on this observation of the Privy Council it was contended that in a criminal case it would be more appropriate to seek some such evidence of defrauding. In the absence of such evidence of a customer, the conviction recorded against the petitioner is quite illegal. This contention is without any substance. The case in which the Privy Council has made observations related to a civil action. There was no evidence whatsoever in that case on the material point of establishing the similarity of the name used by the respective parties. There the plaintiff was claiming an injunction and his proprietary right to claim using the mark was in dispute. The Privy Council has observed that :
".........it falls a very long distance short of establishing inevitable deception by reason of the defendants continuing the use of their firm name.........".
It is against this background that the stray observation of the Privy Council had made that "No one was called to have been deceived". In the present case, in view of the admissions of the petitioner himself, the main controversy centres round the comparison of the similarities of the two trade marks. Therefore, the above ruling of the Privy Council has no application to the present case.
11. Then, the learned Advocate for the petitioner invited my attention to several factual facts regarding distinct features of the mark used by the petitioner. Those points are borne out by the evidence and the courts below have compared those similarities. The learned Advocate for the petitioner in this connection contended before me that there also the Court has committed an error because the Court itself cannot compare the various points of distinction in the two marks, such as the words, lines embossed on the exhibits 'B' and 'C' and phonestic. It is said that the evidence of some other witness was essential to show that he is confused or he is likely to deceive by the similarities between the two marks. The comparison made by the Court is unauthorised and illegal. The standard to be applied is to be of unwary customer who should come and state that there is striking similarity or dissimilarity or there are occasions for confusing the two marks. I am afraid that this contention is also without any substance.
12. The learned Advocate for the respondent -company has invited my attention to a judgment of our High Court reported in Abdul Sattar Mohamed Hussain Jamadar v. Badri Narayan BansilaI Pallod, 63 Bom.L.R.
563. This is a case wherein a similar question regarding the use of the mark was involved under the penal provisions. However, the action was under sections 482, 483, 485, 486 and 488 of the Indian Merchandise Marks Act and sections 6 and 7 of the Trade Marks Act. The provisions of those sections and provisions of section 78(a) and 79 of the Act, 1958 are almost identical. This authority is of the Division Bench of our High Court and both the contentions which are raised by the learned Advocate for the petitioner stand answered by this case At page 567, it is observed by the Division Bench as follows :---
".........The principle in all these cases is, what is the effect of the particular trade mark in an unway purchaser ? And whether or not that purchaser would be deceived by the use of that particular trade mark as observed by the Privy Council in the Coca-Cola's case reported in Coca-Cola Co. v. Pepsi-Cola Co., (1942) All.E.R. 615 in which it was observed :
"the question for determination must be answered by the Court, unaided by outside evidence, after a comparison of the defendants mark and used with the plaintiff's registered mark, not placing them side by side, but by asking itself whether, having due regard to relevant surrounding circumstances, the defendant's mark as used is similar (as defined by the Act) to the plaintiff's registered mark as it would be remembered by persons possessed of an average memory with its usual imperfections".
There may be some difference in the designs and yet the Court may come to the conclusion that the use of marks is calculated to deceive. It is this test which must be applied in considering the question at issue. No doubt, these cases were civil actions but having due regard to the language of the sections used in the Indian Penal Code, it is abundantly clear that the test is the same. The sections do not require that the user of the mark must actually defraud anyone; the use must be reasonably calculated to cause any person to believe that the goods so marked or any goods contained in any such receptacle were of a nature or quality different from their real nature".
13. In view of the above observations of the Privy Council itself, the contention raised by the petitioner that the Court is unable to answer the question by comparing similarities in the absence of any evidence led of a person who is defrauded cannot be accepted.
14. The learned Advocate for the petitioner then contended that he has openly sold Exhibit 'C' bottles to the whole-sale dealers. This contention has been taken in the written statement. No evidence has been led by the petitioner in support of his own case that he was openly selling exhibit 'C' bottles-the offending mark to the whole-sale dealers and, therefore, there is no element of deception. In the absence of any evidence led by the petitioner it cannot be accepted as proved that the petitioner could rely merely on the statement in defence to establish his innocence.
15. Both the courts have considered the similarity of the words and lines of the marks and phonestics involved in the marks used by the complainant-company and the petitioner. I have myself seen the bottles which where produced before me and after looking to those bottles I am not persuaded to hold that the marks are not dissimilar.
16. There is another circumstance which is disclosed by the record. The petitioner has referred in his memo of petition in paragraph 4 to his 115 application saying that he has made an application to the Registrar of Trade Marks on 18th March, 1976. This application must have been presented by the petitioner on the basis that he is the owner i.e. the proprietor of the alleged mark which he is using on his bottles and he wanted this mark to be registered by the concerned authorities. It is also suggested there that it was also accepted for necessary publication. However, it appears from the record that this application remained pending till 21st January, 1981. The learned Advocate for the respondent has presented before me to-day a copy of the order passed by the authorities on this application. It appears that this application was opposed by the respondent-company and finally the application for registration presented by the petitioner stood withdrawn on 21st January, 1981. Although it is not pertinent to use these things in support of the conclusion of the courts below but it does indicate that the petitioner was unable to get his own mark registered in view of the opposition of the present-respondent-company. We are dealing with the statutory provisions of sections 78 and 79 of the Act of 1958. Relevant provisions of the Act to the extent, which are necessary, are as follows :---
"78. Any person who---
(a) falsifies any trade mark: or
(b) ........ ......... ..........
(g) ........ .......... ..........
........ ........... .........
shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term which may extend to two years, or with fine, or with both;"
"79. Any person who sells, or exposes for sale, or has in his possession for sale or for any purpose of trade or manufacture, any goods or things to which any false trade mark or false trade description is applied or which, being required under section 117 to have applied to them an indication of the name and address of the manufacturer or the person for whom the goods are manufactured, are without the indication so required, shall unless he proves :
(a) ........ .......... ..............
(b) ....... .......... ............
(c) ......... .......... ............
be punishable with imprisonment for a term which may extend to two years, or with fine, or with both."
From the reading of the above sections, section 78 relates to the making of false marks and section 79 relates to the sale, expose or possession of the offending marks. Section 78 itself prescribes that unless any person proves that he acted without intent to defraud, he, who, falsifies any trade mark, shall be punishable. In this case, it must be stated that the petitioner has not led any evidence to show that he acted without intent to defraud.
17. The learned Advocate for the petitioner then contended that the provisions of section 77 show that there must be some deceptivity involved in the marks. It is only on the basis of the deceptivity that the falsification of the mark can be made. The falsification relates to making of deceptive mark. The definition of "deceptively similar" is given in section 2(d) of the Trade and Merchandise Marks Act, 1958, which reads as under :
"2(d). "deceptively similar :---
A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion."
The words "to deceive or cause confusion" used in the definition are important. Relying on the word to deceive used in the said definition it was contended by the learned advocate for the petitioner that unless the mens rea is proved it is impossible to convict any person, who is an accused of the commission of offences under sections 78 and 79 of the Act. I am afraid that this contention is not correct. The word 'to deceive' used in section 2(d) cannot be separated from its context. In the matter of statutory offences, an application of principle of mens rea is subjected to the qualification prescribed by the statute itself. Inasmuch as section 78 which is penal section in this statute provides that the petitioner or any person in such circumstances, who is charged with the offence under this Act is required to prove his innocence or absence of intent to defraud. It is not possible to say that the principle of mens rea can be attracted to these provisions. If an authority is required for this proposition, I may refer to the judgment reported in State of Maharashtra v. Mayer Hans George, . This was a prosecution under the Foreign Exchange Regulation Act, 1947, and the Supreme Court had an occasion to consider the application of the principle of mens rea to the statutory offences committed under that Act. It was held that :
"Mens rea is the sense of actual knowledge that act done is contrary to law is not an essential ingredient" of the offence under section 8(1) read with section 23(1-A) of the Foreign Exchange Regulation Act, 1947."
18. In addition to it, for any offences under the statutory Acts the principle of mens rea cannot be applied with the same rigor. The statutory offences will have to be determined in the circumstances and conditions prescribed by the statute. In this case, the petitioner has failed to give any defence as provided by the statute. In addition, on the factual circumstances he has failed to prove his case that the counter mark used by him not similar to the one which was used by the complainant-company.
19. Both the courts below on appreciation of evidence found that the petitioner is guilty of the offence with which he was charged. In exercising revisional powers of this Court, no other point of law was argued before me. The learned advocate for the petitioner attempted to rely on the factual comparison of the various points, which were already dealt with by the courts below. I was not impressed by the points of distinction made to show that the product used by the petitioner is not similar to the one which used by the complainant-company. With fear of repetition, I have myself observed above that the two bottles Exhibits 'B' and 'C' are likely to create confusion in the mind of ordinary customers.
20. In this view of the matter, I do not think that any interference is called for in the orders passed by the courts below.
21. In the result, the rule is discharged and the conviction and sentence is confirmed. If the fine is not paid, the petitioner is allowed to pay the same within two weeks.