GULFAM EXPORTERS v. SAYED HAMID — 1999 DIGILAW 693 (BOM)

JUDGMENT S. S. PARKAR, J. - This petition has been filed by the petitioners who are accused of having committed offences under section 63 of the Indian Copyright Act, Sections 78 and 79 of the Trade and Merchandise Marks Act and Sections 420 and 483 of the Indian Penal Code in Criminal Case No.465 I & R/4(S) 92 of 1991 pending in the Court of Additional Metropolitan Magistrate's 37th Court, Esplanade, Bombay. 2. Initially, the respondent No.1 had filed a private complaint in the Magistrate's Court on 21st August, 1991 for the aforesaid offences against M/s. Gulfam Exporters and other unknown persons, a copy whereof is annexed as Exhibit "A" to the petition. Pursuant to the said complaint the learned Metropolitan Magistrate had directed enquiry in the matter under section 202 of Cr.P.C. Pursuant to the said order the police enquiry was held and the police report dated 21-10-1991 was filed, a copy whereof is annexed as Exhibit "E" to the petition. After the police report the complainant filed another elaborate complaint against the petitioners in the same Court on 4-11-1991, a copy whereof is annexed as Exhibit "F" to the petition. After perusing the said complaint, the earlier complaint and the police report, the learned Additional Metropolitan Magistrate had issued process against the petitioners-accused by his order dated 7-1-1992. The petitioners seek quashing of the said order issuing process by the trial Court. It may be mentioned here that on earlier occasion the petitioners had filed Writ Petition No.2224/91 challenging the earlier complaint and alternatively praying for quashing the order passed by the trial Court in the earlier complaint for seizure of instruments, documents, goods etc. which was disposed of on 25-9-1991, with which we are not concerned in this petition. 3. Although this petition is filed in the year 1992 and rule was issued on 19-10-1992 no reply affidavit has been filed in this petition. This petition has been placed for hearing since November, 1998 and was adjourned from time to time. However, no reply affidavit was filed nor anybody appears in the matter on behalf of respondent No.1 complainant. Before this Court, the matter was called out on 27-8-1999 and 3-9-1999 and also on 17-9-1999 as it was high on board, yet no one had appeared on behalf of the respondent No.1 complainant. However, no reply affidavit was filed nor anybody appears in the matter on behalf of respondent No.1 complainant. Before this Court, the matter was called out on 27-8-1999 and 3-9-1999 and also on 17-9-1999 as it was high on board, yet no one had appeared on behalf of the respondent No.1 complainant. Today also when the matter was called out and kept back, no one appeared on behalf of the respondent No.1 though the appearance is filed on behalf of the respondent No.1. I, therefore, had no option but to hear the petitioner's counsel at length and dispose of the matter. 4. Mr. Desai the learned counsel appearing on behalf of the petitioners raised number of contentions. Firstly, he contended that no prima facie case has been made out to prosecute the petitioners for the aforesaid offences. Secondly he contended that since there is no registration either under the provisions of the Copyright Act, 1957 or the Trade and Merchandise Marks Act, 1958 the prosecution for the offences under the said Acts i.e., Section 63 of the former Act and Sections 78 and 79 of the latter Act would not lie. Thirdly he contended that there was no mens rea or knowledge for prosecuting the petitioners as contemplated under section 63 of the Copyright Act, 1957. Fourthly he contended that the offences under the provisions of I.P.C. i.e., cheating and another are not made out from the complaint as the complaint does not make out case for those offences. Fifthly he contended that since the civil proceedings are pending between the parties at the instance of the respondent No.1 complainant the criminal complaint should not be allowed to be continued particularly when the complainant has obtained injunction from the Civil Court against the petitioners. Lastly he contended that the Magistrate's Court in Bombay has got no jurisdiction as the goods were seized in Kalamboli. He also points out that civil litigation under the Copyright Act was filed in Raigad District Court at Alibaug. 5. So far as the first contention of Mr. Desai is concerned it cannot be said that the complaint does not make out a prima facie case under the Copyright Act or Trade and Merchandise Marks Act. The complaint does speak about the knowledge on the part of the petitioners about the use of the trade mark by the complainant. 5. So far as the first contention of Mr. Desai is concerned it cannot be said that the complaint does not make out a prima facie case under the Copyright Act or Trade and Merchandise Marks Act. The complaint does speak about the knowledge on the part of the petitioners about the use of the trade mark by the complainant. The complaint does speak about the knowledge of the petitioners in respect of the Copyright of the complainant. If the particulars are not given in the complaint, as to how the petitioners could be said to have knowledge of the use of copyright by the complainant the same can be proved at the time of trial. There are also averments in the complaint that the complainant had been using the trade mark from the year 1979 and had made application for the registration of the trade mark in the year 1985. The particulars in respect thereof could be furnished at the time of trial by leading evidence in that behalf. 6. The second contention raised on behalf of the petitioners is that the offence under section 63 of the Copyright Act and Sections 78 and 79 of the Trade and Merchandise Marks Act would not lie unless and until copyright and the trade mark was registered in favour of the complainant. It is no doubt true that there is no averment in the complaint that the copyright or trade mark was registered in favour of the complainant and the petitioners have in the petition averred that it is not registered. No reply affidavit is filed asserting that the registration was made under either one or both the enactments in favour of the complainant. Mr. Desai relied on the decision of the Orissa High Court in the case of Brundaban Sahu v. B. Rajendra Subudhi (AIR 1986 Orissa 210), in which a Single Judge of that High Court had taken the view that unless and until the copyright is registered with the Registrar of Copyrights in accordance with the provisions of the Copyright Act, no prosecution can be lodged for alleged offence under section 63 of the Copyright Act in that respect. It is observed in para 3 of the judgment as follows: "..... It is observed in para 3 of the judgment as follows: "..... One would, therefore, to have the copyright in any work must make out an application and get the same registered with the Registrar of Copyrights in accordance with the provisions of Chapter X of the Act." In order to prosecute the petitioners for the offence under section 63 of the Act the complainant must have the copyright registered in his name. Similarly, as regards the offences under sections 78 and 79 of the Trade and Merchandise Marks Act are concerned it has been held in para 4 of the judgment as follows: "..... The complainant who complains of infringement of his trade mark in respect of any article by somebody else must first establish that he has a registered trade mark with the Registrar of the Trade Marks." 7. In this case the police report dated 21-10-1991 annexed as Exhibit "E" to the petition only states that the application had been filed by the complainant for registration of the trade mark in the year 1985. Similarly, in respect of copyright case it is reported that complainant made claim for the copyright. As observed earlier the complaint does not aver that the complainant had got the trade mark or the copyright registered in his favour. 8. Mr. Desai had even gone to the extent of contending that there is no similarity between the trade marks used by the complainant and the petitioners. At page 34 of the petition-paper book is the copy of trade mark used by the complainant while at page 35 is the copy of the trade mark which is used by the petitioners. Looking at the two trade marks used by the petitioners and the complainant, in my view, it is quite obvious that there is lot of similarity between the two and, therefore, it cannot be said that the trade mark used by the petitioners is not deceptive. Looking at the two trade marks used by the petitioners and the complainant, in my view, it is quite obvious that there is lot of similarity between the two and, therefore, it cannot be said that the trade mark used by the petitioners is not deceptive. However, as neither trade mark nor copyright is registered in favour of the complainant and particularly when the application was made in that behalf by the petitioners also in the year 1988, in my view, the criminal proceedings may not lie for the alleged contravention of the provisions of the above two Acts when the complaint also came to be filed as late as in August, 1991 which was followed by civil suit filed in the District Court on 12-11-1991. Apart from that I am inclined to agree with the view taken by the Orissa High Court in Brundaban Sahu's case (supra). In view of the factual matrix which has been briefly narrated hereinabove I do not think that criminal case should be allowed to go on. 9. Mr. Desai had cited a decision of the Division Bench of the Calcutta High Court in the case of Ashutosh Das v. Keshab Chandra Ghosh (AIR 1936 Cal. 488)., where the prosecution was lodged in respect of the trade marks and it was held that Criminal Court should try dispute in simple and clear-cut cases and not in complicated matters of registration, abandonment of user and so on which dispute should be decided in a Civil Court. Secondly, Mr. Desai cited a decision of the Division Bench of the Assam High Court in the case of Hiralal Patni v. Chowthmal Sharma (AIR 1950 (37) Assam 202). In that case the Division Bench took the view in para 2 of the judgment that parties should not be encouraged to resort to the Criminal Courts in cases in which the points at issue between them are such that they can more appropriately be decided by a Civil Court. 10. In this case also complicated question of facts would arise in view of the fact that the complainant had applied for registration in the year 1985 so also the petitioners, though subsequently, in the year 1988. According to the petitioners they are in export business and almost have no indigenous business while the complainant has only indigenous business and no export business. According to the petitioners they are in export business and almost have no indigenous business while the complainant has only indigenous business and no export business. The complainant is dealing in smoking tobacco while the petitioners are dealing in tobacco paste. The complainant had already gone to the Civil Court and the matter is pending at appellate stage in this Court. The interim order of injunction was already running against the petitioners when the matter was in the trial Court and the suit was already decided in favour of the complainant in the Civil Court and the petitioners are still debarred from using the disputed trade mark. 11. So far as the offences under I.P.C. are concerned they are incidental to the offences which are lodged under the provisions of the Copyright Act and the Trade and Merchandise Marks Act. When the litigation is already pending in the Civil Court it is not expedient or desirable to allow the criminal matter to continue where the standard of proof is altogether different. There is some substance in the contention raised on behalf of the petitioners that when the goods were seized from Kalamboli within the jurisdiction of Alibag District Court, the Magistrate's Court in Bombay will have no jurisdiction to try the aforesaid offences. Para 12 of the complaint dated 4th November, 1991 mentions that the goods of the petitioners were seized from shed in Kalamboli which is not within the local jurisdiction of the Magistrate's Court in Bombay. Therefore, there is doubt about the jurisdiction of the Magistrate's Court in Bombay. Even the police report mentions that the goods were seized at Kalamboli. 12. In the context of the aforesaid facts I am of the view that, it would be in the interest of justice, that the complaint should be quashed and set aside. The rights of the parties shall be decided in the civil suit which was adopted by the complainant and as stated by Mr. Desai, civil suit has resulted in favour of the complainant in the trial Court. The aforesaid complaint is beset with several complicated questions and much of the controversy would have been avoided if the registering authority had not delayed indefinitely to register the copyright and trade marks. I am told by Mr. Desai, civil suit has resulted in favour of the complainant in the trial Court. The aforesaid complaint is beset with several complicated questions and much of the controversy would have been avoided if the registering authority had not delayed indefinitely to register the copyright and trade marks. I am told by Mr. Desai across the bar, on instructions, that though the complainant's application is of the year 1985 and the petitioners' application is of the year 1988, none of the applications has been registered under the provisions of any of the above two Acts. It is amazing that the applications are kept pending for several years which open avenues for litigations of the kind which is witnessed in this case. There is no doubt that none of the applications were disposed of at the time when the present complaint was filed in the year 1991 as indicated in the police report. As a result of the cumulative effect of all that has been observed in the foregoing paragraphs I am of the view that this is a fit case to exercise inherent jurisdiction of this Court to quash the impugned complaint. 13. In the result this petition is allowed and rule is made absolute in terms of prayer Clause (a) of the petition. 14. On the application of Mr. Desai Certified copy is expedited. Petition allowed.