The State of Uttar Pradesh v. Hafiz Mohammad Ismail and Hafiz Jawed Ali
N uruddin Ahmad and N aunit Lal, for the respon ·
dents.
1960 February, 9. The Judgment of the Court
<
was delivered by ,..
Wanchoo J. W ANCHOO, J.-These are two connected appeals by
special leave againt the judgment of the Allahabad c
High Court. The brief fa<>ts necessary for their
disposal are these. Oue Bhagwan Swarup Saxena,
the Trade Marks Investigator, Lever Brothers Limited
India (hereinafter called the company) was working in
Lucknow on behalf of the company. He came to
know that counterfeit Sunlight and Lifebuoy soaps
were being manufactured and sold on a large scale in
Y ahiaganj and other places in Lucknow. This was
investigated on behalf of the company which manu
factured genuine Sunlight and Lifebuoy soaps. It
was found that two soap factories in Lucknow were
manufacturing ,counterfeit Sunlight and Lifebuoy
soaps. It was also found that l!a.fiz Mohammad •
..
.•
S.C.R. SUPREME COURT REPORTS. 913
Ismail and Hafiz Jawed Ali who are the respondents r96o
in the two appeals before us were selling these counter-
feit soaps in Yahiaganj where they have shops. StateofU.P.
Consequently a raid was made on the two shops with H ifi r..;·h a.
the help of the police on May 19, 1953. A large ;,,;ail:;:,;;
number of soaps were recovered from the two shops Jawed Ali
which were wrapped in labels said to be counterfeits
of those in which the genuine Sunlight and Lifebuoy Wanchoo .f.
soaps of the company are sold. Consequently the two
respondents were prosecuted under ss. 482 and 486 of
the Indian Penal Code.
The Magistrate found the case proved and held that
the labels in which the respondents were selling soaps
were counterfeit of the labels of genuine Sunlight and
Lifebuoy soaps. He, therefore, convicted the respon
d.ents under ss. 482 and 486 of the Code. The respon
dents went in appeal to the Sessiom; Judge but their
appeals were dismissed. They then went in revision
to the High Court. The High Court held that the
cases did not fall within s. 482 of the Indian Penal
Code and therefore acquitted them of the charge
under that section. It further held that the labels or
wrappers used on the soaps sold by ~he respondents
could not be regarded as counterfeit of the genuine
wrappers and labels of Sunlight and Lifebuoy soaps
though they were colourable imitations of the same;
it therefore acquitted them under s 486 also, without
going into the other points raised on behalf of the
respondents. The applications of the State of Uttar
Pradesh for a certificate to appeal to this Court
having been rejected, the State applied for leave to
appeal to this Court which was granted; and that is
how the matter has come up before us.
The learned Additional Solicitor General appearing
for the State has not pressed the appeals so far as the
acquittal under s. 482 of the Code is concerned. The
acquitt.al therefore under that section will stand. He
has, however, strenuously urged that the view of t.he
High Court that the wrappers and labels are not
counterfeit but are mere colourable imitations of the
genuine trade marks of the company is incorrect inas
mqch as the High Court has not given full effect to the
r960
State of U. P.
v.
Hafiz .11.f ohamnied
Ismail & fl afi z
Jawed Ali
Wanchoo ].
914 SUPREME COURT REPOl'tTS [l!l60 (2)]
words of s. 486 in that behalf and the definition of
' counterfeit' in s. 28 of the Indian Penal Code.
Section 28 is in these terms-
" A person is said to 'counterfeit ' who causes one
thing· to resemble another thing, intending by means
of that resemblance to practise deception or knowing
it to be likely that deception will thereby be
practised. . ·
Explanation 1.-It is not essential to counter
feiting that the imitation should he exact.
Explanation 2.-When a person causes one thing
to resemble another thing, and the resemblance is
such that a person might be deceived thereby, it
shall be presumed, until the contrary is proved,
that the person so causing the one thing to resemble
the other thing intended by means of that resembl
ance to practise deception or knew it to be likely
that deception would thereby be practised."
The relevant part of s. 486 is in these terms-
" Whoever sells, or exposes, or has in possession
for sale or any purpose of trade or manufacture any
goods or things with a counterfeit trade mark or
property mark affixed to or impressed upon the
same or to or upon any case, package or other
receptacle in which such goods are contained, shall,
unless he proves-
( a) ....... ········································ ............... .
(b) .................•....•........................•..........•......
(c) .............................................................. .
be punished with imprisonment of either description
for a term which may extend to one year or with
fine or with both."
The contention on behalf of the appellants is that the
High Court in holding that the labels and wrappers
in this case were only coloura hie imitations of the
genuine trade mark labels and wrappers of the
company and were not counterfeit has not taken into
account the words of s. 28 and particularly of the two
Explanations thereof. It is pointed out that the words
"colourable imitation" do not appear ins. 28 which
defines the word "counterfeit " and t)J.e High Court
seems to have misdirected itself by treating the
wrappers and labels in this case as colourable
-
-·
..
(
S.C.R. SUPREME COURT REPORTS 915
imitations and not counterfeit within the meaning
of s. 28.
The main ingredients of counterfeiting as laid down
in s. 28 are (i) causing one thing to resemble another
thing, and (ii) intending by means of that r:esem
blance to practise deception or (iii) knowing it to be
likely that deception will thereby be practised. Thus
if one thing is made to resemble another thing and
the intention is that by such resemblance deception
would be practised or even if there is no intention
but it is known to be likely that the resemblance is
such that deception will thereby be practised there is
counterfeiting. Then comes Explanation 1 to s. 28 which
lays down that it is not essential to counterfeiting
that the imitation should be exact. Ordinarily
counterfeiting implies the idea of an exact imitation;
but for the purpose of the Indian P'enal Code there
can be counterfeiting even though the imitation is not
exact and there are differences in detail between the
original and the imitation so long as the resemblance
is so close that deception may thereby be practised.
Then comes the second Explanation which lays down
that where the resemblance is such that a person
might be deceived thereby it shall be presumed until
the contrary is proved that the person causing one
thing to resemble another thing was intending by
means of that resemblance to practise deception or
knew it to be likely that deception would thereby be
practised. This Jl}.rplanation lays down a rebuttable
presumption where the resemblance is such that .a
person might be deceived thereby. In such a case
the intention or the knowledge is presumed unless the
contrary is proved.
This analysis of s. 28 shows that there is no neces
sity of. importing words like ' colourable imitation '
therein. In order to apply it, what the Court bas to
see is whether one thing is made to resemble another
thing, and if that is so and if the resemblance is such
that a person might be deceived by it there will be a
presumption of the necessary intention or knowledge
to make the thing counterfeit, unless the contrary is
11roved. What the court therefore has to see is
whether one thing has been made to resemble another
1960
State of U. P.
v.
Hafiz Mohamed
Ismail & H afii
jawed Ali
Wanchoo .f.
916 SUPREME COURT REPORTS [1960(2)]
1960 thing. If it finds that in fact one thing has been
ma.de to resemble another it has further to decide
State of u. P. whether the resemblance is such that a person might
Hafiz !>;~hammed be deceived. If it comes to the conclusion that the
fonail &- HafiZ resemblance is such that a person might be deceived
Jawed Ati by it, it can presume the necessary intenion or know
ledge (until the contrary is proved) and counterfeiting
Wanchoo J. would then be complete. Therefore the two things
that were necessary to decide in this case were (i)
whether the labels or wrappers on the soaps sold by
the respondents were made to resemble the labels and
wrappers of the genuine Sunlight and Lifebuoy soaps,
and (ii) if they were so made to resemble, whether
resemblance was such as might deceive a person. If
both these things were found the labels and wrappers
in this case would be counterfeit and the necessary
intention or knowledge would be presumed unless the
contrary was proved.
Now the Magistrate as well as the Sessions Judge
examined the wrappers and labels in this case and
compared them with the genuine labels and wrappers
of the Sunlight and Lifebuoy soaps of the company
and came to the conclusion that there was resem
blance between the two sets of wrappers and labels
and that that resemblance was so close that a person
might be deceived. On that finding, they held that
these wrappers and labels were counterfeit because
the contrary was not proved before them. The High
Court does not say that there is no resemblance
between the two sets of wrappers and labels. The
very fact that the High Court says that the wrappers
and labels found in this case were colourable imita
tions of the genuine wrappers and labels shows that
there was resemblance. The High Court however has
stressed the difference in detail between the two sets
of wrappers and labels but seems to have overlooked
Explanation 1 of s. 28 which says that it is not
essential to counterfeiting that the imitation should
be exact, even though the Explanation is quoted in
the judgment of the High Court. What the High
Court had to decide was whether oven with these
differences in detail which had also. been noticed by
the Magistrate and the Sessions Judge a person· might
1
S.C.R. SUPREME COURT REPORTS 917
be deceived by these wrappers and labels recoverd
from the respondents' shops. This aspect of the matter
has not been considered by the High Court at all and it
has contented itself by saying that the wrappers and
labels recovered in this case were colourable imita
tions of the genuine trade marks. That in our opinion
does not dispose of the matter so far as s. 28 is ·
concerned. The High Court should have found
whether the resemblance in this case was such as
might deceive a person. The High Court had before
it the opinions of the Magistrate and the Sessions
Judge. Their opinion was to the effect that the
resemblance was such as might deceive a person and
that the differences in detail did not affect that
resemblance. It was this aspect of the matter which
the High Court failed to consider when it went on to
hold that the labels a·nd wrappers recovered along
with the soaps from the shops of the respondents
were not counterfeit. We have looked at the labels
and wrappers on the soaps recovered from the shops
of the respondents ourselves and compared them with
the labels and wrappers of the genuine Sunlight and
Lifebuoy soaps and we agree with the opinions of the
Magistrate and the. Sessions Judge that the resem
blance is such that a person may be deceived by it.
In the circumstances, Explanation 2 to s. 28 will apply
and as the contrary was not proved it must be hPld
that the necessary intention or knowledge was there
and these wrappers and labels arc counterfeit of the
genuine wrappers and labels of the Sunlight and
Lifebuoy soaps of the company.
The appeals must therefore be allowed; but as the
High Court did not consider the points relating to
jurisdiction and limitation and whether the respon
dents were protected under cl. (a) and cl. (b) or (c) of
s. 486, they will have to be remanded to the High
Court for disposal ac0ording to law on these points.
We therefore allow the appeals and setting aside the
acquittal Of the respondents under s. 486 of the
Indian Penal Code only send the cases back to the
High Court
0
for disposal on the lines indicated above.
Appeals allowed.
Oases remanded,
I960
State of U. P.
v.
Hafiz Mohamed
Ismail &- H aftz
Jawed Alt
Wanchoo ].