104-NLR-NLR-V-39-ABDUL-AZIZ-v.-MOHAMED-BUHARY.pdf
364
Abdul Aziz v. Mohamed Buhary.
1937Present: Abrahams C.J.
ABDUL AZIZ v. MOHAMED BUHARY:
447—P. C. Colombo, 4,593.
Trade Marks Ordinance, No. 15 of 1925—Registration of silver medals—Device ofpagoda and Panchayuda—Sale of medals with similar device—Noinfringement of trade mark—Ordinance No. 13 of 1888, ss. 3 and 4.
Where a person registered under the Trade Marks Ordinance a trademark in respect of silver medals,, consisting of two spade-shaped shieldsoh one of which was displayed the device of a pagoda and on the othera swastika and five weapons known as Panchayuda.
Held, that the sale of medals with the device of a dagoba on one sideand the Panchayuda on the other did not constitute an infringement ofthe trade mark as the device was not used qua trade mark but as partof the medals.
A trade mark registered in respect of silver medals does not extend tomedals made of any other metal.
^J^PPEAL from a conviction by the Police Magistrate of Colombo.
On March 31, 1928, Sheik Dawood of Colombo registered a trade markfor fourteen years. The trade mark consisted of two spade-shaped shields.In the centre of one shield was depicted a pagoda and on the other aswastika and five weapons. For a number of years Sheik Dawood solda number of medals called .panchayuda with the pagoda on one side, and alarge number of medals with the substitution of a dagoba instead of thepagoda. It was alleged against the accused that for some years he wasin the habit of purchasing Sheik Dawood’s medals, but in October, 1936,he ceased to buy them.and shortly afterwards began to sell medals whichwere almost an exact replica of the panchayuda with the dagoba. Thesemedals were made of brass and they were faced with some metallicsubstance which gave them a silrery appearance.
H. V.. Perera, K.C. (with him Renganathan), for accused, appellant,—The prosecution is based on a misconception of the meaning of a trademark. The proprietor of a registered trade mark has a right to preventothers from using the mark qua trade mark and not otherwise (Farina v.Silverlock*). A person might register a design of a clock as the trademark of his manufacture of clocks, but this does not entitle him toprevent the sale of clocks by another man. The- accused sold some
1 11856) 6 DeG. H. A 0.214(1).
365
Abdul Aziz v. Mohamed Buhary.
medals with the same symbols which are marks of good luck.The value of the medals lies in the symbols. Merely because the symbolshad been registered, the complainant cannot have a monopoly of the trade.
Section 4 of the Merchandise Marks Ordinance, 1888, gives the definitionof goods. Section 0 deals with the manner in which an application shouldbe made. The goods must exist independent of the trade mark. Thetrade mark must not be the goods themselves (Narumal Khemchand v.The Bombay Company, Ltd.', James v. Parry *).
What was registered is different from the design used. Probably hecould not register the dagoba. The accused had used the design but notthe trade mark.
The registration was with respect to silver medals and not for onesmade with base metals (Jay v. Ladler *).
There must be evidence that the people were deceived (Kerly on TradeMarks (5th ed.), pp. 563-564).
Hayley K.C. (with him Choksy), for complainant, respondent.—Powellv. The Birmingham. Vinegar Brewery Company, Ltd.1, deals with the“ passing off ” of goods.
[Abrahams C.J.—Could not the defence of the accused be that thecomplainant is using his design .?]
There is the registration. The accused denied that he had those medals.The whole of his conduct was suspicious. The complainant had his trademark registered under the Trade Marks Ordinance, 15 of 1925.
| AbRahams C.J.—How was the trade mark described ?]
There was no obligation to describe the trade mark. The complainanthad vised the pagoda and the dagoba. It is immaterial what it was, asthe question is whether the accused had infringed the complainant’smark.
Forging a trade mark is defined in section 5 (a) of the Ordinance, and theaccused is charged under section 3 (1) (b). Under these sections it isimmaterial whether the complainant sold any medals or not. It isenough if the accused is shown to have made use of it in such a way ascalculated to deceive the public. The registration takes the place ofpublic user. A person may make use of a portion of the trade mark.That only lessens the protection. The Merchandise Marks Ordinance.1888, must be read with the Trade Marks Ordinance, No. 15 of 1925.The section 39 et. seq. of the latter Ordinance relates to the effect ofregistration (Kerly on Trade Marks p. 493). No authority has beenquoted that the whole of the trade mark must be in one plane. Thereis nothing to prevent the complainant putting one on each side.. Theowner can vary it.
There is no registration of trade marks, in India and, therefore, theIndian cases will not help the Court.
It is immaterial whether the medals were sold because of the design ornot. It is legitimate to put his mark on the whole thing. He may havethe emblem without the swastika. This medal has all the requisitesnecessary under the Trade Marks Ordinance.
1 {.1914) 15 The Criminal Law Journal of3 (1888) 6 Pat. cas. 135.
India, 670 ; A. 1. R. (1914) Sind. 109.* (1897) 14 Pat. cos. 720 at 730.
3 (1885) 3 Pat. cas. 340.
366ABRAHAMS C.J.—Abdul Aziz v. Mohamed Buhary.
[Abrahams C.J.—A photograph may be attached to a box of chocolates,but yet anyone can sell the photograph without the chocolates.]
The shape has nothing to do in that case. If there was a medal of thesize of a five-shilling piece, the public may demand it because of the trademark and use it as a charm (Young v. Cook').
The accused has deceived not only as regards the trade mark, but withregard to the material as well.
The whole of the passing off is a question of fact (Reddaway v. Bonham’;Potoell v. The Birmingham Vinegar Brewery Company, Ltd..").
This penal Ordinance is mainly for the protection of the public and notfor the protection of a few traders.
[Abrahams C.J.—You cannot-contend about the silver.]
On the technical side I cannot.
H V. Perera, K.C. in reply.—The area covered by the civil action andthat by the criminal action of passing off is not the same. The criminalaction does not deal with the get up.
The application for the registration must refer to the goods. Considerthe Monkey Brand case. The trade mark must be independent of thegoods. It is not certain whether there is any legislation in India withregard to the registration of trade marks.
In India the civil law of trade is well developed and an application fora trade mark is immaterial. The word panchayuda relates to the charmitself.
The shape is characteristic of the thing itself. It is not somethingapplied to it. A piece of metal will not have a sale at all. The marketand the saleability depends on the design only.
In the case of. the Valentine Meat Juice case the namei became asso-ciated with the. manufacture itself. Hence if anyone bought it, hewas believed to have bought the one manufactured by that company.(Whitstable Oyster Fishery Company v. Hayling Fisheries Ltd. and GeorgeTabor i; Felt. v. Christopher Thomas and Brothers Ltd.’).
Cur. adv. vult.
October 8, 1937. Abrahams C.J.—
This case has led to a very interesting argument in trade mark law andhas been very ably presented, as one would expect, by both°the learnedCounsel engaged. The appellant was charged in the Police Court ofColombo as follows :—
(a) with falsely applying to goods a mark so nearly resembling TradeMark No. 4,236 as to be calculated ,to deceive and therebycommitting an offence against section 3 (1) (b) punishable undersection 3 (3) of Ordinance No. 13 of 1888 ; or alternatively withcausing to be applied to goods a mark so nearly resembling thesaid trade mark as to be calculated to deceive and therebycommitting an offence against section 3 (1) (b) read with (/)punishable under section 3 (3) of the said Ordinance ;
’(IS/7) 47 L. J. M. C. 28.* (1897) 14 Pat. ecu. 720 at 727.
(1896) 13 Pat. cos. 218 at 224.* (1901) 18 Pat. caa. 434 at 445.
5 (1903) 21 Pat. cos. 85.
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ABRAHAMS C.J.—Abdul Aziz v. Mohamed Buhary.
(b) with applying a false trade description to goods and thereby com-mitting an offence against section 3(1) (d) read with section 4 (2)punishable under section 3 (3) of the said Ordinance ; or alterna-tively with causing to be applied to goods a false tradedescription and thereby committing an offence against section3 (1) (d) and (/) read with section 4 (2) punishable under section3 (3) thereof;
(c; with selling or exposing for sale or having in his possession for salegoods to which a false trade description was applied ; or alterna-tively to which a mark so nearly resembling Trade MarkNo. 4,236 as to be calculated to deceive was applied and therebycommitting an offence against section 3 (2) of the said Ordinancepunishable under section 3 (3) thereof.
He was convicted on the first count alternatively, on the second countalternatively, and on count three and was fined Rs. 50 on each count {i.e.,Rs. 150 in the aggregate) or in default six weeks’ rigorous imprisonment.
The facts which led to his prosecution are as follows:—:On March31,1928 one Sheik Dawood of Colombo registered a trade mark for fourteenyears. The certificate of registration shows that the trade mark consistedof two spade-shaped shields about one inch long by three quarters of aninch broad, side by side. In the centre of the left hand shield is perma-nently portrayed a pagoda, and on the other shield is portrayed so as tooccupy a considerable portion of its surface a swastika and five weapons.It was given in evidence that the swastika and the five weapons hadassociations sacred to members of the Buddhist faith. The trade markwas stated to be registered in respect of silver medals. It seems ratherremarkable that a trade mark which is intended merely to designate thatthe goods to-which it is attached are the goods produced of a particularmanufacturer or owned by a dealer should, in this case, consist of sucha large number of elaborately arranged objects, and that, in the wordsof a witness from the Registrar-General’s Office, both faces of the medalshould be registered, and it seems to me to be obvious from the outsetthat these pecularities had a bearing on the intentions of the manufac-turer when he registered the mark. For a number of years Sheik Dawoodsold a large number of medals with the pagoda on one side and theswastika and five weapons on the other, and a large number of medalsthe same as these but for the substitution of a .dagoba for the pagoda.Some of the medals were made of silver, some others of what is describedin the evidence but not explained as alpaca silver. It was given inevidence by Sheik Dawood’s attorney and manager Abdul Azeez thatmostly Sinhalese Buddhists buy the medals, and that they -buy them -fortheir children, and that they are sold as “ Panchauda ”, that is to say,five weapons. It was given in evidence by a vedarala that by itself theswastika is the sign of luck among Buddhists, and that the “Panchauda”has some curative effect where medicines fail. I think then it is manifestthat the demand for these 'medals, which, according to Abdul Azeez weresold at 60 cents for the silver specimens and 25 cents for the alpacasilver specimens, were for their use mainly as charms though they mayhave had a certain ornamental quality which possibly made themattractive.
368 ABRAHAMS C.J.—Abdul Aziz v. Mohamed Buhary.
It was alleged against the appellant that for some years he was in thehabit of purchasing Sheik Dawood’s medals, but in October, 1936, heceased to buy them and shortly afterwards began to sell medals whichwere almost an exact replica of the “ Panchauda ” and dagoba sidedmedals which he had hitherto purchased from the complainant. Thesemedals were made of brass and they were faced with some metallicsubstance which gave them a silvery appearance.
Now, dealing with the first charge a point has been raised by theappellant, which is immediately fatal to the conviction on that count. Itis pointed out that the trade mark is registered in respect of silver medalsonly and therefore cannot extend to medals made of any other metal,precious or base. Thiis point was raised in the Police Magistrate’s Court,but the learned Police Magistrate waived it aside denouncing it as anextremely technical defence which, in his opinion, should not be seriouslyconsidered. It is, of course, extremely technical, but why the learnedMagistrate disposes of it in that summary way I do not understand.He ought to have appreciated that the application of Sheik Dawoodmeant what it said and that he did not use the expression “ medals ”simpliciter or “ medals of every metal ” as he might have done. LearnedCounsel for the respondent admits quite freely that unless silver can beextended tO' mean brass silvered over (and he does not suggest that it can)the appellant is entitled to succeed on that ground.
There is, however, a further ground upon which it is argued by theappellant that he is entitled to an acquittal not only in respect of thiscount but in respect of the others as well. He claims that he did not usethe complainant’s trade mark as a trade mark but that the device whichwas engraved upon the medals became part of the goods and was notengraved as a trade mark, that is to say, as a mark attached, or to usethe words of the Ordinance “ applied to. the goods ” (i.e., the mere plainmetal tablet) to indicate that the goods were those produced by aparticular manufacturer in distinction to similar wares produced byother firms.
Now section 3 (1) (b) of the Merchandise Marks Ordinance penalizes anyperson who falsely applies to goods any trade mark or any mark so nearlyresembling a trade mark as to be calculated to deceive, and it seems to me,on analysis, to mean this, that a. person applies to goods the trade mark ofanother person or some mark which appears to be the trade mark ofanother person in such a way as to lead the public to believe that thatmark has been applied to the goods qua trade mark, that is to say, toindicate that the goods on which the mark appears are the goods of someparticular person. But has the trade mark of the complainant beenapplied to the metal tablet in such a way as to-suggest to the public thatthe metal tablet is. the manufacture of Sheik Dawood? I cannot admitthat for a moment. In view of the insignificance of the tablet itself, thenumber and distribution and sacred associations of the objects in the.device, and the evidence given as to the reasons for which members of thepublic purchase the medals so engraved, I can only come to one conclu-sion and that is that the metal, tablets are merely of importance for thepurpose of displaying the device and that is the reason why the medalsare purchased. Looked at-in another way, the device and the tablet
ABRAHAMS C.J.—Abdul Aziz v. Mohamed Buhary.369
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upon which it is engraved combine to form a “ charm ” or an ornament,and the device loses its distinguishing characteristic of a trade mark ‘(ifindeed it was ever intended to have that characteristic by the complainantitself) and becomes a part of the goods to which it is applied. I amtherefore of opinion that for this reason also the appellant is entitled toacquittal on the first count.
The same reasoning which relieves the appellant from liability inrespect of count one, also clearly applies to count two. The wording ofsection 4 (2) under which it is sought to bring home liability to theappellant makes it a false trade description to apply to goods “ any suchfigures, words, or marks, or arrangement or combination thereof, whetherincluding a trade mark or not, as are reasonably calculated to leadpersons to believe that the goods are the manufacture or merchandise ofsome person other than the person whose manufacture or merchandisethey really are ”. It is obvious that what is intended by this provisionof law is the application to goods of some figures, words, or marks, placedon the goods for the same purpose as a trade mark and not placed thereso as to become part of the goods themselves, as for instance the patternon a wall paper, or the chasing of figures, or of an ornamentation upon ametal vase, so as to form with the goods upon which they are placed somenew combination as in this case, where avdevice engraved upon a metaltablet makes a charm. In this connection an Indian case has been citedto me which bears a remarkable resemblance to this case. Inv NarumalKhemchand v. The Bombay Company, Ltd.', Hayward J.C. and Boyd A.J.C.held that a person who imported chintz printed with a particular designor pattern similar to other chintz imported by another firm was notguilty of applying a false trade description to goods under section 41 ofthe Indian Merchandise Marks Act, 1889. This section is identical withsection 4 (2) of the Ceylon Ordinance. The Court said, “ The design orpattern makes the chintz attractive for sale and is part and parcel of thegoods themselves. Whereas what appears to us to be contemplated bythe section is the application of some independent marks calculated tolead persons, to believe the goods to be the merchandise of some otherperson ”. This reasoning applies to the case before me with even greaterstrength, since purchasers of chintz wanted chintz and merely selectedthat particular chintz because of the attractive pattern. Whereaspersons in Colombo buying “ Panchauda ” medals were primarily pur-chasing them because of the design, and they merely looked upon themedal itself as the medium to enable them to purchase the design. Inother words the medal was the subordinate consideration.
A number of English decisions on passing off cases were cited, but theydo not help to interpret ’ this Ordinance. A passing off action is notunfamiliar in this country and it may be, I give' no opinion on this point,that the complainant had his remedy in that connection, but to say thatone man has imitated the goods of another is not the same as saying thathe has applied somebody else’s trade mark to his own goods or given afalse trade description to them.
The second count also fails'and the third count automatically followsit. I quash the convictions and acquit the appellant.
Convictions quashed.
A. I. R. (1914) Sind. 109.