065-NLR-NLR-V-34-SAHIB-v.-MUTHALIP.pdf

7 3 R. P. C. 54 (1899) A. C. 83.
MACDONELL CJ.—Sahib v. Muthalip.
23d
The complainant has jealously guarded his trade mark for many yearsand even brought civil actions against other traders. This Ordinanceis not merely for the protection of the public but also for the protectionof the trader, and therefore the evidence of deception of the public is notnecessary.
H. V. Perera, in reply.
November 16, 1932. Macdonell C.J.—
In this case the accused was charged with offences against the Merchan-dise Marks Ordinance, No. 13 of 1888, in that he contravened section 3 (1)
, by forging registered trade mark No. 1,651 consisting of the device oftwo ovals and the word ‘ Moulana ’, section 3 (1) (b), by falsely applyingto certain Palayakat sarongs a mark so nearly resembling the mark*aforesaid as to be calculated to deceive, section 3(1) (d), by applying a falsetrade description to the said sarongs by applying thereto a mark consist-ing inter alia of a device of two ovkls which was reasonably calculatedto lead persons to believe that the sarongs were the manufacture ormerchandise of the proprietors of registered trade mark No. 1,651 when,in fact, the said sarongs were not the manufacture or merchandise of thesaid proprietors, and section 3 (2) of the same Ordinance, by selling,exposing for sale, and having in his possession, for the purposes of trade,the goods aforesaid to which a forged trade mark and a false trade descrip-tion had been applied and to which a mark so nearly resembling registeredtrade mark No. 1,651 as' to be calculated to deceive had been falselyapplied. He was found guilty and from this conviction he brings thepresent appeal. The case came first before Jayawardene J. who referredit to a bench of three Judges. There was a second charge against theaccused under the same Ordinance and preferred by the same complainant,but on this he was acquitted.)
The trade mark No. 1,651 was registered under the Trade MarksOrdinance on December 29, 1915, for a period of 14 years and thisregistration was renewed on December 29, 1929, for a further period of14 years. The trade mark so registered consisted of two ovals, oneinside the other, the outer one slightly thicker than the one inside,there being a very small space between the two, and it consisted alsoof the word ‘ Moulana ’ printed in capitals across the interior spaceof the two ovals nearly filling that space. Whenever used by its registeredowner, the complainant, it was printed so as to show in capitals thewords * Trade Mark ’ above the top rim of the oval and the word‘Registered’ below the lower rim of the same, but these words were,of course, no part of the registered trade mark. *
This trade mark was of the most ordinary and commonplace characterand one is doubtful whether it ought ever to have been registered, butit has been,, and the registration has been renewed for 14 years fromDecember, 1929. It is therefore a piece of valuable property which.the law must protect.
The accused’s mark which is said to infringe No. 1,651 that of thecomplainant, also consisted of two concentric ovals of practically thesame size as those of No. 1,651, and printed within these ovals werethe words ‘ Md Masthan * below their upper segment and the word
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‘ Madras ’'"above their lower Segment; these words were not set outacross the middle as was the word ‘ Moulana ’ in No. 1,651, but followedthe curves, upper and lower, of the ovals, the middle of which was leftblank. The accused’s mark as used by him seems always to have hadthe word ‘ Trade Mark ’ printed above the top of the ovals and theword ‘ Palayakat ’ printed below them.
The evidence was that complainant had been in the habit of puttinghis trade mark No. 1,651 on all sarongs sold by him for many years pastand that the sarongs so sold had come to be known as the ‘ egg shape ’or oval mark sarongs. The complainant said that he himself did not>know enough English to read the words on the different marks produced,and there was evidence tending to show that many of the people likelyto purchase complainant’s sarongs with mark No. 1,651 on them wouldnot know Roman characters at all, and so would be unable to read theword ‘ Moulana ’ ; they would go by the ovals, the egg shape, and alsoby the appearance of the mark generally. The accused gave evidenceand said that he had used his oval mark for 30 years but on this pointhe was expressly disbelieved by the learned Magistrate trying the caseand nothing was adduced to show that the Magistrate was wrong in sodisbelieving him. It must be taken then as a fact that the accusedhad not been using his own oval mark for 30 years or at all, until quiterecently. Certain portions of accused’s evidence are of sufficientimportance to be set out in full—“ Our Manager …. thoughtof the idea of putting ‘ Trade Mark * on the top and ‘ Palayakat ’ under-neath. Everyone knows it as my mark. People say, put the seal* Trade Mark, Md Masthan ’. They sometimes say * Round or EggMark : I consider it my mark. If anyone else used it, I would takeproceedings against him. I knew the mark on PI (i.e., No. 1,651) beforethis case. It is the best known mark in Ceylon. Moulana—the ovalsare the same shape as in mine. The words ‘ Trade Mark ’ are smallerthan mine and the word ‘ Registered ’ is in about the same place andthe same size. Two men could not have devised trade marks so muchalike by accident. They must have copied mine. I never heard thatcomplainant applied for registration in 1915 until now. I first heardabout this Moulana mark about 15 years ago ”. This evidence givenby the accused is a pretty clear admission that complainant’s markNo. 1,651 and the accused’s oval mark so closely resemble each otherthat one is liable to be taken for the other, and read in connection withthe finding on fact that accused has only recently been using his ownoval mark, while complainant has certainly been using No. 1,651 since1915 and long before, it goes a long way to show that the accused has“ applied ” to the sarongs sold by him “ a mark so nearly resembling atrade mark as to be calculated to deceive.”
The learned Magistrate in his judgment finds as follows: “ There isplenty of evidence given by witnesses to show that an illiterate martwho is clearly by far the most common class of purchaser would lookat the ovals and be unable to read the English lettering There isnot much direct evidence to this effect, but perhaps it is possible to inferfrom the evidence the conclusion that the learned Magistrate has come to.The judgment proceeds—“ It is clear therefore that the use of the ovals
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would be calculated to deceive the majority of purchasers into believingthat the goods were those of ‘ Moulana whose sarongs are admittedlythe best known in Ceylon. Unless the mark on P. 19 was purposelydesigned to imitate registered trade mark 1,651 we have to explain someextraordinary coincidence, i.e., that accused chose the ovals accidently,that it was another accident that he drew the double ovals, and yetanother accident that he drew the outer oval of thicker line than theinner oval, and yet another that the lettering above and below the ovalsis identical at the top, and practically indistinguishable below, to anilliterate person ”.
Perhaps the chief question in this case is, whether the mark provedto have been used by the accused so nearly' resembled trade markNo. 1,651 as to be calculated to deceive, section 3 (1) (b).
First of all as to the word “ calculated To establish that a markis calculated to deceive it is not necessary to show that there was anyintent on the part of the person using the mark to deceive anyone, thoughthis may be an element in the question. What is meant is that there issomething in the mark itself, something objective, which is apt todeceive. You look to the mark itself, to what it' is, to what it looks like,to what it contains, and to how it compares with the other trade markput forward, and if there is in the mark itself something that is likelyto -deceive buyers or users of the article on which it is placed, then themark is calculated to deceive whatever may have been the intent orabsence of one on the part of the person using it. “ It seems to methat a trade mark is calculated, by its resemblance to another, alreadyon the register, to deceive if in the probable course of its legitimate usein the trade it is likely to do so; and in considering whether this result isprobable to occur in the course of its use in the trade, it seems to meyou have a right to look at the circumstances of the case ”, per BowenL.J. in Re Lyndon’s Trade Mark.l•
Since then the trade mark must be looked at to see if it is calculatedto deceive, the next thing is to ascertain what is meant by the term,trade mark. Per Brett M.R. in Re Christiansen’s Trade Mark2, “ Areyou to look at the marks as printed or are you to look at the marksas they will probably be used in the course of trade? In my opinion,you are to look at them as they will probably be used in the course oftrade ”. And again per Bowen L.J. in Re Lyndon’s Trade Mark (supra),“ What is the proper standard of comparison ? You will have to takethe trade mark which it is desired to register, and the proper standardwith which you ought to compare it is the trade mark already on theregister as registered, although, as we have explained, you are notconfined simply to the paper registration, but you may look furtherafield to see how it will probably, in the legitimate user, show itself uponthe article upon which it is to be impressed
Having got a notion of what the phrase, calculated to deceive, means,and of how we are to ascertain what is meant by the term, trade mark,the next thing is to determine what sort of evidence is necessary on theissue, is the trade mark calculated to deceive, and how that evidenceshould be approached. From the cases cited to us, I quote two passagesi 3 Pat. Ca. at 106.2 3 Pat. Ca. at 59.
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which seem useful on this question. In Slazenger & Sons v. Feltham& Co.1 Kekewich J. says, “ My duty, it seemed to me, is to form my ownconclusion, as a jury would from their own experience of the world, assistedby such evidence of facts as are brought before me, not so much evidenceof opinion as to whether a person would be deceived or not, but evidencerespecting the way in which these things are bought and sold—theclass of people, how it is done, and the number sold—any facts of thatkind from which, as a jury, I could form a conclusion As to howevidence should be considered by the Judge trying the case, there is thedictum of Lord Macnaghten in Payton & Co.} Ltd. v. Snelling, Lampard& Co., Ltd.3 “ I think …. that a good deal of the evidence isabsolutely irrelevant and I do not myself altogether approve of the wayin which the questions were put to the witnesses. They were put inthe form of leading questions and the witnesses were asked whether aperson going into a shop as a customer would be likely to be deceivedand they said they thought they would. But that is not a matter forthe witnesses ; that is for the Judge! The Judge looking at the exhibitsbefore him, and also paying due attention to the evidence adduced,must not surrender his own independent judgment to any witnesseswhatever. ”
If we apply the above principles to the question before us, namely,is there evidence from which it can be concluded that the appellant’smark so nearly resembled the respondent’s registered trade markNo. 1,651 as to be calculated to deceive, I would say that there is, andthat the learned Magistrate directed himself properly and came to aright conclusion.
There was one point argued to us for the appellant that needs mentionand it was this, that before anyone can be convicted under section 3 (1) (a)of forging the trade mark of another person, it must be proved that thetrade mark of that other person was present to his mind when he madeand used, or procured to be made and used, the mark claimed to be aforgery. I doubt this argument which seems founded on the analogyof the word, forgery, in criminal law. The definition of forgery givenin section 5 (a) is “ without the assent of the proprietor of the trade markto make that trade mark or a mark so nearly resembling that markas to be calculated to deceive ”. It is an objective test again whichhas to be applied ; is the trade mark in itself so like the other thatnormally it, by reason of its resemblance to that other, would be likelyto deceive people ? If it is, then the making cf it is a forgery quiteindependently of the knowledge or intent of the person making it. Insupport of the argument that the mark of the other person must bepresent to the mind of the person using the mark that is challenged,,a case GridXey v. Swinborne3 was cited to us. Unfortunately no reportof that case is available, but the summary of the case given in 43 Eng.& Emp. Dig. 240, shows it to have been the case of a patentee whosepatent had expired and who was charged with selling his goods under afalse description, that is, he called them isinglass whereas really they wereonly gelatine, and the summary adds that on a charge of “false trade
i 6 Pat. Ca. at 534.2 17 Pat. Ca. at 635 and (1901) A. C. at 311.
a 5 T. b. ft. 71.
DALTON J.—Sahib v. Muthalip.
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description”—Ordinance No. 13 of 1888, section 3 (1) (d)—“ semble, toconstitute the offence there must be an intention to mislead”. Theaccused in Gridley v. Swinbome (supra) does not seem to have been chargedwith falsely applying a trade mark so nearly resembling another as to becalculated to deceive and, if so, the facts were different from those of thepresent case, where the evidence accepted shows that the applicantknew of the respondent’s trade mark, and trade description, and copiedthem deliberately.
Hollandia, &c., Milk Co. v. Nestle, &c., Milk Co.1 was cited to us inargument but is easily distinguishable. There it was held on the factsthat the mark objected to was not calculated to deceive. Here thefacts show that the mark objected to was, and each case must be decidedon its own facts.
The case before us seems a tolerably plain one and I think this appealshould be dismissed.
Dalton J.—
Of the two questions reserved for the opinion of this Court, the firstseems to me to be answered by the fact that the “ common embellish-ment”, referred to in the reference, is registered as a trade mark. Noquestion arises in these proceedings as to whether it can have been saidto have become distinctive by mere user.
The second question is as to the necessity of proof of mens rea. Iinfer from the judgment of the Magistrate that he is satisfied that mensrea existed in the appellant. Although hot expressly so stated, I thinkthat is the reasonable conclusion from his findings on the evidence.The learned Judge who referred the appeal to this Court is doubtfulwhether such proof was necessary under the Merchandise Marks Ordi-nance, 1888. On this question I have nothing to add to what hisLordship the Chief Justice states' on this question. I have had thebenefit of reading his judgment, and respectfully agree with his viewof the law on this point.
I would only add in conclusion that, in my opinion, the proceedingstaken by the complainant respondent in a criminal court in this case,commenced as they were against a rival trader by the issue, of a searchwarrant, are under the circumstances hardly justified. The poverty ofthe evidence he had is amply shown in his asking for a warrant, andit is surprising to me that a search warrant was allowed to issue. Theextraordinary extent of respondent’s claim is shown in his evidence.He objects to anyone but himself having any trade mark includingeither an oval or circle of any description. But for the evidence of theaccused himself as to the similarity of the marks, I doubt if there issufficient evidence on the record to justify a conviction, but taking thatinto consideration, I am unable to say that the Magistrate was notentitled to find that the mark he used so closely resembled the respon-dent’s registered mark as to be calculated to deceive. For these reasonsI would therefore dismiss the appeal.
Garvin S.P.J.—I agree.
Affirmed.
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1 24 N. L. R. 396.