047-SLLR-SLLR-2006-V-3-SUMANARATNE-AND-OTHERS-vs.-RUPATUNGA.pdf
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SUMANARATNE AND OTHERSVS.
RUPATUNGA
SUPREME COURT.
JAYASINGHE. J.
DISSANAYAKE.J.
RAJA FERNANDO.J.
SC 56/2004.
HC AVISSAWELLA 58/2002.
MC AVISSAWELLA 2254.
FEBRUARY 9.2005.
OCTOBER 25,2005.
Code of Intellectual Property 52 of 1979- Section117 (2), Section 150.Penal Code Section 72- Convicted – Protection given to registered ownersof trade marks- Is it necessary to establish the actual use of the registeredtrade mark?- What has to be proved in a charge under Section 117?
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Sumanaratne and Other Vs. Rupatunga
(Raja Fernando, J.)
369
The appellants’ father was the registered owner of an Ayurvedic drugmanufactured and marketed under the registered trade mark. After thedeath of their father the trade mark was transferred to the appellants andthe same was registered. The appellants became aware that in 1998 therespondent was manufacturing and marketing an Ayurvedic drug under asimilar name and in a packet very similar to the one manufactured andmarketed by the appellants.
On a complaint lodged in the Magistrate's Court the Respondentwas convicted on the count framed under Section 117 read with sectionl 50of the Code of Intellectual Property Act. The High Court set aside theconviction and sentence.
In appeal, the question arose, whether it is necessary to establishthe actual use of the registered trade mark in order to seek the protectiongiven to the registered owner of such trade mark under section 117.
HELD:
The charge against the accused-respondent was that he wasusing a trade mark similar to that which was registered by thepetitioner – from a plain reading of section 117(2) and sectionl 50it is clear that the rights accrued to the registered trade mark.
What needs to be proved in a charge under section 117 is that(1) One is the owner of the registered trade mark (2) and theother has infringed his rights to the registered trade mark.
Per Raja Fernando J.
“For a charge under section 117 which relates to registered trademarks, what the prosecution has to prove is the registration of the trademark and that the accused-respondent uses a mark that closely resemblesthe registered trade mark, and that such mark is likely to mislead thepublic".
The High Court was in error in that the Court was misled incoming to the finding that in order to violate section 117 one
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must prove that one has used the registered- trade mark. If onedoes not use the registered trade mark there is provision tohave the Registrar of Trade Marks to remove such trade mark. from the register.
So long as the trade mark remains in the register the imitation ofsuch mark likely to mislead the user public is prohibited.
APPEAL from an order of the High Court of Avissawella.
Case referred to:
(1) Jamis Fernando vs. Officer-in-Charge SC1B (Negombo) -1994 3Sri L. R. 35.
Bimal Rajapakse with Udeni Gunasekera and Ravindra Anawaratnefor petitioner-appellant
Parinda Ranasinghe SC for complainant-respondent-respondent.
Cur. adv. vult.
May 5, 2006RAJA FERNANDO J.
This appeal is by the aggrieved party (hereinafter referred to as theAppellant) against the Order of the High Court of Avissawella dated
by which the learned High Court Judge set aside theconviction by the learned Magistrate of Avissawella of the Accused-Appellant Respondent (hereinafter referred to as the Respondent) ofthe charge under Section 117(2) read with Section 150 of the Code ofIntellectual Property Act No. 52 of 1979.
The facts relating to this appeal in brief are as follows :
The appellants' father was the Registered owner of an Ayurvedicdrug manufactured and marketed under the Registered Trade markdepicted in P2.
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After the death of their father the same Trade mark was transferredto the Appellants and the same was registered in their names on 09/08/1997.
The Appellants became aware in 1998 that the Respondent wasmanufacturing and marketing an Ayurvedic drug under a similar nameand in a packet very similar to the one manufactured and marketed bythe Appellants under the Trademark P2.
On a complaint made to the Police by the Appellants theRespondent was charged in the Magistrate's Court of Avissawella ontwo counts:
under Section 72 of the Penal Code;
under Section 117 read with Section 150 of the Code ofIntellectual Property Act No. 52 of 1979.
At the conclusion of the trial in the Magistrate’s Court theRespondent was initially convicted under both counts but at the stageof sentencing was discharged of count 1 and on count 2 sentenced toa fine of Rs.10,000/=.
The Respondent appealed against his conviction and sentenceon count 2 to the High Court and his conviction and sentence were setaside by the High Court Judge.
The present appeal was filed by the aggrieved party with leavefrom this court challenging the order of the High Court.
The issue for determination by this court is:
“whether it is necessary to establish the actual use of theRegistered Trade Mark in order to seek the protection given tothe registered owner of such Trade mark under Section 117 ofthe Code of Intellectual Property Act”.
In the Magistrate’s court, evidence was led to prove that theTrade mark P2 was registered under the name of the Appellants
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(aggrieved party) It was also proved that the Accused Respondent wasmarketing his Ayurvedic produce in the packet marked P4 which wasvery similar to P2.
The accused-respondents’s position was that drugs marked“Krimiraja” was found in Ayurvedic Literature and that the Petitionercan not have an exclusive right to it. The Defence further cross-examinedthe prosecution witnesses to show that the packet actually used bythe Petitioners at the relevant time was slightly different to the onedepicted in the registered mark P2.
The difference being that in the Registered Trade mark P2 theOwner’s name is given as “Vaidyacharya M.D. Liveris Amaratunga”
whereas the packet actually used depicts the owner’s name asM.D. Liveris Amaratunga Saha Puthrayo. Besides this difference inname, the two products were identical in other respects.
The learned Magistrate found the accused Respondent guilty ofthe charge under Section 117 read with Section 150 of the Code ofIntellectual Property Act.
On appeal to the High Court the High Court Judge set aside theconviction on the ground that the Trade mark actually used by thePetitioner was different to that which was Registered and therefore thePetitioners are not entitled to the protection given to their Trade Markunder Section 117(2).
The learned High Court Judge seems to have totallymisunderstood the charge against the Accused-Respondent.
The charge against the Accused – Respondent was that he wasusing a Trade mark similar to that which was registered by thePetitioner.
The learned High Court Judge has confused the Registered Trademark with the Trade mark that was used by the Petitioners:
Section 117(2) of Act No. 152 of 1979 reads as follows:
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“Without the consent of the registered owner of the mark thirdparties are precluded from the following acts:
any use of the mark or of a sign resembling it, in such a wayas to be likely to mislead the public for goods or services inrespect of which the mark is registered or for goods or servicesin connection with which the use of the mark or sign is likelyto mislead the public.
any other use of the mark or of a sign or trade name resemblingwithout just cause and in conditions likely to be prejudicial tothe interest of the registered owner of the mark.
Section 150 of the Code of Intellectual Property reads: "Any personwho infringes the rights of any registered owner, assignee or licenseeof a mark shall be guilty of an offence…
From the plain reading of the section it is clear that the rights accrueto the registered Trade mark
Therefore what needs to be proved in a charge under Section 117 ofthe Code of Intellectual Property Act No. 52 of 1979 is that one is theowner of the registered Trade mark and the other has infringed hisrights to the Registered Trade mark.
The learned High Court Judge in arriving at his decision has soughtto rely on the decision in Jam is Fernando Vs. Officer-in-Charge, SCIB,Negombo(1) ■
The facts in that case are materially different. In that case thecomplaint was that the accused were imitating in such a way as tomislead the public the Trade mark which the complainants were usingand not the one registered. It was the opposite of this case and thecourt in that case held that the trade mark used by the complainantswas considerably different to the one they have registered.
The learned Magistrate has correctly held that in the present casethe packets used by the Accused-Respondent closely resemble theregistered Trade mark of the petitioners.
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The question that the petitioner was using a Trade mark that wasdifferent to the one Registered may be a factor that will have a bearingon the damages that may be claimed from the Accused-Respondentby the Petitioners.
But for a charge under Section 117 of the Code of IntellectualProperty Act which relates to registered trade marks what theprosecution has to prove is the registration of the Trade mark and thatthe Accused -Respondent uses a mark that closely resembles theregistered trade mark; that such mark is likely to mislead the public.
For the foregoing reasons the conviction by the learned magistrateis in keeping with the provisions of Section 117 of the Code (ActNo. 52 of 1979) and the evidence in the case.
The learned High Court Judge was in error in that he has misledhimself in coming to the finding that in order to violate section 117 ofthe Code, one must prove that one has used the Registered Trademark. If one does not use the Registered mark there is provision in theCode to have the Registrar of Trade Marks remove such Trade markfrom the register. So long as the Trade mark remains in the Registerthe imitation of such mark likely to mislead the user public is prohibited.
Therefore the order of the learned High Court Judge quashing theconviction and sentence imposed by the learned Magistrate is setaside and I affirm the order of the learned Magistrate convicting theAccused-Respondent and the sentence imposed.
The appeal of the complainant-appellants is allowed.
I make no order for costs.
JAYASINGHE, J.— I agree.
DISSANAYAKE, J. — I agree.
Appeal allowedConviction and sentence affirmed.