Judgment:
ORDER
1. This is a petition under section 482 of the Criminal Procedure Code or in the alternative a revision petition against the order dated 9th April 1985 passed by the Additional Sessions Judge, Greater Bombay raises an interesting question about interpretation of Sec. 87 of the Trade and Merchandise Marks Act, 1958 (hereinafter called the Trade Mark Act)
2. Brief facts leading to the filing of the present petition may be stated as follow :
The petitioners are partners of Eupharma Laboratories, which is a registered partnership firm carrying on business of manufacture of the medicinal goods. Respondents No. 1 Lalitkumar is the Company Secretary of Pfizer Incorporated of U.S.A., a public limited Company incorporated under the Indian Companies. Act, 1913.
The respondent on behalf of Pfizer Incorporated filed a criminal complaint case before the trial Magistrate on 22nd March 1982 alleging that the present petitioners have committed an offence punishable under sections 78 and 79 of the Act. It was the case of the complainant that Pfizer Incorporated is the owner of trade mark and that the said trade mark Vibramycin manufactured by the Pfizer Company in several countries around the world under the same trade mark and the that the said trade mark is also duly registered in India. It is further their case that registration has been reviewed up-to-date and is valid till 1988. It was alleged in the complaint that the present petitioners accused had unauthorisedly used the said trade mark by manufacturing the same identical medicine and packaging, selling and distributing it is India. Thus Pfizer Company holds title to the work Vibramycin as trade mark which is duly registered in India and the accused having unauthorisedly used the said trade mark of their product and by selling the said product under that trade mark have committed the offences punishable under section 78 and 79 of the Trade Mark Act.
3. The following statement of fact was made on behalf of the applicant accused, which is not disputed on behalf of the complainant, viz., that on the next day of the filing of the complaint the Pfizer Company also filed on 23-3-1982 a civil suit before the High Court against the present accused for infringement of their trade mark Vibramycin, that is Civil Suit No. 458 of 1982. On 29-4-1982 the accused persons filed Miscellaneous Petition No. 375 of 1982 for rectification of the trade mark register and for expunging the entry of Vibramycin in favour of Pfizer from the register. It is also not disputed that the High Court in its Original Side rejected the application for interim injunction restraining the accused persons from manufacturing and selling the products under the trade name Vibramycin. The Pfizer Company preferred an appeal before the Division Bench. This appeal was also rejected. In the meantime Miscellaneous Petition No. 375 of 1982 filed by the accused persons before the High Court was admitted and rule was issued and the same is pending for hearing.
4. In so far as criminal case is concerned the accused petitioner on 22-6-1982 filed an application for stay of the criminal proceedings under section 87 of the Trade Mark Act. They also filed an application for return of the property which was seized during the pendency of the complaint. The application for return of the goods has been allowed. The learned trial Judge also allowed the application for stay on 11-11-1983.
5. Complainant Pfizer Company preferred a revision against the order of the learned trial Judge granting stay and on hearing both the parties the learned Sessions Judge on 9-4-1985 reversed the order of stay and directed the trial Court to proceed with the case. He also granted liberty to the accused persons to prefer a separate application for stay of the proceedings before the trial Court under section 309 of the Criminal Procedure Code. The accused petitioners feeling aggrieved thereby have come up in this revision which alternatively they claim to be a petition under section 482 of the Criminal Procedure Code.
6. Since the entire arguments were centered around interpretation of section 87 of the Trade Marks Act, it would be proper to reproduce the said section.
'87(1) Where the offence charged under section 78 or section 79 is in relation to a registered trade mark and the accused pleads that the registration of the trade mark is invalid, the following procedure shall be followed :-
(a) If the Magistrate is satisfied that such defence is prima facie tenable, he shall not proceed with the charge but shall adjourn the proceeding for three months from the date on which the plea of the accused is recorded to enable the accused to file an application before the High Court under this Act for the rectification of the register on the ground that the registration is invalid.
(b) if the accused proves to the Magistrate that he has made such application within the time so limited, or within such further time as the Magistrate may for sufficient cause allow, the further proceedings in the prosecution shall stand stayed still the disposal of such application for rectification and of the appeal, if any therefrom.
(c) If within a period of three months or within such extended time as may be allowed by the Magistrate the accused fails to apply to the High Court for rectification of the register, the Magistrate shall proceed with the case as if the registration was valid.
(2) Where before the institution of a complaint of an offence referred to in sub-section (1) any application for the rectification of the register concerning the trade mark in question on the ground of invalidity of the registration thereof has already been properly made to and is pending before the Tribunal, the Magistrate shall stay the further proceedings in the prosecution pending the disposal of the application aforesaid and shall determine the charge against the accused in conformity with the result of the application for rectification in so far as the complainant relies upon the registration of his mark.'
7. Shri K. M. Desai appearing with Shri D. M. Daruwalla and Miss. P. H. Bakshani for the petitioners contended that the learned Additional Sessions Judge erred in reversing the order of stay granted by the trial Court. Interpretation of section 87 as laid down by the learned Addl. Sessions Judge is totally erroneous. He has failed to appreciate the very object and purport of section 87 of the Trade Mark Act. In fact according to Shri Desai, section 87 is a special provision whereby when an accused person charged with an offence under sections 78 and 79 of the Trade Mark Act contends that the registration of the trade mark by the complainant is invalid, the Magistrate has to be satisfied prima facie that it is a tenable defence and then the Magistrate is required to postpone the hearing of the complaint for a period of three months to enable the accused to move the High Court or the Tribunal for rectification of the register. It also provides that in case before a complaint is filed, the accused has already moved an application for rectification, the Magistrate has no alternative but stay the criminal complaint before him and dispose it of only in conformity with the judgment rendered if the rectification proceedings. Shri Desai submitted that in a case where shortly after the complaint is filed and before the charge is framed, the accused has in fact moved an application for rectification, then even in that case the Magistrate ought to stay the proceedings and aware the decision in the rectification petition.
8. Shri Ashok Desai appearing with Shri V. P. Vashi for the respondent complainant contended that the revision petition is not maintainable, as it is against an interlocutory order refusing to stay the proceedings. They further contended that at any rate the offences under sections 78 and 79 are punishable with imprisonment for three years and therefore warrant trial procedure would be applicable to the complaint. In that event, the plea of the accused is recorded only after preliminary evidence before, charge is adduced before the trial Court. Thus from a plain reading of section 87(1)(a) it would be clear that in a warrant case, the plea of the accused would be recorded only after the evidence of prosecution is reduced to writing and then the accused may ask for time to move the petition for rectification. According to them section 87 contemplates only two situations, one where the accused after pleading his defence seeks to move an application for rectification and the other that the accused has already filed a petition for rectification before institution of the criminal complaint. It does not envisage a situation where after institution of the complaint but before the plea of the accused is recorded the accused has moved an application for rectification. Lastly they contended that even otherwise the learned Addl. Sessions Judge has directed the trial Court to consider an application on behalf of the accused under section 309 of the Criminal Procedure Code, if they so choose. Hence no interference is called for in the order impugned.
9-10. Learned Counsel for both the parties laid stress on the wording used at different places in section 87. In the opening paragraph of section 87(1) the words used are 'the offence charged' and 'the accused pleads', in sub-clause (a) the words used are 'charge' and 'the plea of the accused'. The petitioner's counsel emphasized on the said words and submitted that they have different meanings in different context. In the opening paragraph, words 'where the offence charged' under sections 78 and 79 are in relation to a registered trade mark, and 'the accused plead' that the registration of the trade mark is invalid, the following procedure shall be followed are used. Now this procedure would indicate that no sooner a complain is filed then immediately on verification of the complain, the trial Court issues process to the accused charged with the offence under sections 78 and 79 of the Trade Mark Act. In such a case where the accused pleads that the registration of the trade mark is invalid, the question is whether the pleading of such defence has to be at a stage when a formal charge is framed. In my opinion there is no bar under the Criminal Procedure Code for an accused to take up his defence at the very initiation of the proceeding either on the ground of jurisdiction, territorial or pecuniary or on the question of limitation or on the question of sanction for prosecution, since such defence would go to the very root of the case. Moreover, the scheme of section 87 also provides a right to the accused to get rectification of the register of trade mark on the ground of its invalidity. It is not in fact a defence but an opportunity for the accused to get his bona fide dispute regarding the title of the trade mark settled before a competent court viz. tribunal as defined under the Trade Mark Act. To determine validity or invalidity of the trade mark and to order or refuse to order rectification of the register of trade mark is exclusively within the jurisdiction of the tribunal under that Act and a Magistrate would not be competent to deal with that aspect.
11-12. It was vehemently contended that because offences under sections 78 and 79 are triable as warrant cases and the stage of pleading of the accused comes only after framing of formal charge under section 246(3) of the code of Criminal Procedure, it this mandatory for the Court to record the plea of the accused only if he pleads guilty. It is not mandatory for it to record the plea if the accused pleads not guilty or claims to be tried. Moreover as already stated above, there is no bar to the accused to take up a plea at any stage of the trial, whether it be on the question of limitation, jurisdiction or sanction or otherwise.
13. A special right has been given under section 87(1) to the accused in certain cases where there is a bona fide dispute regarding title of a particular trade mark or a bona fide dispute regarding right to use a particular trade mark and if prima facie trial Court is satisfied that such a bona fide dispute exists, it is in duty bound to grant time to the accused to secure the necessary rectification of the register from the tribunal.
14. No doubt it is true that only two eventualities are contemplated under section 87 viz. where the accused seeks time to move a petition for rectification after pleading that registration of the trade mark by the complainant is invalid, the other situation being that he has already moved such an application before institution of the criminal complaint. What happen in a situation where after institution but before framing of the charge the accused moves an application for rectification before the Tribunal and then seeks stay of the proceedings. The answer is even in such a case the trial Court need not proceed with recording of the evidence and framing of the formal charge and then postponing the proceedings to await the decision of the Tribunal regarding ratification of the register. What is intended is that no sooner the accused raises a defence by way of an application pleading that the registration of the trade mark in favour of the complainant is invalid and he has already moved an application for rectification of the register, the trial Court ought to stay the proceedings and wait the decision of the competent Court.
15. The Code of Criminal Procedure is meant to act as handmaid in the administration of criminal justice and not as hindrance on finer technicalities. The purport and intention of the legislature in incorporating Section 87 is clear and unambiguous in that it requires the trial Court to find out if prima facie such a defence is tenable and then stay the proceeding and await the decision of the competent tribunal in respect of validity or otherwise of the said trade mark. This is not a case where the accused persons are manufacturing any spurious drugs. It is an admitted position by the accused that such a trade mark in favour of the complainant does exist. It is also their case that they are manufacturing and selling the said product under the trade name Vibramycin.
16. It is their case that the registration of the trade mark in favour of Pfizer Company is invalid because they have not used that trade mark in India for a continuous period of more that five years before filing their petition for rectification. According to the accused they are entitled to use that trade mark in India. Thus, it is purely and simply a question of civil dispute regarding the title and right to use the said trade mark in India and this can be decided not by the criminal Court but by the competent tribunal under the Trade Mark Act. The learned Addl. Sessions Judge has gone into the technical aspect of a warrant case, such as framing charge and then calling upon the accused to plead his defence and for consideration of the same. What is actually required is that the Magistrate should be satisfied that the contention of the accused that the registration of the trade mark is invalid is prima facie tenable and nothing more. In the instant case as stated in the disputed facts above, the Pfizer Company filed a dispute for infringement of their trade mark against the accused. But they have were refused injunction against the accused. The appellate Court also grant injunction. Moreover, the application for rectification of the register has been duly admitted and the notices have been issued to the Pfizer Company as well as the Registrar of Trade Marks and the matter in pending for evidence before the trial Court. In these circumstances therefore there was enough material to show that the plea of the accused that a bona fide dispute regarding the validity of the registration of the trade mark is pending before the competent authority is prima facie tenable. The trial Court was therefore right in granting stay of the proceedings.
17. Even otherwise under section 309 of the Code of Criminal Procedure the trial Court in any inquiry or trial can postpone commencement of such inquiry or trial, if it is so advisable for the reasons to be recorded. In the facts and circumstances of the case, this was a proper case where stay ought to have been issued by the trial Court.
18. It was contended that the order impugned is an interlocutory order and therefore a revision applications not maintainable. However, there is no such for a petition under section 482 of the Code. I find it a fit case where inherent power section 482, Cr.P.C. should be invoked order to set right interpretation rendered the Sessions Judge and also in the larger interests of justice and to avoid abused process of law. Since the question of validity of trade mark is involved and the only proper forum is the tribunal under the Trade Mark Act and further because the criminal Court has no jurisdiction to decide the question of rectification of register. I feel that the question of title to use the trade mark has to be decided before the criminal proceedings can be taken on. Even the purpose of section 87 of the Trade Mark Act is not to drag a bona fide user of the trade mark to a criminal trial but to enable him to get that question of title decided by the Tribunal (High Court or Registrar) under the Trade Mark Act. In the light of these observations there is much substance in the submission made on behalf of the petitioner that the petition deserves to be allowed and hence the following order.
19. Petition is allowed. The impugned order passed on 9th April 1985 by the learned addl. Sessions Judge, Gr. Bombay in Criminal Revision Application No. 61 of 1984 is quashed and set aside and that of the trial Court dated 11-11-1983 is restored.
Rule absolute as above.
20. Order accordingly.