Jolen International Ltd. & Others vs State & Others
2009 Latest Caselaw 306 Del

        IN THE HIGH COURT OF DELHI AT NEW DELHI

                W.P.(CRL) 2043-45/2005 & Crl M A 11878/2005, 346/2006

                                                    Date of decision: January 30, 2009


        JOLEN INTERNATIONAL LTD. & ORS               ..... Petitioners
                         Through Mr. Sanat Kumar with Mr. T.P.S. Kang,
                                 Advocates

                        versus


        STATE & ORS.                                          ..... Respondents
                                 Through Mr. Rajat Katyal, Advocate for State with SI
                                 Anil Kumar, DIU (NB)
                                 Mr. Reetesh Kumar, Advocate for the complainant.


                W.P.(CRL) 2092-95/2005 & Crl M A 12150/2005, 345/2006


        A.K. WALI & ORS                                               ..... Petitioners
                                         Through Mr. Sanat Kumar with Mr. T.P.S. Kang,
                                                 Advocates

                        versus


        STATE & ORS.                                          ..... Respondents
                                 Through Mr. Rajat Katyal, Advocate for State with SI
                                 Anil Kumar, DIU (NB)
                                 Mr. Reetesh Kumar, Advocate for the complainant.

                                   and

                W.P.(CRL) 2-4/2006 & Crl M A 347/2006


        AMIT BHASIN & ORS                                         ..... Petitioners
                                         Through Mr. Sanat Kumar with Mr. T.P.S. Kang,
                                                 Advocates

                        versus


        STATE & ORS.                                            ..... Respondents
WP (Crl) Nos. 2043-45/05, 2092-95/05,2-4/2006                                       Page 1 of 8
                                 Through Mr. Rajat Katyal, Advocate for State with SI
                                Anil Kumar, DIU (NB)
                                Mr. Reetesh Kumar, Advocate for the complainant.

        CORAM:
        HON'BLE DR. JUSTICE S.MURALIDHAR

         1. Whether Reporters of local papers may be

             allowed to see the judgment?                                  No

         2. To be referred to the Reporter or not?                         No

         3. Whether the judgment should be reported in                     No

             Digest?
                                   ORDER

% 30.01.2009

1. These three petitions under Section 482 of the Criminal Procedure Code,

1973 („CrPC‟) seek the same relief and are being disposed of by this common

order. The relief sought is that FIR No. 1/2005 dated 16 th November 2005

registered at Police Station IITF, Pragati Maidan under Sections 420/120-B IPC

and all further proceedings consequent thereto be quashed.

2. The FIR in question, registered at the instance of a complainant, narrates that

he visited the India International Trade Fair („IITF‟), Pragati Maidan, New Delhi

on 16th November 2005 and in particular Stall No. 3. When he enquired about the

products on sale, the concerned exhibitor handed over a visiting card of Jolen

International Limited („JIL‟) and two/three pamphlets/hand outs with a discount

coupon mentioning the company‟s name as „Jolen International Limited‟. The

complainant states that he was made to believe that JIL those were goods

manufactured by „Jolen‟ a reputed international brand. The complainant purchased

one hand wash which bore an indication that it was marketed by JIL. He stated

that soon thereafter he visited the adjourning Hall No.4 which turned out to be a

big stall of Jolen products. He was informed that the product which he had

purchased was not a product of Jolen Inc. USA. He was also shown a copy of a

„caution alert‟ public notice published in the „Times of India‟ announcing that the

use of word „Jolen‟ by anyone else had been restrained by the Supreme Court of

India. Accordingly, the informant stated that he felt that he had been cheated by

JIL "a company who induced him to buy their product by showing me word Jolen

(a reputed name in the word cosmetics) on their product and mentioning that the

product is being marketed by the same Jolen."

3. Learned counsel for the Petitioner submits the complaint read as a whole

does not disclose even a prima facie case to proceed against JIL and the other

petitioners (who are directors or employees of JIL) for the offences under Sections

420/120-B IPC. It is submitted that there is a long history of litigation in the form

of civil suits pending between Jolen Inc. USA and JIL in Indian courts concerning

the use of the trade mark „Jolen‟. It is submitted that by an order dated 12 th

January 2005 the Intellectual Property Appellate Board („IPAB‟) rejected an appeal

filed by Jolen Inc. against the order of the Assistant Registrar of Trade Marks dated

11th October 2000 disallowing its opposition to an application filed by JIL. In

another suit filed by Jolen Inc. in the Madras High Court, it had obtained ex parte

injunction restraining JIL from using the name „Jolen International Limited.‟ The

said ex parte injunction was later modified by the learned Single Judge. The

appeal filed by Jolen Inc. against the said order came to be dismissed by the

Division Bench of that High Court on 18th April 2005. Aggrieved by the said order

Jolen Inc filed Special Leave Petition (Civil) No. 16823-25 of 2005 in the Supreme

Court. By an order dated 22nd August 2005 while granting leave to appeal the

Supreme Court directed that "there will an interim order of stay restraining the

Respondents from using the word „Jolen‟ in any manner on any of their cartons

and advertisement."

4. One week after the aforementioned order by the Supreme Court, Jolen Inc. filed

a complaint against the petitioners in the court of the learned Chief Metropolitan

Magistrate („CMM‟), Delhi under Sections 103 & 104 of the Trade Marks Act

1999 („TM Act‟) and Sections 63 and 64 of the Copyright Act, 1957. The

substance of the complaint was that despite the order of the Supreme Court, JIL

had not given up the use of the trade mark „Jolen‟ label as well as the word Jolen as

part of the trade name and had accordingly made itself criminally liable. By a

separate application under Sections 93 and 94 Cr PC Jolen sought the issuance of

general warrants of search and seizure against JIL. On 31st August 2005 the learned

CMM heard the complainant Jolen in part and directed it to file an affidavit clearly

specifying whether it was undertaking any manufacturing activity at present.

5. It was sought to be contended the FIR which was got registered soon

thereafter was an abuse of the process of law since it stemmed from the failure of

Jolen Inc. to persuade the learned CMM to take cognizance and issue summons on

the complaint filed by it. The above contention is premised on the contention that

the substance of the complaint before the learned CMM as well as the FIR is more

or less the same. Counsel for the petitioners referred to the judgments in Syed

Kaleem v. M/s. Mysore Lakshmi Beedi Works 1993 Crl LJ 232 and Mustan

Patel v. State of West Bengal 2002 (25) PTC 241 (Cal) to contend that "where

there are specific provisions in the Trade and Merchandise Marks Act which is a

self contained Act to punish the persons committing offences under the said Act, it

would be improper to resort to Section 420 of IPC, altogether ignoring those

provisions." Relying upon the judgment of the Supreme Court in Suresh Nanda v.

CBI AIR 2008 SC 1414, it is submitted that a special enactment would exclude a

general one and therefore what is punishable in terms of TM Act cannot be made a

subject matter of an FIR for the IPC offences. Finally it is submitted that these are

essentially civil disputes which are sought to be given colour of criminal

proceedings only with a view to harassing the petitioners.

6. This Court does not find substance in the contention that subject matter of the

FIR is no different than that of the complaint filed by Jolen Inc. before the CMM.

The FIR is very specific to an occurrence which took place on 16 th November

2005, nearly three months after the complaint was filed. It talks of a transaction of

purchase by a customer of a product from the JIL stall which according to him he

was deceived into thinking to be the product of Jolen Inc. Without commenting on

the merits of the complaint or the FIR one way or the other this Court is of the

view that the substance of both these separate proceedings cannot be said to be the

same.

7. The judgment in Syed Kaleem turned on facts different from the present case.

There a private complaint was filed before the CMM invoking not only the

provisions of the Trade and Merchandise Marks Act 1958 (the precursor to the

present TM Act) but the IPC offences as well. The learned CMM referred the

complaint to the police for investigation. A charge sheet was filed against the

accused under Sections 420/120B IPC. An order was passed by the learned CMM

thereafter framing charges against accused for those offences. That order was

challenged by the accused on the ground that Sections 420 and 120-B IPC were

wholly inapplicable. It was in the background of the facts that the learned Single

Judge of the Karnataka High Court held that the offences that stood attracted wee

those under the Trade & Merchandise Marks Act and that it would be "improper to

resort to Section 420 of IPC, altogether ignoring those provisions. " On facts it was

held that "it is not possible to make out from the impugned order how and on what

material a charge was ordered to be framed against the accused for an offence

under Section 420 of IPC."

8. The differences in the facts of the facts of the instant case are obvious. In the

instant case, the FIR registered three months after the complaint relates to an

occurrence of 16th November 2005 which does not form the subject matter of the

complaint filed earlier. In Syed Kaleem there was a single complaint invoking both

sets of offences. The Court there was unable to discern from the order framing

charges as to what material existed which could justify invoking the Section 420

IPC. It was in that context it was observed that it was "improper" to invoke Section

420 IPC. Therefore the judgment in Syed Kaleem does not assist the Petitioners.

The judgment of the learned Single Judge of the Calcutta High Court in Mustan

Patel more or less follows the judgment of Syed Kaleem. In any event that

decision again turned on a different set of facts. Para 20 of the said judgment

shows that on a perusal of the case diary the Court found that "there is not the

nearest and faintest whisper about any of the aforesaid ingredients of Section 415"

and therefore, the offence under Section 420 IPC was not made out.

9. In Suresh Nanda the question really was about the power to order impounding

of a passport for which there was a specific provision under the Passports Act,

1967. Therefore it was held that the provisions of the Cr PC could not be invoked

for the purpose. There cannot be any comparison of the said decision with the case

on hand. While the offence under Section TM Act or Copyright Act may get

attracted, it is not possible to agree with the submission that an IPC offence stands

excluded in such a situation. It is perfectly possible that an offender who commits

an offence as described under the TM Act may also have to face prosecution for an

IPC offence as well. One does not exclude the other.

10. Given the scope of the proceedings under Section 482 CrPC this Court is of

the considered view that it is premature to come to a conclusion on the merits of

the case at this stage. It is not possible to agree with the submission of the

petitioners that when the FIR is read as a whole not even a prima facie case for the

offences under Sections 420 and 120-B IPC is made out against the Petitioners.

The contention that pendency of civil litigation between the parties would exclude

the maintainability of criminal proceedings arising out of the same set of facts is

also without merit. It is well settled that arising out of the same set of facts it is

possible to initiate proceedings both under the civil law as well as the criminal law.

11. For the aforementioned reasons this Court does not find any merit in any of

these petitions and they are dismissed as such. The pending applications also stand

dismissed.

12. It is made clear that the observations, if any, made in this order touching on

the merits of the case are not intended to influence the opinion to be formed by any

of the courts subordinate to this Court at any further stage of the pending criminal

proceedings against the Petitioner.

S.MURALIDHAR, J JANUARY 30, 2009 rk