1. ' In the instant case, on 11-12-2000 a Ise vide F.I.R. No,387 of 2000 was ;istered in Police Station Gulshan-e-Ravi the complaint of Mian Muhammad Pique under sections 420/488/489/482/ '486/487, P.P.0 read with sections 56, , 66/74, 66-B, 65-C and 67/70-A of the Copyright Ordinance, 1962 against the present petitioner.
2. Facts of the case are that complainant Muhammad Shafique shows himself being a representative of Keune Cosmetic Holland and is their attorney in Pakistan. He also stated in the complaint that he is competent to proceed against those persons who forged their trade mark for Cosmetic products. It was further stated that Keune firm has not given manufacturing or packing right to any individual or company. The first informant checked factory of Nasir Mustafa alongwith his own colleagues and found that Nasir Mustafa alongwith his son Adnan Nasir were preparing forged Cosmetic which prima facie proves that it belong to Holland but in fact it did not belong to Holland. In this process, Adnan Nasir, Mushtaq Ahmad Butt, Iftikhar Butt, Basharat Butt and Nadeem Sohail are abetting the petitioner in the said offence. It was further stated that these accused mentioned above are deceiving the public at large in Pakistan and so they have committed the above said offences.
3. Learned counsel for the petitioner submits that as far as petitioners firm is concerned, i.e, known as Shauns Hair Cosmetic and its products is known as Keune Message Cream, that petitioner's company deals in manufacture of skin cosmetics etc.. Since 1968 and the Keune Massage Cream was introduced in Pakistan in 1990, that on 23-12-1994, petitioner's firm applied for registration through Application No,123221 for the Trade Marks and the Registrar accepted that application, ultimately, having processed the matter, got it published in the Trade Marks General No,563 at page 934 in December, 1997, that complainant firm deals in hair cosmetic also applied for registration on 4-10-1994 through At" No,126393 and the said application is also pending, that on 28-11-2000 complainant firm filed a civil suit regarding the same issue without disclosing that matter between the parties is pending before Registrar, Trade Marks and got the stay order without disclosing the actual facts and thereafter, with mala fide intention and in connivance with the local police lodged the instant F.I.R. Just to humiliate the petitioner and to disgrace him in the eyes of public at large, that there is special law called as Trade Marks Act, 1940. It is contended that when there is a special enactment, that would prevail upon general enactment and special procedure in this regard would be adopted. He has also relied upon sections 20 and 21 of the Trade Marks Act, 1940, that no action of infringement could be initiated against the petitioner, that matter between the parties is of civil nature which is already pending in the Court of Miss Uzma Chughtai, learned Additional District Judge, Lahore, that no criminal liability is made out against the petitioner and no offence is also made out against him, that complainant had no right to get a case registered against the petitioner and also to file a civil suit. He has also relied upon NLR 2000 SC 522. At this stage, learned counsel submits that in the written statement complainant has admitted that his firm is not registered with Registrar, Trade Marks and the judgment which has been relied upon by the complainant in his written statement i.e, title as Riasat Ali v. Asad Rafique and others PLD 1987 Lah. 257 is totally distinguishable from the facts and circumstances of the present case because learned Judge has relied upon on some pre-partition judgments when the present Trade Marks Act, 1940 was not in existence. He has also referred to section 478, P.P.C. Which was amended later on in 1981, that no case is made out against the petitioner from the facts and circumstances as narrated in the F.I.R. And the law cited by him, therefore, the F.I.R. In question may be quashed.
2. ' On the other hand, learned Additional Advocate-General submits that till today both the parties have not got the Trade Marks registered as prescribed under the law, that they should avail their remedy before the learned Additional District Judge, Lahore where the civil suit is pending and also before the Registrar, Trade Marks where the applications of both the parties are pending.
3. ' On the other hand, learned counsel for the complainant submits that Mr. Jan Keune of Holland had established his firm in 1922 with the name and style of "Keune Hair Cosmetics" B.V. Karingsweg 15,3762 EA Soest, Holland (Netherlands) which is presently run by his son, George Keune. At this stage, learned counsel for the complainant submits that this petition was filed by Nasir Mustafa father of Adnan Mustafa, who has since died after filing the writ petition, that Adnan Mustafa Gould not become a party in this case, if there was any necessity for filing the writ petition he could have filed a separate petition, as he is only a co-accused, that this petition is not maintainable in view of the judgment laid down PLD 1985 SC 46 and PLD 1998 SC 67, that in view of section 54 of Copy Right Ordinance, 1962, registration of Trade Marks is not necessary, that since Pakistan is the member of Berne Convention and in view of the notification issued by the Federal Government of Pakistan vide SRO99(KE)2000, dated 8-6-2000 issued under section 54 of the Copy Right Ordinance, 1962, as well as the International Copy Right Order, 1968, that this business is being carried out for the last more than 70/80 years, that this trade/property Jan Keune is registered in at least 42 Countries of the world, that applications for registration of the Trade Marks are pending in 17 countries including the Pakistan, that goods falling within class 3 of Fourth Schedule to the Trade Marks Rules, 1963 are being . Manufactured by aforementioned cooperative body, that in May, 1993, Lahore Marketing Cooperative Private Limited was appointed by Keune Hair Cosmetics as the sale and distributor of their goods in the territory of Islamic Republic of Pakistan, that on 12-8-1993 Messrs Shaun Cosmetics, who were previous" doing the business under the name of Golden Girl, exported cosmetic goods with the Trade Marks, Messrs Jan Keune Hair Cosmetics Trading Company, U.A.E., that on 26-5-1994, there was a mutual agreement between George Keune and Mr. Sohail, that in fact, petitioner's firm is doing the business in the name of complainant firm, that the word Keune cannot be used by the petitioner because it is property of the complainant, that petitioner party has also tiled Civil Suit. He has read before me section 54 of the Copy Right Ordinance, 1962. He submits that recovery effected from the petitioner proves the allegations levelled In the F.I.R. He has relied upon 1987 SCMR 1590, PLD 198,,Lah. 257, PLD 2000 Kar. 139, PLD 1975 SC 33, International Copy Right Order, 1968, PLD 1971 SC 677 (69293), PLD 1994 SC 281 (282-3), 1994 SCMR 2142 and 1999 MLD
881. After relying on the above-noted judgments he submits that all these authorities are to the effect that registration is not necessary for registering any Trade Mark.
4. ' Learned counsel for the petitioner while reply the arguments of learned counsel for the complainant submits that judgments relied upon by learned counsel for the complainant are to the effect of injunction and not about the quashment of the F.I.R. Or about any criminal liability, that case of the complainant does not fall within the Copy Right Ordinance and in this regard he has referred section 3 of the Copy Right Ordinance, 1962.
5. ' I have given my anxious consideration to the contentions of learned counsel for the parties and law on the subject and also perused the record with care. There are two recovery memos. Dated 4- 1-2001 on the file which show that after the registration of the case the complainant himself produced before the Investigating Officer three cosmetic items containing trade mark Keune Holland and cosmetic items allegedly taken into possession from Nasir Mustafa accused by the police containing writing Keune Cream made in Pakistan.
6. ' A preliminary objection as to maintainability of this writ petition has been raised by learned counsel for respondent No,2 that originally Nasir Mustafa Feroze father and co-accused of the present petitioner Adnan Nasir had filed the writ petition, he died during the pendency of that writ petition, thus, the writ petition has become infructuous with the death of Nasir Mustafa Feroze and present petitioner could not get himself substituted in place of his father, which I would like to.
7. Dispose of at the outset. A miscellaneous application had been filed before this Court by present petitioner for impleading him as party/petitioner and sam was allowed by this Court on 23-1-2001 an thereafter, present petitioner filed an amend writ petition. Proceedings in writ petition pari materia with suit and provision of Orde 22 of C.P.C. Is applicable to the writ an writ petition will not abate on death of one petitioner and person represented can continue the proceedings and once application to bring legal representativ having common grievance and seeking sam relief is on the file to implead him as party he can take up the case from the stage at which it was at the time of death of Nasir Mustafa Feroze deceased/petitioner. Another objection raised by learned counsel for respondent No,2 is that "proceedings were stayed by this Court and it should be allowed to take its usual course and is not to be stiffled or killed in its incubation". Reliance inter alia is placed on Shehnaz Begum v. Honourable Judges of High Court Sindh and Balochistan PLD 1971 SC 677. It was held by the apex Court in 1986 SCMR 1934, Anwaar Ahmad v. State 1996 SCMR 24 and Muhammad Latif, A.S.-I. v. Sharifan Bibi 1998 SCMR 666 that Shahnaz's case does not give free hand to police to run investigation according to their whims and High-Court in exercise of its Constitutional jurisdiction is competent to pass appropriate orders, where investigation is mala fide or without jurisdiction. In this view of the matter, I have no hesitation in repelling the preliminary objections raised by learned counsel for respondent No,2.
8. ' Now coning up to the merits of the case, after hearing the learned counsel for the parties in support of their respective contentions I find that what needs to be resolved in this matter is as to whether in order to constitute an offence of counterfeiting Trade Mark under Pakistan Penal Code that trade mark should be a registered trade mark under the Trade Mark Act (VI of 1940) or its registration is not necessary. In the present case, the fact which cannot be disputed is that admittedly respondent's Trade Mark "Keune" is not yet registered in Pakistan.
9. ' It is contended by learned counsel for respondent No,2 that though Keune Trade Mark is not yet registered in Pakistan but by virtue of membership of Pakistan of Berne Convention for the production of Artistic and Literary Works, 1984, the Universal Copy Right Convention, 1952 as well as section 54 of Pakistan Copy Right Ordinance, 1962 and International Copy Right Order, 1968, the respondent's Trade Mark Keune is entitled to protection. The case reported in Dabur India Ltd. v.
10. Hilal Confectionary (Pvt.) Ltd. PLD 2000 Kar. 139 has been cited by learned counsel for respondent No,2 in support of his contention. Case referred by learned counsel for respondent No,2 is a civil miscellaneous application wherein plaintiff was legally owner of "Copy Right of Hajmola Candy Wrappers" in India, his contention was that Pakistan, was signatory to "Berne Convention", therefore, plaintiff was entitled to Copy Right Protection in Pakistan, therefore, it was held that copy right of plaintiff was entitled to protection under the law of Pakistan which are governed under the provision of Copy Right Ordinance, 1962 and under section 54 of Copy Right Order (Power to extend copy right to foreign work published in foreign country), the plaintiff was entitled to such protection.
11. I have not been able to persuade myself to agree with the contention raised by learned counsel for respondent No,2 and case referred in this regard is also not relevant for the present controversy. In the present case, it is neither plea of the respondent that he is legally owner of copy right of Keune in any country signatory to Berene Convention nor this issue is covered by Copy Right Ordinance, 1962, as according to section 3 of Copy Right Ordinance, 1962, it only applied to (i) literary work (books publication etc.) (ii) Artistic Work (Drama etc.) and (iii) Musical Work (Audio visual work) and by some author or publisher, same is registered with Registrar Copy Right rather the record of the instant case reveals that during investigation provisions of Copy Right Ordinance, 1962 were deleted by the police as they were not applicable in the case in hand. The other cases relied upon by the learned counsel for respondent No,2 to the effect that registration of a Trade Mark is not necessary, also do not support his case as facts and circumstances of this case and those cases are different from the facts and circumstances of the present case. Almost all these cases are regarding filing of Civil Suits for infringement of Trade Mark and injunction applications, which is proper remedy in such-like cases and no question of ,riminal liability was raised or discussed in the cited cases.
12. ' The main argument of learned counsel for the petitioner is that the instant case could not have been registered against the petitioner etc. As there is a specific bar under sections 20 and 21 of the Trade Mark Act, 1940 for initiating any action for infringement of unregistered Trade Mark. The two provisions (sections 20 and 21 of the Trade Mark Act, 1940) read as under:-- "Section 20. No action for infringement of unregistered trade mark.---(1) No person shall be entitled to institute any proceeding to prevent, or to recover damages for, the infringement of an unregistered trade mark unless such trade mark has been continuously in use since before the 25th day of February, 1937, by such person or by a predecessor-intitle of his and unless an application for its registration, made within five years from the commencement of this Act; has been refused; and the Registrar shall, on application in the prescribed manner, grant a certificate that such application has been refused.
(2) Nothing in this Act shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or the remedies in respect thereof.
13. ' Section 21. Right conferred by registration.---(1) Subject to the provisions of sections 22, 25 and 26, the registration of a person in the register as proprietor of a trade mark in respect of any goods shall give to that person the exclusive right to the use of the trade mark in relation to those goods and, without prejudice to the generality of the foregoing provisions, that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered and in such manner as to render the use of the mark likely to be take either--
(a) as being used as a trade mark, or
(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."
14. ' There cannot be any cavil with the principle of interpretation of statutes that whenever there is a general enactment and a particular enactment the later would override the former and special law will prevail and special procedure must be followed and not the ordinary. From reading the above provisions it becomes obvious that due to bar contained in section 20 of Trade Marks Act, 1940, no action for infringement of unregistered trade mark can be initiated.
15. ' Learned counsel for respondent No,2 has referred the case Riasat Ali v. Asad Rafi and another reported in PLD 1987 Lah. 257 wherein a learned single Judge of the Lahore High Court while construing section 479, P.P.C. Had inter alia held, that "in order to constitute an offence under section 482, P.P.C., it is not necessary that the trade mark Must be registered". It is a matter of great concern that said judgment is based on the judgments AIR 1925 Cal. 149, AIR 1929 Rang. 322 and AIR 1930 Oudh 360, and when these judgments were passed prevailing special law on the subject i.e, Trade Mark Act, 1940 was not in existence and even it was held in those judgments that in India "in those days there was no method by which a Trade Mark could be registered and registration of the Trade Mark was not necessary in India".
16. ' I have gone through the above cited judgment, it may be advantageous to reproduce the relevant part from the judgment referred to hereinabove.: "The definition of trade mark in section 478, P.P.C. Is not exhaustive. According to this provision of law, a mark used for denoting that the goods are the manufacture or merchandise of a partiular person is called a trade mark. It also includes trade mark registered under the Trade Marks Act, 1940. The word 'Include' in this section indicates that the definition is not exhaustive or confined to the trade mark registered under the Trade Marks Act. Trade Mark property can be acquired by user as well. A mark to be a trade mark must be a mark used for denoting .That goods are the manufacture or merchandise of a particular person. It must be some visible or concrete designe affixed to goods to indicate that they are the manufacture of the person whose property the trade mark is. A mark which from long use has come to be associated in the market that goods are manufactured by a particular person is his trade mark. To determine whether a mark has become a trade mark, the Court is to take into consideration the extent to which its use has rendered the mark in fact distinctive of the goods in question. It is, therefore, not necessary that in order to constitute an offence under section 482, P.P.C. The trade mark must be a trade mark registered under the Trade Mark Act. It was held in Lakhan Chandra Basak and another v. King Emperor AIR 1925 Cal. 149 that 'a mark used in six years can become trade mark within section 482, P.P.C.' In Muhammad Raza v. The Emperor AIR 1929 Rang. 322, it was held that ' where a trade mark in question is distinctive mark which the firm has been using over ten years, the firm using it acquired property in that mark as indicating that all goods which bear it have been manufactured by the firm and any flagrant immitation of the same will bring the act within purview of section 482.
17. Registration of the trade mark is not necessary to complete the title to trade mark in India'. In P.A.
18. Pakir Muhammad v. Emperor AIR 1930 Oudh. 360, it was held that in India there is no method by which a trade mark may be registered by property in or in respect of a mark may be acquired by user'. The above cited judgments were delivered before enforcement of Trade Marks Act, 1940. In spite of that I am of the view that the definition of Trade Mark as provided in' section 478, P.P.C. Is not exhaustive."
19. ' I have every respect for the view expressed by the learned Single Judge but in my humble opinion he 'has taken an incorrect view on the subject which is not in consonance with the special provisions of sections 20 and 21 of Trade Mark Act, 1940. The learned Single Judge might be influenced by word "include" in section 478, P.P.C. But he overlooked the reason of its insertion.
20. Learned counsel for the petitioner has drawn my attention to the old original provisions of section 478, P.P.C. Which was substituted by Ordinance XXVII later on in 1981. It will be beneficial to reproduce hereinbelow the old provisions of section 478, P.P.C. And also amended one in order to arrive at a just decision of the matter.
(1) Section 478, P.P.C. (before amendment)
21. "Trade mark. A mark used for denoting that goods are the manufacture or merchandise of a particular person is called a trade mark, and for the purposes of this Code the expression 'trade mark' includes any trade mark which is registered in the register of trade marks kept under the Patents, Designs and Trade Marks Act, 1883, and any trade mark which, either with or without registration, is protected by law in any British possession or foreign State to which the provisions of the one hundred and third section of the Patents, Designs and Trade Marks Act, 1883, are under Order-in-Council, for the time being applicable." (underlining is for emphasis)
(2) Section 478, P.P.C. (after amendment)
22. "Trade Mark.--- A mark used for denoting that goods are the manufacture or merchandise of a particular person is called a trade mark, and for the purposes of this Code the expression 'trade mark' includes any trade mark which is registered in the register of trade marks kept under the Trade Marks Act, 1940 (V of 1940)."
23. ' From reading of the above sections, it becomes crystal clear that word "include" which influenced the learned Single Judge was for the purposes of including the registered trade mark and trade mark though were not registered at that time but were protected by law prevailing in the area in British possession. The judgments which were relied upon by the learned Single Judge were delivered when law on the subject was different and there was no special law on the subject, that is, Trade Mark Act, 1940 and definition of trade mark was not exhaustive but in 1981 relevant provisions of section 478, P.P.C. Were amended and definition of trade mark are confined to those trade marks which are registered in the register of Registrar, Trade Mark and to my view the said provisions were purposely amended to bring the same in line with the special provisions of section 20 of Trade Marks Act, 1940. If the said provisions of law had been brought into the notice of learned Single Judge, his view might have been different. Now the present prevailing law is that a person is said to counterfeit a trade mark within the meaning of sections 478/480, P.P.C. Only when pre- requisite conditions i.e, registration of the trade mark in 'Pakistan is fulfilled.
24. ' It is also to be noted that had the petitioner committed any offence of counterfeiting the trade mark under Pakistan Penal Code then why the complainant waited for more than seven years in lodging the F.I.R. The complainant initially applied for registration of trade mark "Keune" on 4-10- 1994 and admittedly at that time it was in the knowledge of the complainant that petitioner was much prior applicant and user of the same trade mark, therefore, complainant himself filed a civil suit regarding the same issue before District Judge, Lahore, prior to the registration of the F.I.R. And the fact that complainant resorted to civil proceedings in the first instance shows that a civil dispute if at all regarding proprietorship of the trade mark "Keune" existed between the parties and criminal proceedings have been initiated with ulterior motive just to pressurize the petitioner's party which amounted to abuse of process of law.
25. ' The upshot of the above discussion is that no case of counter-feiting of trade mark is made out against the petitioner, accordingly, writ petition is accepted and the F.I.R. In question is hereby quashed.
26. F.I.R. Quashed..