1932 Present : Macdonell C.J., Garvin S.P.J., and Dalton J.

SAHIB v. MUTHALIP.

903-P. C. Colombo 21,378.

Trade mark-Similarity of device-Calculated to deceive-Use in course of trade-Intent-Merchandise Marks Ordinance, No. 13 of 1888, s. 3 (d) (a), (b), (d), (3) (2).

  A trade mark is calculated to deceive, by its resemblance to another on the register, if in the probable course 6f its legitimate use in the trade it is likely to do so.

To establish the offence of forging a trade mark under section 3(1) (a) of the Merchandise Marks Act it is not necessary to show that there was any intent on the part of the accused to deceive anyone.

THE accused was charged with offences against the Merchandise Marks Ordinance, No. 13 of 1888, in that he contravened section 3 (1) (a), by forging registered trade mark No. 1,651 consisting of the device of two ovals and the word ' Moulana'; section 3 (1) (b), by falsely applying to certain sarongs a mark so closely resembling the mark aforesaid as to be calculated to deceive ; section 3 (1) (d), by applying a false trade description to the said sarongs, which was reasonably calculated to lead persons to believe that the sarongs were the manufacture or merchandise of the proprietors of registered trade mark No. 1,651, and under section 3 (2), by selling, exposing for sale, and having in his possession for purposes of trade, the goods aforesaid to which a forged trade mark and a false trade description had been applied. He was found guilty and on appeal against the conviction, the case was heard by Jayewardene A.J., who referred it to a Bench of three Judges.

H. V. Perera (with him Choksy, J. R. Jayawardene, and S. Alles) for accused, appellant.- under the Merchandise Marks Act of 1888 the person charged with forging a trade mark must have the thing forged present in his mind before he can be convicted. The prosecution must prove the forgery involved and the necessary mens rea. They may be complete imitation without intent to defraud, Gridley v. Swinborne [1 5 T. L. R. 71. ].

The complainant's mark is a common embellishment. Circles and such geometric designs are often used by traders: The complainant's case is that his trade mark is the design with the circles and not the word ' Moulana' within the circles. To find the accused guilty of imitating a common design such as a mere circle, the intention to defraud is necessary. Every element of the offence must be proved beyond reasonable doubt (Singer Manufacturing Co. v. Wilson [2 L. R. (1875) 2 Ch. D. 434, at p. 447.]).

There is further no evidence that any buyer has been deceived. Such evidence is easily procured and is essential, Cope v. Beckett [3 (1874) IS Equity 136. ], see also Davis v. Cunie[4 (1918) 1 K. B. 100.]

The opinion of a person that somebody else would be deceived is not evidence, Hennessey v. Keating [ 5 25 R. P. C. 125.].

The complainant's intention has been to ruin the accused's trade and to disgrace him. This case should have been heard in a civil Court as there is a bona fide dispute between the parties, see Dowlat Ram v. Rex [6 L. R. 32 Cal. 431.].

Garvin (with him Vangeyzel), for complainant, respondent.-We rely on the finding on the facts by the Police Magistrate. The complainant has merely to prove the similarity of the marks. If the accused's mark is similar, and that is a question of fact, the dishonest intention to imitate is presumed. For the meaning of the phrase " calculated to deceive" see Kerly on Trade Marks (4th ed.) p. 260 and 10 R. P. C. 401, 406. The test to be applied is what impression do the two marks, when placed side by side, make on the mind. North Cheshire Brewery Company v. The Manchester Brewery Company [7 3 R. P. C. 54 (1899) A. C. 83.] gives the test that should be applied.

The complainant has jealously guarded his trade mark for many years and even brought civil actions against other traders. This Ordinance is not merel