A) ABSTRACT / HEADNOTE

The case of State of Uttar Pradesh v. Hafiz Mohammad Ismail and Hafiz Jawed Ali centers around the sale of counterfeit soap products resembling Sunlight and Lifebuoy, both trademarks owned by Lever Brothers Limited. The accused were convicted under Section 486 of the Indian Penal Code, 1860, by the trial court for selling soaps wrapped in labels resembling those of the genuine products. However, the High Court reversed the conviction on the grounds that the wrappers were merely “colourable imitations” and not “counterfeit.” The Supreme Court, through a detailed interpretation of Sections 28 and 486 IPC, reversed the High Court’s acquittal. It emphasized that exact replication is not necessary under Section 28 IPC and that resemblance likely to deceive is sufficient to constitute counterfeiting. The Supreme Court held that the wrappers were indeed counterfeit and remanded the matter to the High Court for adjudication on remaining issues such as jurisdiction, limitation, and defenses under Section 486 IPC.

Keywords: Counterfeit Trademark, Section 486 IPC, Section 28 IPC, Deceptive Resemblance, Trademark Infringement, Criminal Law, Trade Dress, Colorable Imitation, Supreme Court India, Lever Brothers

B) CASE DETAILS

i) Judgement Cause Title
The State of Uttar Pradesh v. Hafiz Mohammad Ismail and Hafiz Jawed Ali

ii) Case Number
Criminal Appeals Nos. 129-130 of 1957

iii) Judgement Date
9th February 1960

iv) Court
Supreme Court of India

v) Quorum
Justices Jafer Imam, K. N. Wanchoo, and J.C. Shah

vi) Author
Justice K. N. Wanchoo

vii) Citation
(1960) 2 SCR 911

viii) Legal Provisions Involved
Section 28, Section 486 – Indian Penal Code, 1860
Link to Section 28 IPC
Link to Section 486 IPC

ix) Judgments overruled by the Case (if any)
None

x) Case is Related to which Law Subjects
Criminal Law, Intellectual Property Law (Trademarks), Trade & Commerce

C) INTRODUCTION AND BACKGROUND OF JUDGEMENT

This case highlights the significance of consumer protection in trademark law and criminal enforcement against infringement. It also interprets how the Indian Penal Code, specifically Sections 28 and 486, criminalizes counterfeiting. The case revolves around traders in Lucknow who were found to be selling soap with deceptively similar wrappers to that of Sunlight and Lifebuoy, registered trademarks of Lever Brothers Limited. Initially convicted, the accused were later acquitted by the Allahabad High Court. The Supreme Court examined whether these imitations, though not exact, were sufficient to deceive an average buyer and hence amount to counterfeiting.

The Court revisited the ingredients of counterfeiting and emphasized that an exact imitation is not required, expanding the scope of what constitutes deception under trademark law. This case established an important precedent by defining counterfeiting under criminal law in the context of visual deception and trade dress imitation.

D) FACTS OF THE CASE

The complainant, Bhagwan Swarup Saxena, a Trade Mark Investigator for Lever Brothers Limited, reported counterfeit soaps being sold in Yahiaganj, Lucknow. Two respondents, Hafiz Mohammad Ismail and Hafiz Jawed Ali, were found possessing and selling soaps with labels resembling Sunlight and Lifebuoy brands. A raid conducted by police on 19 May 1953 recovered a significant quantity of soaps bearing deceptive labels. These were not manufactured by Lever Brothers, but designed to resemble their products in color, size, and printing.

The trial court found that these wrappers were intended to deceive and convicted both respondents under Sections 482 and 486 IPC. On appeal, the Sessions Court upheld the conviction. However, the High Court reversed the judgment, holding that while there was resemblance, it was not sufficient to amount to “counterfeiting.” The High Court stated that the wrappers were colourable imitations, not counterfeits, as defined under IPC.

E) LEGAL ISSUES RAISED

i) Whether wrappers and labels used by the respondents resembled those of Sunlight and Lifebuoy soaps to the extent that they would deceive an average person.

ii) Whether the High Court erred in interpreting “counterfeit” under Section 28 IPC by excluding wrappers with partial or inexact resemblance.

iii) Whether intent or knowledge of deception is presumed under Section 28 when resemblance is deceptive.

iv) Whether Section 486 IPC is applicable when the goods sold bear such deceptive labels and trademarks.

F) PETITIONER/ APPELLANT’S ARGUMENTS

i) The counsels for Petitioner / Appellant submitted that the High Court failed to consider Explanation 1 and 2 to Section 28 IPC. They argued that resemblance need not be exact and that deception could still result from partial similarities[1]. They further asserted that the term “colourable imitation” is absent in the statutory language of Section 28 and hence should not influence the court’s interpretation.

They emphasized the principle enshrined in Explanation 2 to Section 28 IPC, which establishes a presumption of intent to deceive if the resemblance is such that a person might be deceived[2]. The counsel contended that the lower courts correctly applied the legal standard, and the High Court erred in adopting a stricter standard not envisaged by the IPC.

Citing comparative similarity in the get-up, design, color scheme, and placement of brand elements, they argued that the counterfeit nature of the labels was evident and could deceive even a careful customer. They relied on the precedent that “similarity in trade dress and get-up is sufficient to constitute counterfeiting” if it creates confusion, referring to Cadbury India Ltd. v. Neeraj Food Products, 2007 (35) PTC 95 (Del)[3].

G) RESPONDENT’S ARGUMENTS

i) The counsels for Respondent submitted that the wrappers used were different in detail and could not deceive a person with ordinary prudence. They emphasized that since the labels were not exact replicas, they did not qualify as counterfeits under the law[4].

They relied on the High Court’s finding that these were “colourable imitations”, suggesting a lower degree of resemblance insufficient to mislead customers. They maintained that resemblance in packaging was not sufficient unless it caused actual confusion. They argued for a stricter test of deception and emphasized lack of mens rea in the absence of intent to deceive.

The respondents also reserved their right to raise issues related to jurisdiction, limitation, and possible protections under clauses (a), (b), and (c) of Section 486 IPC, asserting that these were not considered during prior proceedings.

H) RELATED LEGAL PROVISIONS

i) Section 28 of Indian Penal Code, 1860: Defines counterfeiting as creating resemblance with an intent to deceive or knowledge that deception may result.
Read Section 28 IPC

ii) Section 486 of Indian Penal Code, 1860: Penalizes use of counterfeit trademarks for sale or trade.
Read Section 486 IPC

iii) Explanation 1 – States that exact imitation is not essential.
Explanation 2 – Presumes intent to deceive if resemblance may deceive a person.

I) JUDGEMENT

a. RATIO DECIDENDI

i) The Supreme Court ruled that counterfeiting does not require exact imitation. It clarified that “colourable imitation” is not a recognized statutory term under IPC. The Court emphasized that if the resemblance is sufficient to deceive, then under Explanation 2 of Section 28, a presumption of intent to deceive arises unless rebutted[5].

The Court held that the wrappers used by the respondents were counterfeit as per Section 28 IPC because the design, color, and arrangement closely resembled that of the genuine soaps and could deceive consumers.

The Court also emphasized that the High Court erred by focusing on differences in detail and by failing to consider the statutory presumption under Explanation 2.

b. OBITER DICTA

i) The Court noted that “mere difference in minute details cannot prevent resemblance amounting to deception”. It reaffirmed that even non-exact copies fall under counterfeiting if deceptive resemblance exists. The decision placed the burden of proof on the accused once initial resemblance is established.

c. GUIDELINES 

• Exact similarity is not required for establishing counterfeiting under IPC.

• Intent or knowledge of deception is presumed under Explanation 2 of Section 28 if resemblance is such that a person might be deceived.

• Courts must analyze resemblance from the perspective of an average consumer.

• Courts must not use extra-statutory terminology like “colourable imitation” to dilute the effect of statutory provisions.

• Once resemblance is established, the burden shifts to the accused to rebut presumption under Section 28 IPC.

J) CONCLUSION & COMMENTS

This decision strengthens criminal enforcement of trademark rights in India by expanding the interpretation of what constitutes “counterfeit.” The Court’s clarification that exact imitation is not necessary promotes stronger protection for consumers against deceptive packaging. It reinforces the burden-shifting mechanism under Explanation 2 of Section 28 IPC and discourages defendants from relying on minor differences in packaging to evade liability. The judgment underscores the importance of visual deception in trade-related crimes and sends a clear signal that commercial exploitation of brand reputation through deceitful resemblance will attract criminal liability.

K) REFERENCES

a. Important Cases Referred
[1] Cadbury India Ltd. v. Neeraj Food Products, 2007 (35) PTC 95 (Del)
[2] State of Uttar Pradesh v. Hafiz Mohammad Ismail and Hafiz Jawed Ali, (1960) 2 SCR 911

b. Important Statutes Referred
[3] Section 28, Indian Penal Code, 1860
[4] Section 486, Indian Penal Code, 1860