By Heena Thalesar, Advocate
firstname.lastname@example.org | April 28, 2021
BACKGROUND OF THE CASE:-
Recently, in a judgement delivered by the Hon’ble Bombay High Court in Prateek Chandragupt Goyal vs. State of Maharashtra and others (Criminal Writ Petition No. 62 of 2021), it has quashed an FIR registered by Pune City Police against one Journalist Mr. Prateek Chandragupt Goyal for using logo of “Sakal Media Group” in two articles which were published on 27 March 2020 and 11 June 2020 respectively on an online news portal “news laundry”. The case was registered at Vishrambag Police Station at Pune for an offence under Section 103 of Trademarks Act, 1999.
FACTS OF THE CASE: –
In the present case, the Petitioner sought quashing of FIR and further contended that the ingredients of the said offence are not made out in the facts and circumstances of the present case and that, therefore, the FIR deserves to be quashed. The Petitioner is a Journalist working with online news portal ‘News laundry’. It is stated that he had earlier worked with other Media entities, including ‘Sakal Times’. According to the Petitioner, he specializes in investigative journalism and that he has been working in this field since the year 2012. The FIR has been registered against the Petitioner at the behest of Respondent No.2 (original informant), who is the Chief Administrative Officer of Sakal Group, that publishes newspapers in Marathi language called ‘Sakal’ and in English language called ‘Sakal Times’. The Respondent No. 2 approached the Police for registration of FIR on 16th September, 2020 claiming that the Petitioner committed the above offence by falsely applying trade mark of Sakal Group in two articles authored by him and published in the aforesaid news portal called ‘News laundry’. The two articles were published on 27th March, 2020 and 11th June, 2020.He further contended that in the said articles, the registered trade mark of the Sakal Media Group and Sakal Times was shown with prominence at the top. In the article published on 27th March, 2020, the heading was ‘The future is bleak: Sakal Times staffers say they have been sacked in violation of Maharashtra Order’. In the article published on 11th June, 2020, the heading was ‘They wanted to get rid of us: over 50 people laid off as Sakal Times closes down’. According to Respondent No.2 these were highly defamatory articles against Sakal Media Group and that use of the official logos / trade mark of the Sakal Media Group and Sakal Times on these articles clearly amounted to falsely applying the said trade mark, thereby resulting in commission of an offence under Section 103 of the Trademark Act, 1999. In the FIR, it was stated that the offence was committed from 27th March, 2020to 11th June, 2020and, as noted above, the FIR, stood registered after three months on 16th September, 2020. It is significant that prior to lodging the complaint, leading to registration of FIR, a legal notice dated 12th June, 2020, was sent to the Petitioner alleging that the Sakal Media Group was defamed by him and an amount of Rs.65,00,000/- was claimed from him. 19th June, 2020, the Petitioner sent a reply to the said legal notice. On 03rd September, 2020, the Sakal Media Group filed a suit for injunction against the News laundry Media Pvt. Ltd. seeking an injunction against the said defendant and the Petitioner for removing the said articles from the news portal. The present writ petition was filed in October 2020, wherein notice was issued and it was directed that while the investigation shall continue, the charge sheet could be filed only with the leave of this Court. Thereafter, on 27th January, 2021, this Court recorded statement made on behalf of the Petitioner that he would appear before the Investigating Officer on a specific date and it was directed that the Investigating Officer shall not insist for production of laptop and hard disk by the Petitioner.
CONTENTION OF THE PETITIONER: –
The trade mark of Sakal Media Group was shown in the articles written by the Petitioner and published on the news portal ‘News laundry’, only to indicate that those specific articles pertained to the Sakal Media Group. In these circumstances, there was no question of the said trade mark being falsely applied to any goods or services, so as to attract the ingredients of the aforesaid offence. Additionally, and without prejudice to the aforesaid submissions, the learned Senior Counsel for the Petitioner submitted that the action of the Petitioner was protected as a nominative fair use of the trade mark of Sakal Media Group under Section 30(1)(a) and (b) of the Trademarks Act, 1999.
CONTENTION OF THE RESPONDENTS: –
Learned Counsel appearing for Respondent No.2 submitted that admitted facts in the present case demonstrated that ingredients of the offence under Section 103 of the aforesaid Act were prima facie made out and there was no question of quashing of FIR. By referring to Section 103 of the aforesaid Act, the learned Counsel appearing for Respondent No.2 submitted that in the present case, the Petitioner had clearly falsely applied the registered trade mark of Sakal Media Group by prominently showing the mark on articles published on the news portal ‘News laundry’. It was submitted that when the word ‘Sakal’ was clicked on online search, it led to the said articles authored by the Petitioner and published on the news portal ‘News laundry’, thereby demonstrating that the offence under Section 103 of the said Act was indeed committed in the present case. The learned Counsel emphasized upon Section 102(2)(b) of the said Act in support of the said contention and submitted that since Sakal Media Group and the news portal ‘News laundry’ were in the same segment of providing news services, the offence was clearly committed in the facts and circumstances of the present case. The learned Counsel for the Respondent No.2 relied upon judgment of the Madras High Court in the case of Consim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. and Ors. 2010(6) CTC 813 and judgment of Delhi High Court in Hawakins Cookers Ltd. Vs. Murugan Enterprises 2012 SCC OnLine Del 2118. It was further submitted that merely because Respondent No.2 had filed a Civil suit for injunction against News laundry Media Private Limited, it could not result in the criminal proceedings being terminated at this stage.
The Hon’ble High Court held that “Mere use of the registered trade mark of the Sakal Media Group in articles authored by the Petitioner and published by the news portal ‘News laundry’, do not fit into the definition of false application of the trade mark in relation to goods or services.” It is an admitted position that the articles were published in the online news portal ‘News laundry’ and there was no suggestion that the said news portal itself was that of ‘Sakal’. Merely because an online search for the word ‘Sakal’ led to the aforesaid articles of the Petitioner published in the news portal ‘News laundry’, does not mean that the registered trademark of Sakal Media Group was falsely applied to goods or services by the Petitioner. At worst, it could be said that such an online search leading to the aforesaid articles might be the subject matter of an injunction suit at the behest of Sakal Media Group due to the contents of the said articles, but, that falls within the realm of a civil dispute that could be raised by Pisal. In fact, Pisal did issue a Notice on behalf of the Sakal Media Group (claiming Rs 65 lakh for defamation) and chose to file a suit for injunction before the competent Civil Court, which is pending.
For use of registered trademark of the Sakal media group in the article authored by Prateek Gupta Goyal and published by the news portal news laundry do not fit into the definition of false application of the trademark in relation to goods and services.