By Priya Adlakha and Tanvi Bhatnagar
Sakal Media Group (SMG) registered a First Information Report (FIR) against a Journalist Prateek Chandragupt Goyal at Police Station Vishrambaug, Pune for offence under Section 103 of the Trade Marks Act, 1999, against which, the accused/Petitioner filed a Quashing Petition in the Hon’ble Bombay High Court. As an interim relief, it was directed that while the investigation shall continue, the charge-sheet could be filed only with the leave of the Hon’ble High Court. Petitioner’s statement was also recorded that he would appear before the Investigating Officer (IO) on a specific date and it was directed that the IO shall not insist for production of laptop and hard disk by the petitioner. Those interim orders, continued till the final hearing and disposal of the Quashing Petition.
The accused/Petitioner herein is a journalist, working with online news portal ‘Newslaundry’. He earlier worked with other Media entities, including ‘Sakal Times’. The Petitioner specializes in investigative journalism and that he has been working in this field since the year 2012.
Respondent SMG, which publishes newspapers in Marathi language called ‘Sakal’ and in English language called ‘Sakal Times’, registered a FIR against the Petitioner in September 2020, alleging that he committed an offence under Section 103 of the TM Act, by falsely applying trade mark of SMG in two articles authored by him and published in ‘Newslaundry’.
In the said two articles, the registered trade mark of the SMG and Sakal Times was shown with prominence at the top. The first article dt. March 27, 2020 was published with the heading ‘The future is bleak: Sakal Times staffers say they have been sacked in violation of Maharashtra order’. Second article was published on June 11, 2020, with the heading ‘They wanted to get rid of us: over 50 people laid off as Sakal Times closes down’.
According to SMG, these were highly defamatory articles and use of the official logos / trade mark of SMG and Sakal Times on these articles clearly amounted to falsely applying the said trade mark, thereby resulting in offence under Section 103 of the TM Act.
Prior to registration of FIR, SMG sent a legal notice dated June 06, 2020, to the Petitioner alleging that SMG was defamed, claiming an amount of Rs. 65,00,000/- from him, which was duly replied by Petitioner. Thereafter, SMG filed a suit for injunction against Newslaundry and the Petitioner, seeking relief of permanent injunction as well as removal of those articles. The said suit is pending adjudication.
SUBMISSIONS ON BEHALF OF THE PETITIONER:
- Ingredients of the offence under Section 103 of TM Act were totally absent in the present case;
- Trademark of SMG was not applied by the Petitioner in relation to either any goods or any services, thereby indicating that there was no question of falsely applying the trade mark;
- If SMG’ trade mark was used by the Petitioner in any manner to show that the news portal in which the articles of the Petitioner were published, was itself shown as being a news portal of Sakal, then it could be said that the trade mark of SMG had been falsely applied, so as to attract the ingredients of the offence under Section 103. Such being not the case, the FIR had been wrongly registered against the Petitioner;
- SMG’s trade mark as shown in the Petitioner’s articles published on ‘Newslaundry’, was only to indicate that those specific articles pertained to SMG. 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;
- Petitioner’s action was protected as a nominative fair use of the trade mark of SMG under Section 30(1)(a) and (b) of TM Act.
- SMG has already initiated civil suit for injunction against the Petition, therefore, its grievance can be addressed there.
SUBMISSIONS ON BEHALF OF THE RESPONDENT:
- The Petitioner had clearly falsely applied the registered trade mark of SMG by prominently showing the mark on articles published on ‘Newslaundry’;
- The word ‘Sakal’ when clicked on online search, it led to the said articles authored by the Petitioner and published on ‘Newslaundry’, thereby demonstrating that the offence under Section 103 of TM Act was indeed committed;
- Emphasis was laid upon Section 102(2) (b) of TM Act that since SMG and the news portal ‘Newslaundry’ were in the same segment of providing news services, the offence u/S 103 was clearly committed;
- With regard to the defense of nominative fair use, it was argued that the Petitioner had no right to claim any protection because use of registered trade mark of SMG prominently in the article unfairly projected SMG, causing loss to its image and finances and relied upon the judgement of 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;
- Merely because the Respondent had filed a Civil suit for injunction against Newslaundry Media Private Limited, it could not result in the criminal proceedings being terminated at this stage.
The Hon’ble Bombay High Court after considering the submissions made by both the parties made the following observations:
- A perusal of Section 101 of TM Act shows that a person is deemed to have applied a trade mark to goods or services, who applies it to the goods themselves or uses it in relation to services. Section 101(1)(e) provides that a trade mark will be deemed to have been applied in relation to goods or services when it is used in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial document and goods are delivered or services are rendered to a person in pursuance of a request or order made by reference to the trade mark or trade description so used. Thus, such a trade mark would have to be used in relation to such documents;
- Section 102(2)(b) provides that a person shall be deemed to falsify a trade mark who uses any package bearing a mark which is identical with or deceptively similar to the trade mark of such proprietor, for the purpose of packing, filling or wrapping therein any goods other than the genuine goods of the proprietor of the trade mark. Section 103(b) provides that any person who falsely applies the goods or services to any trade mark shall, unless he proves that he acted without intent to defraud, be punishable with imprisonment for a term not less than six months, but which may extend to three years and with fine which is not less than Rs. 50,000/- and can extend up to Rs. 2,00,000/-;
- The articles authored by the Petitioner and published in the news portal ‘Newslaundry’ neither qualify as goods nor as service as defined under Section 2(j) and 2(z) of TM Act. No doubt, the mark shown in the two articles is indeed the trade mark of SMG under Section 2(z)(b) of TM Act, but, the said mark being shown in the articles, cannot be said to be in the context of either ‘goods’ or ‘services’.
- It would have been a completely different matter if the Petitioner had used the registered trade mark of SMG to portray as if the news portal itself was that of SMG. It is an admitted position that the articles were published in the online news portal ‘Newslaundry’ 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 ‘Newslaundry’, does not mean that the registered trade mark of Sakal Media Group was falsely applied to goods or services by the Petitioner;
- Presence of those two articles in the online search, falls in the realm of the injujnctiuon suit, which is still pending;
- On proper interpretation of Sections 101, 102 and 103 of the aforesaid Act, it becomes clear that in the facts and circumstances of the present case, mere use of the registered trade mark of SMG in articles authored by the Petitioner and published by the news portal ‘Newslaundry’, do not fit into the definition of false application of the trade mark in relation to goods or services. Therefore, in the absence of ingredients of the offence being made out, even on admitted facts, the FIR could not have been registered;
- Reliance was placed upon the judgement passed by the Hon’ble Supreme Court in State of Harayana Vs. Bhajanlal 1992 (Suppl.) 1 SCC 395, which laid down that when offence is not made out on a bare reading of the allegations and proceeding on the basis that such allegations are true, the criminal proceedings and FIR to be quashed.
The Hon’ble Bombay High Court was pleased to allow the Writ Petition preferred by the Petitioner and quashed the FIR registered against him.
Section 30 (1) (b) of The Trade Marks Act, 1999, itself provides that nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor, provided the use is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. Since fair use of a trade mark is itself allowed in the Act, Petitioner could have also taken the defense of Section 110 of the TM Act, which states that the provisions of sections 102, 103, 104 and 105 shall, in relation to a registered trade mark or proprietor of such mark, ‘be subject to the rights created or recognised by this Act and no act or omission shall be deemed to be an offence under the aforesaid sections if, the alleged offence relates to a registered trade mark and the act or omission is permitted under this Act.