Bombay High Court Quashes Sakal Times' FIR Against Newslaundry Journalist Accused Of Falsely Applying Its Trademark

A Division Bench comprising Justices SS Shinde and Manish Pitale said,

"Mere use of the registered trade mark of the Sakal Media Group 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."

The case pertained to two articles written by Goyal for Newslaundry last year; 'The future is bleak: Sakal Times staffers say they have been sacked in violation of Maharashtra order' dated March 27, 2020 and 'They wanted to get rid of us : over 50 people laid off as Sakal Times closes down', dated June 11, 2020.

Sakal Times alleged that the use of its trademark for the news stories amounted to a false application of a trademark, punishable under Section 103(b) of the Trademark Act. Goyal then moved the High Court seeking a quash on the FIR and proceedings instituted subsequent to its registration.

When disposing the case, the Court took notice of a pending injunction suit filed by Sakal Times against Newslaundry seeking the removal of the articles for supposed defamation. There was already an injunction granted pending disposal of the suit, the Court was informed.

While finding in favour of Newslaundry, the Court relied on the descriptions in Section 101(1)(e) and Section 102(2)(b) emphasised that an offence punishable under Section 103(b) was attracted only if the trademark/trade description –

- was used on a commercial document or packaging and
- goods delivered or services rendered under the trademark/trade description

The Bench pointed out that the trademark was not used in the articles so as to portray that the news portal itself belonged to Sakal Times, in which case the offence could be attracted.

"No doubt, the mark shown in the two articles is indeed the 'trademark' of Sakal Media Group under Section 2(z)(b) of the aforesaid Act, but, the said mark being shown in the articles cannot be said to be in the context of either 'goods' or 'services'," the Court said.

Again, the Court stated,

"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'."

Another scenario the Court explored was whether finding the articles from a web search of Sakal Times could lead to an allegation that Sakal Times' Trademark was falsely applied.

"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." At worst, it could be said that such an online search leading to the aforesaid articles might be 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 the respondent No.2."

The Bench observed that at least prima facie ingredients of the offence ought to have been demonstrated for the offence to be registered.

Highlighting that the offence could not be attracted for the use of the trademark in Goyal's articles, the Court ruled,

"Therefore, in the absence of ingredients of the offence being made out, even on admitted facts, the First Information Report could not have been registered."

Drawing from its observations, the Court proceeded to quash the FIR.

Any anxiety the respondent had vis-à-vis the articles would be taken care of by the injunction in place in the injunction suit, the Court additionally said.

On these terms the petition was disposed.

CASE: Prateek Chandragupt Goyal v. State of Maharashtra and Ors.

COUNSEL: Senior Advocate Nikhil Sakhardande and Advocate Nipun Katyal for Goyal; Advocates Neha Prashant and Yashowardhan Deshmukh for Sakal Times' Chief Administrative Officer; APP S.R. Shinde for the State

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