Bombay High Court quashes FIR against Newslaundry reporter in Trademark infringement case by Sakal Media Group

The Bombay High Court on Tuesday quashed a First Information Report (FIR) lodged against Newslaundry journalist, Prateek Goyal by the Sakal Media Group for allegedly committing offences under the Trademarks Act (Prateek Chandragupt Goyal v. State of Maharashtra)..Goyal had moved the High Court assailing the FIR lodged in June 2020 based on the complaint of Mahendra Pisal, Chief Administrative Officer of Sakal Group (which publishes newspapers in Marathi and English). The FIR stated that Goyal had committed offence under Section 103 of the Trademarks Act by falsely applying trademarks of the Sakal Media Group in two articles he authored and which appeared on Newslaundry website..A Bench of Justices SS Shinde and Manish Pitale concluded from the facts and circumstances of the case 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 Newslaundry, do not fit into the definition of false application of the trade mark in relation to goods or services." .In the absence of ingredients of the offence being made out, even on admitted facts, the FIR could not have been registered, the court observed while proceeding to quash the FIR..Prior to lodging of the FIR, a legal notice was sent to Goyal alleging defamation and demanding damages to the tune of Rs. 6,50,000 to which Goyal replied. Sakal Group also filed a suit against Newslaundry seeking an injunction order against Goyal and directions to remove the articles from the news portal. There was however an order of interim injunction in favour of Sakal Group regarding depiction of its mark by Goyal in future.The present plea was filed in October 2020 and the High Court permitted the investigation to continue, but had directed that chargesheet could be filed only after taking permission from the Court.Thereafter in January 2021, this Court recorded statement that Goyal would appear before the Investigating Officer on a specific date and it was directed that the IO shall not insist for production of laptop and hard disk..Senior Advocate Nikhil Sakhardande arguing for Newslaundry submitted that the trademark of Sakal Group was not applied to either any goods or any services thereby indicating that there was no question of falsely applying the trade mark..He submitted that if Goyal had used the trademark in any manner indicating that Newslaundry had shown itself to be a news portal of Sakal Group, then it could have been a case of false applying trademarks thereby attracting the ingredients of the offence under Section 103 the Act. But that was not the case in the present matter, it was argued. "Trade mark of Sakal Media Group was shown in the articles written by the petitioner and published on the news portal ‘Newslaundry’, only to indicate that those specific articles pertained to the Sakal Media Group" Sakhardande argued..Sakhardande also submitted that Goyal's act was protected as a nominative fair use of the trade mark of Sakal Media Group under provision Section 30 (limits on effect of registered trade mark) of the Act.Lastly, it was submitted that Sakal Media had already initiated civil proceedings seeking injunction in respect of the said articles and, hence grievance of any kind could be addressed before the Civil Court..Advocate Neha Prashant, appearing for Sakal Group, submitted that by prominently showing the mark on the defamatory articles published on the news portal ‘Newslaundry’, Goyal had clearly falsely applied the registered trademark of Sakal Media Group.When the word ‘Sakal’ was clicked on online search, it led to the said articles, thereby demonstrating the commission of the offence..Based on the evidence before it, the Court observed that the said articles in question neither qualified as goods nor as services as defined under the Act. "No doubt, the mark shown in the two articles is indeed the ‘trade mark’ 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..The Court further stated that there was no suggestion that news portal itself was that of ‘Sakal’. Further, 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. .The Bench opined that at worst, if the online search for 'Sakal' led to the said articles, then that would be subject matter of an injunction suit but that falls within the realm of a civil dispute that could be raised by Sakal Group..Holding that Goyal had made out case for the Court to exercise its extraordinary jurisdiction under Article 226 and Section 482 of the Code of Criminal Procedure, the Court quashed and set aside the FIR against Goyal.[Read Judgement]