24 Apr 2021

Mere use of trademark in article doesn't amount to false application; HC quashes FIR against Newslaundry

BRIEF FACTS:

Pune based Sakal Media Group has accused journalist Prateek Goyal of misusing its trademark while sharing an article on  website “Newslaundry” about layouts at the company. For the misuse of the trademark, the chief administrative officer of Sakal Media Group filed a police complaint against Goyal in September.

Sakal Media Group alleged that the two Articles dated March 27, 2020 and June 11, 2020 amouns to a false application of a trademark, punishable under Section 103(b) of the Trade Marks Act, 1999.

In addition, to this Sakal Media Group has filed a defamatory suit against Petitioner and notice is being served of 65 crore rupees.

ISSUE:

  1. Whether the offence committed by the petitioner be registered under Section 103 of the Trade Marks Act, 1999?
  2. Whether the two Newslaundry reports fall within the definition of “goods” and “services” as defined in the Trade Marks Act, 1999?

COURT’S OBSERVATION:

The Hon’ble Hight Court is of the view that “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 the aforesaid Act.”

The court relied upon sections 101(1)(e) and 102(2)(b) and emphasized that an offense punishable under Section 103(b) would be attracted only if the trademark-

  • was used on a commercial document or packaging and
  • goods delivered or services rendered under the trademark

If the petitioner would have tried maliciously to portray Newslaundry as the Sakal Media Group by using its trademark then the petitioner would have violated the provisions of the said Act. But there is no evidence to prove that such an act was committed on behalf of the petitioner. Just because few online searches of the word “Sakal” led to petitioner’s article cannot mean that the registered trademark of Sakal Media was falsely applied to goods or services by the petitioner.

The court agrees to the fact that the mark in both the articles is the registered trademark which belongs to the Shakal Media Group only. But, what is important to note here is that the said mark was not used in any context to goods or services by the petitioner.

The court observed that there must be at least prima facie ingredients of the offense to have been demonstrated for the offence to be registered.

As the offence could not be attracted for the use of the trademark in petitioner’s articles, the court ruled,

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

On the basis of the above observations, the Court quashed the FIR.