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This article is written by Sahaja, from NALSAR University of Law, Hyderabad. This article elaborates on the recent case of Prateek Chandragupt Goyal v. State of Maharashtra and others and how the FIR was quashed in the same case. 

Introduction

An FIR (First Information Report), 2021 was quashed in a recent judgement delivered by the Bombay High Court in the case of Prateek Chandragupt Goyal v. State of Maharashtra and others (2021). This FIR was registered by the Pune City Police against a journalist, Prateek Chandragupt for using the logo of ‘Sakal Media Group’ in two articles, on an online news portal called ‘News Laundry’. This case was registered under Section 103 of the Trademarks Act, 1999. 

According to the FIR, Goyal violated Section 103 of the Trademarks Act by misusing the Sakal Media Group’s trademarks in two pieces he wrote and published on the Newslaundry website.

The petitioner is a journalist who works for the ‘Newslaundry’ online news portal. He had previously worked with various media outlets, including the ‘Sakal Times,’ according to reports. The petitioner was seeking the quashing of the FIR registered against him. 

Facts of the case

Mr. Prateek Chandragupt Goyal is a journalist who had previously worked for the Sakal Times and other media outlets. Presently for the online news portal ‘Newslaundry’ he writes two articles that were published on ‘Newslaundry’ on 27/03/2020 and 11/06/2020. The title of these two articles was ‘The future is bleak: Sakal Times staffers say they have been sacked in violation of Maharashtra order’ and ‘They wanted to get rid of us: over 50 people laid off as Sakal Times closes down’ respectively. At the top of both these articles, the registered trademark symbol of the Sakal Media Group and Sakal Times was shown with prominence. 

According to the Chief Administrative Officer of Sakal Group, the journalists’ statements in the articles were defamatory and the use of the official trademarked logo of Sakal Times amounted to an offence under Article 103 of the Trademarks Act, 1999. 

According to the FIR, the offence was committed between March 27th and June 11th, 2020, and the FIR was filed three months later on September 16th, 2020.

Before filing the complaint that led to the filing of the First Information Report, the petitioner received a legal notice dated June 12, 2020, alleging that he had defamed the Sakal Media Group and demanded Rs.65,00,000/- from him.

The current writ petition was submitted in October 2020, and a notice was given, with the instruction that the charge sheet could only be filed with the Court’s permission while the investigation was ongoing.

Following that, on January 27, 2021, this Court recorded a statement made on behalf of the petitioner that he would appear before the Investigating Officer on a certain day, and it was instructed that the Investigating Officer not insist on the petitioner producing his laptop and hard drive. 

Issues raised

By the petitioners

Learned counsel appearing for the petitioner submitted that no offence has been committed under Section 103 and that the FIR needs to be quashed. The learned Senior Counsel drew this Court’s attention to Sections 101, 102, and 103 of the aforementioned Act, as well as Sections 29 and 30 thereof, to argue that the petitioner had not used the Sakal Media Group trademark about any goods or services, indicating that there was no question of falsely applying for the trademark. 

It was contended that if the petitioner used the Sakal Media Group trademark in any way to show that the news portal in which the articles were published was itself shown to be a Sakal news portal, then the trademark of Sakal Media Group had been falsely applied, attracting the ingredients of the offence under Section 103 of the aforementioned Act.

Section 103 of the Act states that anyone who falsifies a trademark or falsely applies a trademark to goods and services can be penalized under this Section. 

It was further claimed that the Sakal Media Group’s trademark was displayed in articles produced by the petitioner and published on the news portal “Newslaundry” solely to indicate that such items were about Sakal Media Group. As the titles are also evidence of the fact that the articles written and published were about Sakal Media and the logo was being used only to refer to the same. It was submitted that this did not amount to falsifying a trademark under Section 103. 

The learned counsel also pointed out Sections 29 and 30 of the said Act. The petitioner’s action, according to the attorney, was protected as a nominative fair use of Sakal Media Group’s trademark under Section 30(1)(a) and (b) of the aforementioned Act. 

Section 29 states what amounts to the infringement of a trademark. Section 30 states the exceptions wherein certain uses of a trademark would not lead to an infringement. According to Section 30(1)(a) using a registered trademark “in accordance with honest practices in industrial or commercial matters” is not restricted by Section 29.  Thus, in this case, the counsel argued that the logo was used in accordance with honest practices in the article and not to represent that the article had been published by Sakal Media. 

By the respondents

The counsel contended that the accepted facts in this matter proved that the ingredients of the offence under Section 103 of the aforementioned Act were prima facie established and that the First Information Report should not be quashed. The learned Counsel argued that, in the present case, the petitioner had falsely applied the registered trademark of Sakal Media Group by prominently presenting the mark on articles published on the news site ‘Newslaundry’, citing Section 103 of the aforementioned Act. 

It was argued that searching for the phrase “Sakal” online led to the petitioner’s articles, which were published on the news site “Newslaundry,” proving that the offence under Section 103 of the aforementioned Act was indeed committed in the present case. In support of the said contention, the learned Counsel cited Section 102(2)(b) of the said Act, claiming that because Sakal Media Group and the news portal ‘Newslaundry’ were in the same business of providing news services, the offence was clearly committed in the facts and circumstances of the case. 

It was argued that the petitioner had no right to claim nominative fair use because the use of Sakal Media Group’s registered trademark prominently in the articles unfairly projected the company, resulting in a loss of image and funds.

The dispute with the trademark being misused

The main issue in the present case of Prateek Chandragupt Goyal v. State of Maharashtra and others is whether the trademark printed on the two articles written by the journalist amounted to an infringement of the trademark. The contention of the respondent is that the use of the logo in the article has been falsely done so leading to an offence under Section 103 of the Trademarks Act. 

The petitioners, on the other hand, counter this by saying that the registered trademark i.e. the logo has been used in the articles under the expanse of Section 30 which does not amount to an infringement of trademarks. The petitioners also claim the defence of nominative fair use as the logo has been used by them only to point out that the article speaks about ‘Sakal Media’ and not to claim or point out that the article has been published by ‘Sakal Media’. 

According to Section 103(b) of the aforementioned Act, any person who falsely applies the goods or services to any trademark shall be punished with imprisonment for a term not less than six months, but not more than three years, and a fine of not less than Rs. 50,000/- but not more than Rs. 2,00,000/- unless he proves that he acted without intent to defraud.

To determine whether an offence could be registered under Section 103, the ingredients of the offence must be proven at least prima facie. According to a proper interpretation of Sections 101, 102, and 103 of the aforementioned Act, in the facts and circumstances of the present case, the mere use of the Sakal Media registered trademark in articles authored by the petitioner and published by the news portal ‘Newslaundry’ does not fall within the definition of the false application of the trademark in relation to goods or services. 

As a result, even on agreed facts, the First Information Report could not have been registered in the absence of ingredients of the offence.

Whether or not the two Newslaundry reports fell within the definition of “goods” and “services” 

According to Section 102(2)(b) of the aforementioned Act, a person is deemed to falsify a trademark if he or she uses any package bearing a mark that is identical to or deceptively similar to the proprietor’s trademark for the purpose of packing, filling, or wrapping any goods other than the proprietor’s genuine goods. 

Another major issue is whether the two articles written by the journalist in which the logo of ‘Sakal Media Group’ was printed prominently could fall within the definition of ‘goods’ or ‘service’. 

The petitioner’s articles, which were published on the news website “Newslaundry,” do not qualify as products or services under Sections 2(j) and 2(z) of the aforementioned Act. The mark exhibited in the two articles is, without a doubt, Sakal Media Group’s “trademark” as defined by Section 2(z)(b) of the aforementioned Act, however, it cannot be claimed to be in the context of either “goods” or “services.” It would have been a different situation if the petitioner had used Sakal Media Group’s registered trademark to make it appear as if the news portal was owned by Sakal Media Group. The items were admittedly published on the online news portal ‘Newslaundry,’ and there was no suggestion that the abovementioned news portal was owned by ‘Sakal.’ 

Case laws

Consim Info Pvt. Ltd. v. Google India Pvt. Ltd. (2021)

The issues of trademark infringement on the Google Ad Words Program recently arose. The appellant, in this case, is a company that provides online marriage services and has registered several trade names, including Bharat Matrimony, Telugu Matrimony, Assamese Matrimony, and others. The appellant had filed a permanent injunction against Google India Private Limited, among others, to prevent it from using its trademarks. The question that has arisen is whether the Plaintiff can assert rights and so enjoin the respondents from using phrases like “matrimony,” “Bharat,” “Tamil,” “Telugu,” and so on because these are generic words that cannot be monopolized by any business. It was discovered that while such words, when used separately, did not constitute a trademark infringement, when used together, with or without space, they did.

Hawkins Cookers Ltd. v. Murugan Enterprises (2012)

The respondent, Murugan Enterprises, was producing and distributing pressure cooker gaskets under the trademark ‘MAYUR.’ The appellants’ complaint, on the other hand, is that the gaskets were marketed in packets that stated that they were “appropriate for HAWKINS pressure cookers,” stressing the term Hawkins by printing it in red in contrast to the other phrases, which were printed in black.

It was determined that there was no infringement because the use of the word “Hawkins” was simply to indicate that the Murugan gaskets may be used in “Hawkins” pressure cookers, not to suggest that their company had any link to Hawkins’ business.

Yahoo!, Inc. v. Akash Arora (1999)

It was decided that a domain name fulfilled the same purpose as a trademark and hence deserved the same level of protection. Because the plaintiff’s and defendant’s domain names were almost identical and phonetically similar, there was a risk that internet users might be confused and tricked into thinking the domain names shared a common source or link.

Conclusion 

In this case of Prateek Chandragupt Goyal v. State of Maharashtra and others, it was finally held by the court that the use of the registered trademark of ‘Sakal Media Group’ in the articles of the journalist was not a false and misleading use of the trademark and did not constitute an offence under Section 103 of the Trademarks Act, 1999. In addition to this, it was also observed that the news articles did not fall under the definition of ‘goods’ and ‘services’ as defined in Section 2 of the aforementioned act. Therefore, the FIR filed against the journalist was quashed by the Bombay High Court. 

References


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