Articles published in news portal “Newslaundry” neither qualify as goods nor as service as defined under Section 2(j) and 2(z) of the Trademark Act: High Court Of Bombay

 on 20 04 2021 on 20 04 1 cri wp 62 2021.odtIN THE HIGH COURT OF JUDICATURE AT BOMBAYCRIMINAL APPELLATE SIDECRIMINAL WRIT PETITION NO. 62 OF 2021Prateek Chandragupt Goyal.... PETITIONERAge : 38 years Occupation : JournalistR at. F 16 Mantri Avenue 2 Panchvati Pashan Road Pune 4110078 Vs.1. State of Maharashtra .... RESPONDENTS through Vishrambaug Police Station Pune Notice to be served on the Public Prosecutor High Court Appellate Side Bombay2. Mahendra Narsinghrao Pisal Original Complainant Age : 54 years Occu : Chief Administrative Officer Salal Group R at. 234 Sagardeep Apartment Sadashiv Peth Pune 411030Mr. Nikhil Sakhardande Senior Advocate a w Mr. Nipun Katyal Advocate for petitionerMr. S.R. Shinde APP for respondent No.1 StateMs. Neha Prashant Advocate a w Mr. Yashowardhan Deshmukh Advocate for Respondent No.2 CORAM : S.S. SHINDE & MANISH PITALE JJ. RESERVED ON : 25.03.2021 PRONOUNCED ON : 20.04.2021 on 20 04 2021 on 20 04 2 cri wp 62 2021.odtJUDGMENT :Rule. Rule is made returnable forthwith. Heard finallywith the consent of learned counsel appearing for rival parties.2.By this writ petition the petitioner is seeking quashing ofFirst Information Report dated 16 09 2020 registered against himat Police Station Vishrambaug Pune for offence under Section 103of the Trade Marks Act 1999. The petitioner contends thatingredients of the said offence are not made out in the facts andcircumstances of the present case and that therefore the FirstInformation Report deserves to be quashed.3.The petitioner is a Journalist working with online newsportal ‘Newslaundry’. It is stated that he had earlier worked withother Media entities including ‘Sakal Times’. According to thepetitioner he specializes in investigative journalism and that he hasbeen working in this field since the year 2012.4.The aforesaid First Information Report has been registeredagainst the petitioner at the behest of respondent No.2who is the Chief Administrative Officer of Sakal Group which publishes newspapers in Marathi language called ‘Sakal’ andin English language called ‘Sakal Times’. The respondent No.2approached the police for registration of the First InformationReport on 16 09 2020 claiming that the petitioner committed on 20 04 2021 on 20 04 3 cri wp 62 2021.odtoffence under Section 103 of the aforesaid Act by falsely applyingtrade mark of Sakal Group in two articles authored by him andpublished in the aforesaid news portal called ‘Newslaundry’. Thetwo articles were published on 27 03 2020 and 11 06 2020. In thesaid articles the registered trade mark of the Sakal Media Group andSakal Times was shown with prominence at the top. In the articlepublished on 27 03 2020 the heading was ‘The future is bleak:Sakal Times staffers say they have been sacked in violation ofMaharashtra order’. In the article published on 11 06 2020 theheading was ‘They wanted to get rid of us : over 50 people laid offas Sakal Times closes down’. According to the respondent No.2these were highly defamatory articles against the Sakal Media Groupand that use of the official logos trade mark of the Sakal MediaGroup and Sakal Times on these articles clearly amounted to falselyapplying the said trade mark thereby resulting in offence underSection 103 of the aforesaid Act. In the First Information Report itwas stated that the offence was committed from 27 03 2020 to11 06 2020 and as noted above the First Information Report stood registered after three months on 16 09 2020.5.It is significant that prior to lodging the complaint leadingto registration of First Information Report a legal notice dated12 06 2020 was sent to the petitioner alleging that the SakalMedia Group was defamed by him and an amount of Rs.65 00 000 was claimed from him. On 19 06 2020 the petitioner sent a replyto the said legal notice. On 03 09 2020 the Sakal Media Groupfiled a suit for injunction against the Newslaundry Media Pvt. Ltd. on 20 04 2021 on 20 04 4 cri wp 62 2021.odtseeking an injunction against the said defendant and the petitionerfor removing the said articles from the news portal. The said suit ispending.6.The present writ petition was filed in October 2020 wherein notice was issued and it was directed that while theinvestigation shall continue the chargesheet could be filed only withthe leave of this Court. Thereafter on 27 01 2021 this Courtrecorded statement made on behalf of the petitioner that he wouldappear before the Investigating Officer on a specific date and it wasdirected that the Investigating Officer shall not insist for productionof laptop and hard disk by the petitioner. The said interim orderscontinued during the pendency of the writ petition.7.Mr. Nikhil Sakhardande learned Senior Counselappearing along with Mr. Nipun Katyal learned Counsel for thepetitioner submitted that ingredients of the offence under Section103 of the aforesaid Act were totally absent in the present case andthat therefore the First Information Report deserved to be quashed.The learned Senior Counsel invited attention of this Court toSections 101 102 and 103 of the aforesaid Act as also Sections 29and 30 thereof to contend that the trade mark of Sakal Media Groupwas not applied by the petitioner in relation to either any goods orany services thereby indicating that there was no question of falselyapplying the trade mark. It was submitted that if the trade mark ofSakal Media Group was used by the petitioner in any manner toshow that the news portal in which the articles of the petitioner on 20 04 2021 on 20 04 5 cri wp 62 2021.odtwere published was itself shown as being a news portal of Sakal then it could be said that the trade mark of Sakal Media Group hadbeen falsely applied so as to attract the ingredients of the offenceunder Section 103 of the aforesaid Act. Such being not the case inthe present matter it was submitted that the First InformationReport had been wrongly registered against the petitioner.8.It was further submitted that the trade mark of SakalMedia Group was shown in the articles written by the petitioner andpublished on the news portal ‘Newslaundry’ only to indicate thatthose specific articles pertained to the Sakal Media Group. In thesecircumstances there was no question of the said trade mark beingfalsely applied to any goods or services so as to attract theingredients of the aforesaid offence. Additionally and withoutprejudice to the aforesaid submissions the learned Senior Counselfor the petitioner submitted that the action of the petitioner wasprotected as a nominative fair use of the trade mark of Sakal MediaGroup under Section 30(1)(a) andof the aforesaid Act. Lastly it was submitted that the respondent No.2 had already initiated civilproceedings in the form of a suit for injunction in respect of the saidarticles and therefore the grievance if any of the respondent No.2would be addressed before the competent Civil Court in the saidproceedings. On this basis it was submitted that the FirstInformation Report deserved to be quashed.9.On the other hand Ms. Neha Prashant learned Counselalong with Mr. Yashowardhan Deshmuk learned Counsel appearing on 20 04 2021 on 20 04 6 cri wp 62 2021.odtfor contesting respondent No.2 submitted that the admitted facts inthe present case demonstrated that ingredients of the offence underSection 103 of the aforesaid Act were prima facie made out andthere was no question of quashing of the First Information Report.By referring to Section 103 of the aforesaid Act the learned Counselappearing for Respondent No.2 submitted that in the present case the petitioner had clearly falsely applied the registered trade mark ofSakal Media Group by prominently showing the mark on articlespublished on the news portal ‘Newslaundry’. It was submitted thatwhen the word ‘Sakal’ was clicked on online search it led to the saidarticles authored by the petitioner and published on the news portal‘Newslaundry’ thereby demonstrating that the offence underSection 103 of the said Act was indeed committed in the presentcase. The learned Counsel emphasized upon Section 102(2)(b) ofthe said Act in support of the said contention and submitted thatsince Sakal Media Group and the news portal ‘Newslaundry’ were inthe same segment of providing news services the offence wasclearly committed in the facts and circumstances of the present case.10.As regards the alternative submission regardingnominative fair use raised on behalf of the petitioner it wassubmitted that the petitioner had no right to claim any suchprotection because the use of the registered trade mark of SakalMedia Group prominently in the said articles unfairly projected theSakal Media Group thereby causing loss to its image and finances demonstrating that the petitioner was not entitled to claimnominative fair use in the present case. In this regard the learned on 20 04 2021 on 20 04 7 cri wp 62 2021.odtCounsel for the respondent No.2 relied upon judgment of theMadras High Court in the case of Consim Info Pvt. Ltd. Vs. GoogleIndia Pvt. Ltd. and Ors. 2010(6) CTC 813 and judgment of DelhiHigh Court in Hawakins Cookers Ltd. Vs. Murugan Enterprises 2012SCC OnLine Del 2118. It was further submitted that merely becausethe respondent No.2 had filed a Civil suit for injunction againstNewslaundry Media Private Limited it could not result in thecriminal proceedings being terminated at this stage. On this basis itwas submitted that the writ petition ought to be dismissed.11.In order to appreciate the rival contentions raised in thepresent petition it would be necessary to refer to Sections 101 102and 103 of the aforesaid Act which read as follows:“101. Meaning of applying trade marks andtrade descriptions A person shall bedeemed to apply a trade mark or mark oftrade description to goods or services whoapplies it to the goods themselves or usesit in relation to services or(b) applies it to any package in or with whichthe goods are sold or exposed for sale or hadin possession for sale or for any purpose oftrade or manufacture or(c) places encloses or annexes any goodswhich are sold or exposed for sale or had inpossession for sale or for any purpose of tradeor manufacture in or with any package orother thing to which a trade mark or mark ortrade description has been applied or on 20 04 2021 on 20 04 8 cri wp 62 2021.odt(d) uses a trade mark or mark or tradedescription in any manner reasonably likelyto lead to the belief that the goods or servicesin connection with which it is used aredesignated or described by that trade mark ormark or trade description or(e) in relation to the goods or services uses atrade mark or trade description in any sign advertisement invoice catalogue businessletter business paper price list or othercommercial document and goods aredelivered or services are rendered to a personin pursuance of a request or order made byreference to the trade mark or tradedescription as so used.(2) A trade mark or mark or trade descriptionshall be deemed to be applied to goodswhether it is woven in impressed on orotherwise worked into or annexed or affixedto the goods or to any package or otherthing.102. Falsifying and falsely applying trademarks :A person shall be deemed to falsify atrade mark who either without the assent of the proprietor of thetrade mark makes the trade mark ordeceptively similar mark or(b) falsifies any genuine trade mark whetherby alteration addition effacement orotherwise(2) A person shall be deemed to falsely applyto goods or services a trade mark who on 20 04 2021 on 20 04 9 cri wp 62 2021.odtwithout the assent of the proprietor of thetrade markapplies such trade mark or a deceptivelysimilar mark to goods or services or anypackage containing goodsuses any package bearing a mark which isidentical with or deceptively similar to thetrade mark of such proprietor for the purposeof packing filling or wrapping therein anygoods other than the genuine goods of theproprietor of the trade mark.(3) Any trade mark falsified as mentioned insub sectionor falsely applied asmentioned in sub sectionis in this Actreferred to as a false trade mark.(4) In any prosecution for falsifying a trademark or falsely applying a trade mark togoods or services the burden of proving theassent of the proprietor shall lie on theaccused.103. Penalty for applying false trade marks trade descriptions etc. Any person whofalsifies any trade mark or(b) falsely applies to goods or services anytrade mark or(c) makes disposes of or has in hispossession any die block machine plate orother instrument for the purpose of falsifyingor of being used for falsifying a trade mark or on 20 04 2021 on 20 04 10 cri wp 62 2021.odt(d) applies any false trade description togoods or services or(e) applies to any goods to which anindication of the country or place in whichthey were made or produced or the name andaddress of the manufacturer or person forwhom goods are manufactured is required tobe applied under section 139 a falseindication of such country place name oraddress or(f) tampers with alters or effaces anindication of origin which has been applied toany goods to which it is required to beapplied under section 139 or(g) causes any of the things above mentionedin this section to be done shall unless heproves that he acted without intent todefraud be punishable with imprisonment fora term which shall not be less than sixmonths but which may extend to three yearsand with fine which shall not be less than sixmonths but which may extend to three yearsand with fine which shall not be less thanfifty thousand rupees but which may extendto two lakh rupees :Provided that the Court may for adequateand special reasons to be mentioned in thejudgment impose a sentence ofimprisonment for a term of less than sixmonths or a fine of less than fifty thousandrupees.”12.It would also be relevant to refer to the definitions of‘goods’ ‘service’ and ‘trade mark’ as provided in the said Act. Thesaid definitions read as follows: on 20 04 2021 on 20 04 11 cri wp 62 2021.odt“goods” means anything which is the subject oftrade or manufacture “service” means service of any descriptionwhich is made available to potential users andincludes the provision of services in connectionwith business of any industrial or commercialmatters such as banking communication education financing insurance chit funds realestate transport storage material treatment processing supply of electrical or other energy boarding lodging entertainment amusement construction repair conveying of news orinformation and advertising“trade description” means any description statement or other indication direct or indirect as to the number quantity measure gaugeor weight of any goods or“trade mark” means a mark capable of beingrepresented graphically and which is capable ofdistinguishing the goods or services of oneperson from those of others and may includeshape of goods their packaging andcombination of colours and in relation to Chapter XIIa registered trade mark or a mark used inrelation to goods or services for the purpose ofindicating or so as to indicate a connection inthe course of trade between the goods orservices as the case may be and some personhaving the right as proprietor to use the mark and”13.A perusal of Section 101 of the said Act shows that aperson 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 on 20 04 2021 on 20 04 12 cri wp 62 2021.odtservices. Section 101(1)(e) provides that a trade mark will bedeemed to have been applied in relation to goods or services when itis used in any sign advertisement invoice catalogue businessletter business paper price list or other commercial document andgoods are delivered or services are rendered to a person inpursuance of a request or order made by reference to the trade markor trade description so used. Thus such a trade mark would have tobe used in relation to such documents.14. Section 102(2)(b) of the aforesaid Act provides that aperson shall be deemed to falsify a trade mark who uses anypackage bearing a mark which is identical with or deceptivelysimilar to the trade mark of such proprietor for the purpose ofpacking filling or wrapping therein any goods other than thegenuine goods of the proprietor of the trade mark. Section 103(b)of the aforesaid Act provides that any person who falsely applies thegoods or services to any trade mark shall unless he proves that heacted without intent to defraud be punishable with imprisonmentfor a term not less than six months but which may extend to threeyears and with fine which is not less than Rs.50 000 and canextend up to Rs.2 00 000 .15.The real question is whether the two articles written bythe petitioner on 27 03 2020 and 11 06 2020 wherein theregistered trade mark of Sakal Media Group was printed could fallwithin the definition of ‘goods’ or ‘service’ as defined in the abovequoted provisions of the aforesaid Act. If so whether the petitioner on 20 04 2021 on 20 04 13 cri wp 62 2021.odthad used the said registered trade mark of Sakal Media Group insuch a manner that under Sections 101 102 and 103 of theaforesaid Act he could be said to have falsely applied the trademark to ‘goods’ or ‘services’.16.The articles authored by the petitioner and published inthe news portal ‘Newslaundry’ neither qualify as goods nor asservice as defined under Section 2(j) and 2(z) of the aforesaid Act.No doubt the mark shown in the two articles is indeed the ‘trademark’ of Sakal Media Group under Section 2(z)(b) of the aforesaidAct but the said mark being shown in the articles cannot be said tobe in the context of either ‘goods’ or ‘services’. It would have been acompletely different matter if the petitioner had used the registeredtrade mark of Sakal Media Group to portray as if the news portalitself was that of Sakal Media Group. It is an admitted position thatthe articles were published in the online news portal ‘Newslaundry’and there was no suggestion that the said news portal itself was thatof ‘Sakal’. Merely because an online search for the word ‘Sakal’ ledto the aforesaid articles of the petitioner published in the newsportal ‘Newslaundry’ does not mean that the registered trade markof Sakal Media Group was falsely applied to goods or services by thepetitioner. At worst it could be said that such an online searchleading to the aforesaid articles might be subject matter of aninjunction suit at the behest of Sakal Media Group due to thecontents of the said articles but that falls within the realm of a civildispute that could be raised by the respondent No.2. In fact therespondent No.2 did issue Notice on behalf of the Sakal Media on 20 04 2021 on 20 04 14 cri wp 62 2021.odtGroup and chose to file a suit for injunction before the competentCivil Court which is admittedly pending.17.But the question for consideration in this petition is as towhether an offence could be registered against the petitioner underSection 103 of the aforesaid Act. In order to do so at least primafacie the ingredients of the offence ought to be demonstrated. But as noted above on proper interpretation of Sections 101 102 and103 of the aforesaid Act it becomes clear that in the facts andcircumstances of the present case mere use of the registered trademark of the Sakal Media Group in articles authored by the petitionerand published by the news portal ‘Newslaundry’ do not fit into thedefinition of false application of the trade mark in relation to goodsor services. Therefore in the absence of ingredients of the offencebeing made out even on admitted facts the First InformationReport could not have been registered.18.Since we are of the opinion that on a bare reading of therelevant provisions of the said Act quoted above and applying themto the admitted facts in the present case ingredients of the Act ofthe offence under Section 103 of the said Act are not made out itwould not be necessary to go into alternative contention raised onbehalf of the petitioner. It pertains to nominative fair use of thetrade mark under Section 30 of the said Act. In this regard thelearned Counsel appearing for the respondent No.2 has placedreliance on the judgment of the Madras High Court in the case ofConsim Info Pvt. Ltd. Vs. Google India Pvt. Ltd. and Ors.1 SCC 395 the Hon’ble Supreme Court has laid down thatwhen offence is not made out on a bare reading of the allegationsand proceeding on the basis that such allegations are true thecriminal proceedings and First Information Report deserve to bequashed.20.Hence we are of the opinion that the petitioner has madeout a case for this Court to exercise jurisdiction under Article 226 of on 20 04 2021 on 20 04 16 cri wp 62 2021.odtthe Constitution of India and Section 482 of the Criminal ProcedureCode to grant the prayer made in the writ petition.21.Accordingly the writ petition is allowed in terms of prayerclausewhich reads as follows:“for a Writ of Certiorari or a Writ in the natureof Certiorari and for a Writ of Mandamus or aWrit in the nature of Mandamus or any otherappropriate Writ direction or order calling forthe records and proceedings of the said FIRdated 16th September 2020 and bearing No.0675 registered by the Vishrambaug PoliceStation at Pune and after going through thevalidity propriety and legality thereof be pleasedto quash and set aside the said FIR(S.S. SHINDE J.) 

Summary: 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. This was said in the case of Prateek Chandragupt Goyal v. State of Maharashtra [CRIMINAL WRIT PETITION NO. 62 OF 2021] in High Court of Bombay.  The facts of the case date back to June 2020 when an FIR was lodged by Sakal Media Group stating that the petitioner 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. Assailing the FIR, the petitioner moved the High Court. The petitioner contended that ingredients of the offence under Section 103 of the aforesaid Act were totally absent in the present case. Secondly, it was contended that the 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. In these circumstances, there was no question of the said trade mark being falsely applied to any goods or services. Thirdly, it was contended that action of the petitioner was protected as a nominative fair use of the trade mark of Sakal Media Group under Section 30(1)(a) and (b) of the aforesaid Act. On the other hand, the respondents by referring to Section 103 contended that the petitioner had clearly falsely applied the registered trade mark of Sakal Media Group by prominently showing the mark on articles published on the news portal ‘Newslaundry’. Secondly, it was contended that when the word ‘Sakal’ was clicked on online search, it led to the said articles authored by the petitioner and published on the news portal ‘Newslaundry’, thereby demonstrating that the offence under Section 103 of the said Act. After analyzing the facts and keeping in mind the settled position of law on the subject, the Court said that “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”. At the 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.