USAGE OF THIRD PARTY TRADE MARK IN NEWS ARTICLE NOT AN OFFENCE UNDER TRADE MARKS ACT, 1999
We have seen number of cases in the recent past wherein various criminal actions have been initiated against write-ups which are displayed either on online on blogs, social media websites or on news portals. The related question is whether display / use of the brand name or Trade Marks in relation to such articles / writeups published on third party website attracts any penal provisions under the Trade Marks Act, 1999. The Division Bench of Hon’ble Bombay High Court in the case of Prateek Chandragupt Goyal Vs. State of Maharashtra and Ors. [Criminal Writ Petition No. 62 of 2021] has given the answer authoritatively in negative by quashing the FIR against the petitioner writer who authored and published two articles on online news portal namely “Newslaundry”.
The brief facts of Prateek Chandragupt Goyal supra case were that FIR was registered against the petitioner under the provisions of Section 103 of the Trade Marks Act, 1999 (provision that deal with the penalty for applying false Trade Marks, trade descriptions etc.), by the chief administrative officer of Sakal Group since the Petitioner had published two articles on the news portal “Newslaundry” wherein the registered Trade Mark of “Sakal Media Group” and “Sakap Times” were depicted with prominence. The headlines of the said two articles were as under:
Article I:
“The future is bleak: Sakal Times staffers say they have been sacked in violation of Maharashtra Order”.
Article II:
“They wanted to get rid of us: over 50 people laid off as Sakal Times closes down”.
The Hon’ble Bombay High Court framed following two question: (i) whether the petitioner had used the Trade Mark of Sakal Media Group in such a manner that penal provisions of the Trade Marks Act, 1999 relating to falsification of Trade Mark would attract in the present case or not and (ii) whether the articles of the petitioner fell within the definition of goods or services since in order to falsify a Trade Mark it is necessary to apply the falsified Trade Mark in relation to goods and services. The Division Bench dealt with the said questions in the following manner:
The Court observed that in order to make out a case under the provisions of Section 103 of the Trade Marks Act, 1999 it is necessary to be proven that a culprit / accused had applied the Trade Mark in relation to goods or services. In order to illustrate this the Court relied upon the provisions of Section 101(1)(e) of the Trade Marks Act, 1999, which provides that the Trade Mark is deemed to have been applied in relation to goods or services when it is used in any sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial document and goods that are delivered or services that are rendered to a person in pursuance of a request or order made by reference to the Trade Mark or trade description so used. Therefore, the Court gave the finding that the news article written on third party website is not a “commercial document” analogous to sign, advertisement, invoice, catalogue, business letter, business paper, price list or other commercial document.
The Court further observed that articles authored by the petitioner which were published on the news portal “Newslaundry” did not qualify as goods nor as service as defined under Section 2(j) and 2(z) of the Trade Marks Act, 1999. It also observed that merely because an online search for the word “Sakal” led to aforesaid articles of petitioner being published in the news portal does not tantamount to the fact that the registered Trade Mark of “Sakal Media Group” was falsely applied to goods or services by the petitioner.
The Court finally observed that mere depiction or usage of a registered Trade Mark in articles does not fit into definition of false application of Trade Mark in relation to goods and services.
That apart from the above findings, the Court gave certain disclaimers in respect of few circumstances wherein liability / action might arise against authors or writers which are as under:
Where the author or writer uses a Trade Mark of third party in such a manner to portray as if the article itself originated from the Trade Mark owner or brand name owner then in such a case criminal liability relating to falsification of Trade Mark may arise.
Incase if online search leading to a particular article due to presence of Trade Mark of third party in the contents of the said article then it can form subject matter of injunction suit within the realm of civil dispute.
Conclusion:
This judgment gives a significant finding in a case involving falsely applying a Trade Mark and falsification of a Trade Mark in relation to publication of articles comprising of third party brand names or Trade Marks. This judgment relates to quashing of FIR concerning articles making reference to brand name or Trade Marks on third party websites as it acts as “fair use defence” in context of Trade Mark related criminal offences and this can further take away the mental elements of criminal offence such as mens rea as well as physical elements of actus reus where the Court has already held that publication of article is not goods or services on which the brand name or Trade Mark is applied. Hence, no offence of falsification of Trade Mark can be made out in such cases.
Therefore, in short if there arises any client query for defending the case of offence relating to falsification of Trade Mark in context of publication of article, then aforesaid legal principles would be beneficial and one can directly seek quashing of FIR in such circumstances.
By Sushant Singh and Kunal Khanna Advocates