Author: Dishti Titus
In the matter of Prateek Chandragupt Goyal v State of Maharashtra and Another [Criminal Writ Petition No. 62 of 2021], Single Judge [M. Pitale, J.] of the High Court of Bombay exercising supervisory jurisdiction under Section 482 of the Cr.P.C., vide order dated April 20, 2021, quashed the criminal First Information Report (FIR) registered by the police against the Petitioner for the offence of falsely applying a trademark under Section 102(2) of the Trade Marks Act 1999, holding effectively that mere referential use of registered trademarks in news articles does not automatically amount to false application.
Section 102(2) of the 1999 Act criminalizes falsely applying someone else’s trademark when one “(2) …(a) applies such trade mark or a deceptively similar mark to goods or services or any package containing goods;…” The question that arises is whether when one merely referentially mentions someone else’s mark solely as a pointer to the owner of the trademark, or otherwise only nominatively uses such trademark, does one still ‘apply’ the mark ‘to’ goods or services or any package containing goods.
The FIR alleged the offence of falsely applying Sakal Media Group (SMG) and Sakal Times (ST)’ registered trademarks in news media articles published on the news portal ‘Newslaundry’, prominently featuring the registered trademarks and claiming that online searches for the word ‘Sakal’ directed users to the said news articles unfairly causing loss to image and finances.
The Petitioner challenged this FIR against him as being unjustifiably registered on the ground that the said marks were not applied by him in relation to any goods or services but instead were merely mentions solely to convey that the articles pertained to SMG. He claimed protection under nominative fair use.
The High Court observed that “…the mark shown in the two articles is indeed the ‘trademark’ of Sakal Media Group … but, the said mark being shown in the articles cannot be said to be in the context of either ‘goods’ or ‘services” held 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. Therefore, in the absence of ingredients of the offence being made out, even on admitted facts, the First Information Report could not have been registered.” . Accordingly, the writ petition was allowed and the FIR was directed to be quashed.
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