Sakal Media Group publishes newspapers under the name ‘Sakal’ in Marathi language (one of the local languages in India) and ‘Sakal Times’ in English. It’s body corporate, Sakal Papers Private Limited is the registered proprietor of the trademarks, inter alia, “Sakal” and “Sakal Times” (bearing nos.: 1971161 & 2431923) in Class 41. Newslaundry, another news agency, published articles about the alleged layoffs of employees at Sakal Times. Admittedly, the article contained the terms “Sakal” and “Sakal Times”. Based on this, Prateek Chandragupta Goyal (“Goyal”), a journalist associated with Sakal Media Group, filed a FIR against Newslaundry stating that such use was infringement of Sakal’s trademarks. He stated that it also amounted to an offence under Section 103 of the Trade Marks Act, 1999 (“the Act”) and Newslaundry was liable for criminal punishment. According to the Sakal Media Group, the statements made in the articles were highly defamatory. Newslaundary filed a writ petition against Goyal at the Bombay High Court: Prateek Chandragupt Goyal v. State of Maharashtra (Criminal Writ Petition No. 62 of 2021) for quashing of the FIR against it. A civil suit for trademark infringement, praying injunction, was also filed by the Sakal Media Group.

 

In its order dated April 21, 2021, the Bombay High Court, quashed the FIR against Newslaundry and observed that by using the marks as a part of news articles, Newslaundry did not intend to ‘apply the marks to describe any goods or services’ which is a qualifying ingredient for such use to be treated as an ‘offence’. Thus, it held that the use of the marks did not amount to a criminal offence under Section 103 of the Act.

 

The Court further held that since there was also a civil suit pending with respect to the same matter, it would not be appropriate to declare upon the contentions of the parties with respect to the civil suit in the instant petition. Accordingly, the Court exercised its extraordinary jurisdiction (to quash a proceeding) under Section 482 of the Code of Criminal Procedure read with Article 226 of the Indian Constitution and quashed the FIR.

 

The case is significant to report as it brings out an important aspect of trademark law which is that use of trademarks in articles/ news items, cannot be considered "Use" of the mark, especially for initiating a criminal action.