Using a trademark in a news article…….. is not an infringement!!

Sakal Media Group publishes newspapers under the name “Sakal” in Maratha language (one of the local languages ​​in India) and ‘Sakal Times’ in English. It is a legal entity, Sakal Papers Private Limited is the registered owner of the trademarks, among others, “Sakal” and “Sakal Times” (numbers: 1971161 and 2431923) in class 41. Newslaundry, another news agency, published articles on the alleged dismissals of Sakal Times employees. 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 an FIR against Newslaundry stating that such use constituted an infringement of Sakal’s trademarks. He said it was also an offense under section 103 of the Trade Marks Act 1999 (‘the Act’) and that Newslaundry was subject to criminal penalties. According to the Sakal Media Group, the statements made in the articles were highly defamatory. Newslaundary filed a motion for an injunction against Goyal in the Bombay High Court: Prateek Chandragupt Goyal v State of Maharashtra (Indictment Petition No. 62 of 2021) for cassation of the FIR against him. A civil trademark infringement lawsuit, seeking an injunction, has also been 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 in connection with news articles, Newslaundry did not intend “to enforce trademarks to describe goods or services” which is a qualifying ingredient for such use to be treated as an “infringement”. Thus, he considered that the use of the marks did not constitute a criminal offense within the meaning of Article 103 of the law.

The Court further held that since there was also an ongoing civil action relating to the same matter, it would not be appropriate to rule on the parties’ claims relating to the civil action in the present petition. Accordingly, the Court exercised its extraordinary jurisdiction (to quash a proceeding) under Section 482 of the Code of Criminal Procedure read together with Section 226 of the Constitution of India and struck down the FIR.

The case is important to report as it brings out an important aspect of trademark law, namely that the use of trademarks in articles/news articles cannot be considered as “use” of the mark, in particular to initiate criminal proceedings.

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