Sony Pictures Network India quashed an FIR lodged on the premise of criminal Defamation of a bank in The Bombay High Court on Monday allowed ad-interim security from arrest to the directors, and employees of Sony Pictures Network India Pvt Ltd, owner of the SonyLIV OTT platform in a case concerning claimed defamation and trademark violation of logo of Karad Urban Co-operative Bank (KUCB) [Sony Pictures Network India Pvt. Ltd. v. State of Maharashtra & Anr.]

What is the Issue?

The bank in its FIR alleged Sony of displaying a logo in the background resembling its trademark in the third episode of the web series which caused serious damage not only to its financial and commercial reputation but also to its social reputation. The petitioner said, “The FIR has been registered with ulterior motives and that it is merely broadcasting a series that was owned and produced by Applause Entertainment, and it is a cinematic adaptation of the book, “The Scam: Who Won, Who Lost, Who Got Away”. It further added: “Bank of Karaj”, as shown in the series, was a pseudonym for Bank of Karad and their alleged involvement in the scam was in the public domain and confirmed by the Reserve Bank of India. There was no intention or conspiracy, as is being hinted at, to malign the name of the respondent bank.”

Legal Development

The defendants made two-fold submissions represented by Senior Advocate Shirish Gupte as follows-No FIR can be registered for an offence of defamation when it is a non-cognizable offence viz a viz Section 29(5) of the trademark act 1999 stating that a registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered. 

The chain of authorities command needs to be followed about the trademark act 1999 by which offences occurred have to be investigated by an officer equivalent or higher than the rank of Deputy Superintendent of the Police; however, in the present case, the investigation is being conducted by an Inspector. 

Also, there are instances under the Trade Marks Act, which is said to confer jurisdiction on courts where the trademark owner resides or carries on business or has its principal place of business. The Supreme Court of India has recently ruled on these issues in the case of IPRS v. Sanjay Dalia. Other relevant rulings of the Supreme Court include Dhodha House v. S K Maingi and Patel Roadways Ltd v. Prasad Trading Company.

The Cause of action in civil litigation for a trademark case may be triggered by exigencies like actual infringing use of the mark, including use on business paper or packaging material, infringing use by use in a company or firm name.

A coherent relevance can be cited in the case of Prateek Chandragupt Goyal vs the State of Maharashtra wherein the offence of infringement is not made out. It was seen that FIR Lodged against a journalist was quashed by Bombay High court as challenged by Sakal Media Group in trademark infringement by making highly defamatory remarks and usage of official logos pointed to be falsely implicating the media house without any substantive burden of proof whatsoever. This results in the offense under Section 103 of the Trademark Act 1999.

The alternative submission made by the petitioner with normative use brought no legal remedy to the accused party. Merely because the respondent had filed a Civil suit for injunction against Newslaundry Media Private Limited, it could not result in the criminal proceedings being terminated at this stage. On this basis, it was submitted that the writ petition ought to be dismissed.

The Maharashtra High Court stated that that the bar for an investigation into offences punishable under Trade Marks Act, 1999 by the inferior officers may operate in this case and the offence under Section 500 of IPC cannot be investigated by the police. Further it granted ad-interim protection from arrest to the directors, and employees of Sony Pictures Network India Pvt Ltd.

by:

Aditya Prasad

KIIT School of Law