Written by Ronsiya Roy, Legal Intern, and Verified by Sunil Jose, Managing Attorney, Suns Legal.
GOPAL SABU AND OTHERS V. THE STATE OF MADHYA PRADESH AND OTHERS
MISC.CRIMINAL CASE No. 43601 of 2022
In a trademark case, the Indore Bench of the Madhya Pradesh High Court ruled that the maintainability of a civil claim does not preclude the maintainability of a criminal complaint.
In this case, the petition was filed under Section 482 of the Code of Criminal Procedure (CrPC) to quash the FIR dated 30/08/2022, which was lodged for unauthorized use of a trademark under Sections 102(2)(a), 103, and 104 of the Trademarks Act, 1999.
In this case, Respondent 3, the proprietor of M/s. Shiv Trading Company, lodged a written complaint with the Indore Police, asserting ownership of the registered trademark “SACHAMOTI” under class 30. Additionally, his firm initiated a civil suit against the petitioner’s firm, Sabu Trade Pvt. Ltd, for using a similar trademark, “SACHAMOTI.” The Delhi High Court, while reviewing this suit along with a civil suit filed by the petitioner, ruled that, until further notice, neither party can claim to be the rightful owner of the “SACHAMOTI” mark, although they are permitted to advertise their products.
The petitioner contended that the respondents failed to comply with section 115(4) of the Trademark Act and that they turned a civil dispute into a criminal matter. Hence, they challenged the FIR filed, claiming the suit for ownership of the mark is still in contention before the Delhi HC.
The petitioner’s counsel relied on the judgment in “G. Sagar Suri and Another v. State of U.P. and Others, (2000)2 SCC 636”, which held that when examining jurisdiction under section 482 of CrPC, the court must determine whether a civil matter has been disguised as a criminal offense and emphasized that criminal proceedings should not be used as a shortcut to other available remedies.
In response to the petitioner’s claims, the respondent 3 argued that the petitioner is misusing the “SACHAMOTI” trademark, which is harming the respondent’s business reputation. The petitioner further submitted that section 115 of the Trademark Act was complied with, as the Superintendent of Police sought an opinion from the Trademark Registry before the FIR was registered.
The respondent relied on K. Vasudevan v. State and Others, [Crl. Original Petition No.21772/2013 & M.P.No.1/2013], which held that when a prima facie case is made out under Sections 102, 103, and 104, the court should not exercise its powers under Section 482 of the CrPC. Additionally, the respondent cited M. Krishnan v. Vijay Singh and Another, (2001) 8 SCC 645, arguing that the court cannot quash criminal proceedings solely based on the pendency of a civil suit.
The court referred to the case of Dr. Sonia Verma & Anr. v. The State of Haryana & Anr., Criminal Appeal No. 1433 of 2024, where the apex court quashed the FIR because an appropriate civil remedy was already being pursued. It held that, in the present case, despite the ongoing civil suit before the Delhi High Court, the petitioners were misusing the trademark registered in the name of Respondent 3. Therefore, the court concluded that it is not a legal principle that a criminal case cannot be registered under any circumstance after filing a civil suit.
The court also referred to the case of M. Krishnan v. Vijay Singh and Another, (2001) 8 SCC 645, observing that quashing criminal proceedings solely due to the pendency of a civil suit would allow the accused to easily evade criminal charges. Consequently, the court rejected the petitioner’s contentions. Furthermore, the court held that the petitioner’s argument regarding the respondent’s non-compliance with Section 115(4) was baseless and unsustainable, as an opinion from the Trademarks authority had been received.
The court further observed that, in the present case, it could not be said that there is, prima facie, no evidence against the petitioner or no case of commission of an offense by the petitioner. It held that allegations giving rise to a civil claim could also amount to an offense. Therefore, the petition was dismissed.
Author’s Comments
This case highlights the conflict arising when respondents filed a criminal case despite an already pending civil suit in a trademark infringement matter. The petitioners invoked Section 482 of the CrPC, which grants the court inherent power to prevent abuse of the court process and can be used when there is a criminal proceeding against an accused without legal evidence to support the case. Typically, the court intervenes in criminal proceedings if it finds the allegations to be patently absurd. However, in this case, the court determined that the petitioner had committed an offense, and both civil and criminal proceedings are independent. Therefore, the applicants could not use the civil suit as a shield against the criminal proceedings.