Delhi High Court
Tosiba Appliances Co. Pvt. Ltd vs Kabushiki Kaisha Toshiba & Ors on 1 May, 2017
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
% DATE OF DECISION: 1ST MAY , 2017
+ CS(OS) No.2356/1998
TOSIBA APPLIANCES CO. PVT. LTD. ..... Plaintiff
Through: Mr. Preet Pal Singh with Ms. Priyam
Mehta, Advs.
Versus
KABUSHIKI KAISHA TOSHIBA & ORS. ..... Defendants
Through: Mr. A.J. Bhambhani, Sr. Adv. with Mr.
Siddharth Yadav, Adv. for D-2 to 4.
Mr. Sudhir Chandra, Sr. Adv. with
Mr. Nischal Anand and Mr. Aman
Taneja, Advs. for D-5.
CORAM:-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. The plaintiff has instituted this suit for recovery of Rs.1 crore, jointly
and severally from defendant no.1 Kabushiki Kaisha Toshiba, defendant
no.2 Hathway Investments Ltd., being the owner of Outlook Magazine,
defendant no.3 Deepak Shourie, President & Publisher of Outlook
Magazine, defendant no.4 Vinod Mehta, Editor-in-Chief of Outlook
Magazine and defendant no.5 Parveen Anand, Advocate, on account of
compensation for defamation, pleading i) that the plaintiff has been
continuously and regularly manufacturing and selling domestic appliances
under the brand name "TOSIBA" since the year 1975 and currently has an
annual sales turnover of approximately Rs.15 crores; ii) that the trade mark
of the plaintiff "TOSIBA" has also been registered with the Trade Mark
CS(OS) No.2356/1998 Page 1 of 24
Registry; iii) that there are a number of cases pending in various Courts
between the plaintiff and the defendant no.1 Kabushiki Kaisha Toshiba in
respect of the said trade mark wherein the defendant no.5 Parveen Anand,
Advocate is representing the defendant no.1; iv) that three marks
"TOSHIBA" of the defendant no.1 have been rectified and the appeals
against rectification have also been dismissed; however the appeals from the
dismissal order are pending before the Division Bench of the Kolkata High
Court; v) that on 27th October, 1997, the plaintiff came across an article in
the magazine "OUTLOOK" dated 3rd November, 1997 which as per
declaration therein is owned by defendant no.2 Hathway Investment Ltd.
and of which defendant no.3 Deepak Shourie is the President and Publisher
and the defendant no.4 Vinod Mehta is the Editor-in-Chief; vi) that the said
article is titled „FAKE GOODS‟ "SPOT THE FAKE ONE" and in the
photograph captioned "LAWYER PARVEEN ANAND DISPLAYS
SEIZED FAKES" published with the said article a carton bearing the trade
mark of the plaintiff "TOSIBA" is shown; vii) that the products of the
plaintiff are not fake and have never been seized; viii) that the article is
defamatory and has caused substantial loss to the goodwill and reputation of
the plaintiff built over 25 years; ix) that plaintiff sent letter dated 29th
October, 1997 to the defendant no.5 calling upon the defendant no.5 to
immediately publish an apology in the same manner and in the same
magazine prominently stating that the facts given in the article regarding the
plaintiff‟s products are false and untrue; x) that the defendant no.5 instead of
tendering and publishing an apology contended that there was no statement
attributed to him in the said publication and that the caption had been
CS(OS) No.2356/1998 Page 2 of 24
supplied by the journalist; xi) that the aforesaid reply of the defendant no.5
shows that the article has been published and the goods have been displayed
in the photograph by the defendant no.5 while acting for the defendant no.1;
xii) that the plaintiff has also sent a legal notice dated 1 st February, 1998 to
the defendants No. 1 to 4to tender and publish an apology but which the
defendants no.1 to 4 have not done; xiii) that on the contrary, the defendant
no.4 in his reply dated 26th February, 1998 stated that the journalist of the
magazine had met the defendant no.5 who agreed to speak to them about the
counterfeit problem and be photographed with some fake products which he
had in his possession and that the defendant no.5 selected the products to be
placed on his table for the photograph; xiv) that the aforesaid reply shows
that the defendants no.2 to 4 are guilty of irresponsible publication.
2. The suit was entertained and has languished for the last nearly 20
years. Though the following issues were framed on 16th July,2012:
(i) Whether the suit has been properly verified and instituted by the
plaintiff? OPP
(ii) Whether the article titled „Spot the Fake One‟ dated 3rd November,
1997 published in the „Outlook‟ magazine is defamatory of the
plaintiff? OPP
(iii) Whether any member of the public associated the article titled
„Spot the Fake One‟ dated 3rd November, 1997 published in
„Outlook‟ magazine with the plaintiff? OPP
CS(OS) No.2356/1998 Page 3 of 24
(iv) What is the effect of publication of Corrigendum dated 9.3.1998
stated to have been published in compliance with plaintiff‟s notice
dated 1.2.1998 by the defendants no.2, 3 and 4? OPP
(v) Whether the present suit is liable to be dismissed for non-joinder of
necessary parties and mis-joinder of parties? OPD 1 and 5
(vi) Whether the plaintiff is entitled to the relief of damages and/or
any other relief and, if so, to what extent and against which of the
defendants? OPP
and PW1 has tendered his affidavit in examination-in-chief but his
cross examination has not even commenced. The parties were referred to
mediation which has remained unsuccessful.
3. The defendant no.5 has filed IA No.15192/2016, though titled under
Section 151 CPC, but in the nature of Order VII Rule 11 of the Code of
Civil Procedure, 1908 (CPC).
4. The senior counsel for the defendant No.5 argued (i) that the suit has
been filed to harass the defendant No.5, an advocate, and amounts to abuse
of process of law; (ii) that a reading of the impugned article shows that the
name of the plaintiff does not appear in the written text of the article and
there is no way in which the reader can link the product being shown in the
photograph to the plaintiff; (iii) all that the photograph shows is that the
goods on the table are fake goods of genuine articles; (iv) that the plaintiff in
para 8 of the plaint claims to make genuine articles and has pleaded that "the
products of the plaintiff are not fake" and it is not understandable, as to how
the plaintiff has assumed the fake articles shown in the photograph as its
CS(OS) No.2356/1998 Page 4 of 24
own and there is no reason for such assumption; (v) that the plaintiff has no
cause of action at all; (vi) that the Outlook Magazine in its Issue dated 9 th
March, 1998 has issued a Corrigendum in apology regarding the publication
of the plaintiff‟s product in the said article; (vii) that in the light of the
apology, nothing really survives in the suit; (viii) that the suit has been filed
only to interfere with the defendant No.5 acting as an advocate for the
defendant No.1 in the litigation between the plaintiff and the defendant
No.1; (ix) that the plaintiff and the defendant No.1 have been involved in at
least sixteen proceedings before various fora qua disputes arising between
the mark „TOSHIBA‟ and „TOSIBA‟ and which have all been decided in
favour of the defendant No.1; (x) therefore, even if a statement had been
made in the impugned article (which has in fact not been made), the said
statement would not have been an inaccurate one; (xi) that the plaintiff has
filed the present proceedings to gain some kind of leverage in the
infringement proceedings pending against it; (xii) that the plaintiff was
disallowed from registering its mark „TOSIBA‟ by the Trade Marks Registry
holding the same to be nearly identical to the defendant No.1‟s trademark
„TOSHIBA‟ and further holding the adoption of the mark „TOSIBA‟ by the
plaintiff to be tainted with dishonesty; (xiii) that the photograph in the
impugned article does not necessarily depict counterfeit goods but also
marks, get up and fonts which are so vehemently similar and appear to be
fake goods; (xiv) that the plaintiff‟s mark „TOSIBA‟ is identical to that of
the defendant No.1‟s trademark „TOSHIBA‟; (xv) that it is nowhere said in
the impugned article that the plaintiff is making fake goods and the plaintiff
by filing the present suit is presuming against itself.
CS(OS) No.2356/1998 Page 5 of 24
5. Per contra, the counsel for the plaintiff argued (a) that the application
does not fulfill the ingredients or meet the requirements of Order VII Rule
11 of the CPC; (b) that the plaintiff is not presuming against itself; (c) that
the plaintiff has suffered a substantial monetary business loss and reputation
owing to the impugned article; (d) controverting that after the apology
issued by the Magazine in the Issue dated 9th March, 1998 nothing survives
in the suit; (e) that the apology and the Corrigendum were not published in a
conspicuous manner and were published in a manner that it would escape
notice; (f) drawing attention to the reply dated 26 th February, 1998 aforesaid
of the defendant No.4 to the legal notice got issued by the plaintiff preceding
the suit; (g) denying that the plaintiff was disallowed from registering its
mark „TOSIBA‟ by the Trade Marks Registry for the reasons alleged and it
was stated that the plaintiff has voluntarily abandoned the proceedings with
respect to the goods in which the plaintiff is not dealing; (h) that a
photograph per se can be defamatory; (i) that the carton with the mark
„TOSIBA‟ shown in the photograph is of the plaintiff.
6. The defendant No.2 has also filed a reply to the application of the
defendant No.5 opposing the application.
7. Though on an application for deletion / under Order VII Rule 11 of
CPC of one of the defendants only the said defendant and the plaintiff are to
be heard but owing to the nature of the plea raised by the defendant No.5, of
the impugned article being not defamatory of the plaintiff and there being
thus no cause of action for the suit in favour of the plaintiff, the other
CS(OS) No.2356/1998 Page 6 of 24
counsels were also heard on 4th January, 2017 and the following order was
passed:
―IA No.15192/2016 (of the defendant no.5 under Section 151
CPC)
1. The senior counsel for the applicant/defendant no.5 and
the counsel for the plaintiff have been heard.
2. On completion of the hearing and after understanding the
facts I have enquired from the counsel for the plaintiff whether
the plaintiff would be satisfied if the magazine Outlook
published by the defendant no.2 M/s Hathway Investments Ltd.
and in which the allegedly defamatory article had appeared,
publishes prominently that on the date when the article had
appeared and till date the plaintiff and the defendant no.1 are in
litigation with respect to the marks ‗TOSIBA' - ‗TOSHIBA'.
3. While the senior counsel for Outlook magazine is
agreeable thereto the counsel for the plaintiff under instructions
from Mr. Narender Kumar Suri Director of the plaintiff present
in Court is not agreeable thereto.
4. The counsels are also given liberty to if so desire, within
the next 15 days submit case law on (i) whether a claim for
damages on account of defamation against an opposite lawyer
in an undergoing litigation can be made; (ii) since it is the case
of the defendant no.1 represented by the defendant no.5
Advocate that the plaintiff is infringing the trademark of the
defendant no.1 and passing off its goods as that of the defendant
no.1, whether the allegedly defamatory article qualifies as news
reporting with respect to court cases; and, (iii) whether in an
action for defamation, the plaintiff as a matter of right has a
claim for damages or the Court can if in the facts and
circumstances deems appropriate dispose of the suit in the
manner as proposed and which has not been accepted by the
plaintiff.
5. Order reserved.‖
CS(OS) No.2356/1998 Page 7 of 24
8. Only the counsel for the plaintiff and the for the defendant No.5 have
submitted notes on the aspects enquired into on 4th January, 2017.
9. I have considered the controversy.
10. We are here not concerned with the dispute between the plaintiff and
the defendant No.1 with respect to similarity and/or deceptive similarity of
their respect marks „TOSIBA‟ and „TOSHIBA‟. The present suit is for
compensation for defamation (liable) arising from i.e. the article published
in the Outlook Magazine. What needs to be determined first is, whether the
said article in the Magazine furnishes any cause of action to the plaintiff
against defendant No.5 or against any of the other defendants. The said
article in the weekly news magazine Outlook of 3rd November, 1997 at
pages 58-59:
(I) is titled "Spot the Fake One--Big brands take on
counterfeiters--but it‟s guerrilla warfare--By Neerja Pawha Jetley";
(II) comprises of (a) photograph of two shoes of „NIKE‟ brand; (b)
photograph of defendant No.5 sitting on a chair with table in front
with cartons of "Collegiate" toothpaste, "Dunhill cigarettes",
"Mcdowell‟s Single Malt whisky", „TOSIBA‟, but from which the
product to which it pertains cannot be known, bottle of mineral water
but the brand whereof is unreadable, wrapper of "Kit Kit" and Levi‟s
jeans, with the caption "Lawyer Parveen Anand displays seized
fakes"; and (c) photograph of a shop which shows Lee jeans on the
counter;
CS(OS) No.2356/1998 Page 8 of 24
(III) a bar chart depicting figures of different fake goods in markets.
and,
(IV) written text as under:
You don't expect fiftysomething, soft-spoken Sathish Makhija to
strike terror. But he does. Ask the owners of tacky shops in
Sadar Bazaar, in the crowded lanes of Gandhinagar, in air-
conditioned Palika Bazaar in New Delhi, where he is in the
centre of noisy brawls and fisticuffs.
An ex-officer in the intelligence wing of the Air Force,
Makhija is a private detective. His current mission: to ferret
out and shut down shops that sell fake goods; destroy the
market that survives by selling duplicate brand names, altered
logos; kill the parallel market of Reebok shoes, Levi's jeans,
Calvin Klein T-shirts, Windows software, Chanel handbags,
Fair & Lovely cream, Lakme lipstick, Estee Lauder Perfumes,
Maruti spare parts, Kit Kat chocolates, Captain Cook salt. In
short, exterminate an industry whose turnover turns into
thousands of crores.
Phony goods are not new in India, says lawyer Chander
M. Lall who got a mandate from Sony 10 years ago to crack the
bogus bazaar--800 shops across the land--selling Sony
products. During on such raid in Delhi's Lajpat Rai market,
one counterfeiter boasted: ―I'm the greatest maker of Sony
outside of Japan.‖ It cost him his business.
But counterfeiting then was a low-quality, low-price, low-
end operation run by small leaguers and retailed mostly via
sidewalk vendors. Imitable brands were few, largely owned by
MNCS who weren't bothered since they were not doing
business in India. Also, many Indian companies preferred to
dump goods through the illicit route into the markets to escape
excise; they weren't concerned about fakes. In fact, they was it
as image-enhancing.
CS(OS) No.2356/1998 Page 9 of 24
All that's changing now. MNCS, entering India with
brand reputations honed over decades, aren't amused about
copycats making huge margins on substandard, cheap goods
that undermine confidence in established brands. ―We're
determined to see counterfeiters punished,‖ says Sanjay
Choudhuri, MD, Levi's India. Last year, Levi's conducted some
20 raids. Lacoste, Nestle, Hoechst, Procter & Gamble,
Hindustan Lever, Colgate-Palmolive are equally frazzled about
fakes. Says Siddharth Verma, GM (marketing), Reebok: ―Our
brand has an aspirational value that leads to unscrupulous
elements exploiting it. We can't afford to let our image
suffered‖
Indian companies too are realising that fakes hurt. Says
Sanjeev Aga, MD, Blow Plast: ―We discovered virtually every
retailer in Ahmedabad was selling knock-offs and in Mumbai
there were more fake Skybags selling than real ones. At least
half our business was going to counterfeiters.‖ That's when the
company launched nationwide raids. Today less than 1 per
cent of hard luggage business is lost, ―although in soft luggage
20 per cent still goes to bogus goods‖.
In '96 Arvind Mills set up an anti-piracy cell, the first of
its kind in India. It found that its Rs. 70-crore ready-to-stitch
Ruf and Tuf brand and the Newport brand--both targeted at the
price-sensitive consumer--were being sold either in the original
names or in phonetically similar names like Tuf and Tuf, Tuf
and Stuff, Newpost and Newfort. Raids were conducted at
Delhi's Gandhinagar and Mumbai's Ulhasnagar. The haul:
some 2,000 pairs of jeans in Delhi, 1,500 in Mumbai plus
countless rivets, labels, packet blasters and buttons embossed
with the brand name. Earlier, in a concerted move, the Indian
music industry raided 20 cities, arrested 62 pirates and
recovered 93,000-odd pre-recorded cassettes and inlay cards,
and 100 high-speed copiers from Punjab and Haryana alone.
Private detectives direct these raids, not policemen. The
police, says Shyam Singh, ACP, Delhi Crime Branch, can't take
suo motu action against duplicators. Makhija works with a team
CS(OS) No.2356/1998 Page 10 of 24
of informants, who gain the confidence of counterfeit vendors,
or with decoys posing as finicky shoppers, often actors. They
have to track down the vendor's backlane godown. Once the
deal is struck, the law steps in formally. ―It's gut-wrenching,
frustrating work,‖ says Makhija. Vendors tend to work in
fortress-like markets, with a parallel network of wholesalers,
distributors and retailers, guarded by strong entities like the
Gandhinagar Readymade Garments Association or the
Ulhasnagar Sindhi Association. At most centres, hawk-eyed
‗spotters' sit in the lanes and bylanes, ready to spread the word
if a detective or cop is spotted. The hint of a raid, and shops
snap shut in seconds and goods disappear with lightning speed.
At times, violence ensues. Makhija has had chairs thrown at
him, dodged broken bottles--the long scar on his cheek bears
testimony. Says Dharmendra Kapoor of Super Network, an
anti-counterfeit group: ―Unless I receive one threatening call a
week, I feel I'm slackening in work.‖ But it's a losing battle for
now. Reasons:
Technology: When every computer is a potential
duplicator, the only investment is the floppy disk. ―The
temptation and rewards of an unfair game are very strong,‖
says Verma. Agrees lawyer Bindu Chib, who represents Motion
Pictures Association in India: ―All that a pirate needs is around
Rs 30,000 for a television and a VCR to make illegal copies of a
Hollywood product that would cost around Rs 17.5 crore to
make‖. Scanners make it easy to copy logos in ditto and colour
printing makes look-alike labels as perfect as possible. The
quality is better and while originals spend big money on brand-
building and awareness, the margins are bigger for
counterfeiters who not only save on promotion but also central
and state taxes.
Foreign markets: Neighbouring countries are providing
counterfeiters with larger markets. Early this year, fearing a
witch-hunt in Hong Kong after China took over, pirates there
dumped software in India through Nepal--which had no
copyright laws until recently. Around the same time, Walt
CS(OS) No.2356/1998 Page 11 of 24
Disney discovered that hard-to-tell illegal prints of their
characters on toys and watches were the result of some
counterfeiters importing product stamps and moulds from
Singapore and Dubai. They cracked down on the 100-odd
counterfeiters in a bid to stem the menace.
Fake management: According to Chib, ―fake makers are
goods planners, close to the market, know what's selling,
practice just-in-time management of inventories with as little
wastage as possible‖. The crackdown on counterfeiters has
resulted in their scattering their assembly line into a hard-to-
connect jigsaw of small operations. If earlier the pirates were
working for 24 hours at one site, now they work only eight
hours at night in far-flung sites, storing goods in different
godowns, making it difficult to catch large quantities. ―It's like
killing bees with a hammer,‖ says Parveen Anand, a copyright
and trademarks lawyer.
The retail connection: With satellite television, a new
market is being created in the rural areas of customers who
want to buy dear brands at cheap rates. Thus, the low-end
counterfeiting is finding a larger market in the rural areas
whereas in the metros covert retailing is on the rise. ―The sales
staff of companies are often in cahoots with the large stores to
slip in well-made copies of T-shirts or jeans along with the
originals.‖
One major factor in the growth of counterfeits is the
tedious process of justice. On paper, Indian law prohibits
unauthorised duplication, and provides for civil and criminal
prosecution of duplicators. The punishment: a Rs 50,000 to Rs
200,000 fine, and a jail terms of 7 days to 3 years. ―But often,
the complainant agrees to compensation and apology from the
offenders and the case is withdrawn,‖ says V. Ranganathan,
additional DCP, Economic Crime Branch, Delhi. ―If the clients
persist with the case, the backlog of litigation and processes
can be so time-consuming that it defeats the whole purpose of
initiating any action. In the mean-time, the counterfeiter can
CS(OS) No.2356/1998 Page 12 of 24
start off under a different name and address,‖ says C.M.
Maniar, partner, Crawford Bayley & Co.
The peddlers know this. ―If I'm caught, I'll post bail,
and be back in a day or two,‖ says one pirate peddling
software. Another counterfeiter of Reebok and Nike shoes even
fancies himself as a kind of Robin Hood, stealing designs from
foreign companies to give to poor countrymen. These
companies are fooling people by charging Rs 4,000 for shoes
costing Rs.500. We're not cheats, they are,‖ says he. In the face
of such logic, can police raids or court cases really counter
homegrown entrepreneurship?
11. The plaintiff, for no explicable reason has not impleaded as party to
the suit and claimed any relief against the author of the article namely
Neerja Pawha Jetley. The notice preceding the suit also was not addressed
to the author. The only inference can be that the plaintiff has no grievance
against the author Neerja Pawha Jetley i.e. no grievance with respect to the
written text of the article.
12. However a perusal of the written text of the article reveals:
(A) That the article is general in nature, relating to the subject of
counterfeiting of well-known brands, and is not relatable to the
plaintiff;
(B) Though the article refers to a large number of brands viz.
Reebok shoes, Levi‟s jeans, Calvin Klein T-shirts, Windows software,
Chanel handbags, Fair & Lovely cream, Lakme lipstick, Estee Lauder
perfumes, Maruti spare parts, Kit Kat chocolates, Captain Cook salt,
to name a few, but neither does it name the defendant No.1 nor the
plaintiff.
CS(OS) No.2356/1998 Page 13 of 24
(C) It is not as if the research for the written text of the article has
been done from the defendant No.5 only or that the entire article is
based on information supplied by the defendant No.5. The article
names Sathish Makhija, Private Detective, Lawyer Chander M. Lall,
Sanjay Choudhuri, MD, Levi‟s India, Siddharth Verma, GM
(Marketing), Reebok, Sanjeev Aga, MD, Blow Plast, Shyam Singh,
DCP, Delhi Crime Branch, Dharmendra Kapoor of Super Network,
Lawyer Bindu Chib, V. Ranganathan, Additional DCP, Economic
Crime Branch, Delhi, C.M. Maniar, partner, Crawford Bayley & Co.,
besides the defendant No.5, from whom information published in the
article was obtained.
(D) The only statement attributed to the defendant No.5 in the text
of the article, in the backdrop of "if earlier the pirates were working
for 24 hours at one site, now they work only eight hours at night in
far-flung sites, storing goods in different godowns, making it difficult
to catch large quantities" is "It‟s like killing bees with a hammer".
(E) That though along with the other lawyers‟ names in the article,
the names of the clients they represent is also stated but the defendant
No.5 is merely described as "a copyright and trademarks lawyer" and
not as the lawyer or as the advocate for the defendant No.1.
13. One thing which immediately strikes is that the article neither
attributes anything against the plaintiff to the defendant No.1 nor does the
plaint disclose any cause of action against the defendant No.1 Kabushiki
Kaisha Toshiba (Toshiba Corporation). For a plaintiff in a suit for
CS(OS) No.2356/1998 Page 14 of 24
compensation for defamation, it is essential to disclose that each of the
defendants from whom compensation is claimed has defamed the plaintiff.
All that is pleaded is that the defendant No.5, who is alleged to have
defamed the plaintiff, is the advocate for the defendant No.1 with whom the
plaintiff is in litigation. However, the plaintiff in the plaint has not pleaded
that the defamation of the plaintiff by the defendant No.5 is as agent of the
defendant No.1, though the defendant No.5 is described in the plaint as the
lawyer of the defendant No.1. However, a lawyer is not an agent of his
client for the client to be liable for all the actions of his lawyer. The
Supreme Court in Himalayan Cooperation Group Housing Society Vs.
Balwan Singh (2015) 7 SCC 373 held that though lawyers are perceived to
be agents of their clients, the law of agency does not apply strictly to client-
lawyer relationship. A client was held to be not bound by the statement
which his lawyer was not authorised to make. The Court of Appeals of
Washington, Division One, in Christopher Demopolis Vs. Peoples National
Bank of Washington 59 Wn App. 105 held that a client‟s liability for his or
her attorney‟s defamatory communications is limited to situations in which
the attorney acted within the scope of employment and with the client‟s
knowledge and consent. It is not so pleaded by the plaintiff. Thus, one thing
is very clear that the plaint, insofar as against the defendant No.1 Kabushiki
Kaisha Toshiba, does not disclose any cause of action.
14. What needs to be determined is whether from the photograph
comprised in the article of the defendant No.5 displaying "seized fakes" and
with the carton bearing the mark „TOSIBA‟, the plaintiff has a cause of
action for defamation.
CS(OS) No.2356/1998 Page 15 of 24
15. The plaintiff along with the plaint has filed a carton of „Princess Milk
Boiler‟ sold by it showing the logo / label of the plaintiff with the mark
„TOSIBA‟, a photograph of the product and the name of the plaintiff besides
other things. The photograph in the impugned article is not of the entire
carton but only of one corner of it with the label device with the word
„TOSIBA‟ visible. Else, neither the product nor the name of the plaintiff or
the name of the product is visible. Though there are differences between the
label/logo with the word „TOSIBA‟ visible on the carton in the impugned
photograph and on the carton filed by the plaintiff but I will presume for the
purposes of the present that the label / logo on the carton in the photograph
is the same as the label / logo on the carton of the plaintiff.
16. The entire article is about counterfeit / fake goods market that
survives by selling duplicate brands, phoney goods which sell at a fraction
of the cost of the original. The defendant No.5 also, in what is attributed by
the author of the article to him, comments on the surreptitious manner in
which such fake / duplicate goods are being produced and sold. The
averments of the plaintiff in the plaint do not show the dispute between the
plaintiff and the defendant No.1 being of the plaintiff selling duplicate /
counterfeit goods of the defendant No.1. On the contrary, the dispute is
described in the plaint as a trademark dispute entailing, whether the plaintiff
can be restrained from using the mark „TOSIBA‟ and whether defendant
No.1 is entitled to registration of the mark „TOSHIBA‟. It is not the case of
the plaintiff that the defendant No.1 is also marketing and selling the same
goods which the plaintiff is selling. The dispute between the plaintiff and the
defendant No.1 is whether the plaintiff by using Tosiba is riding on the
CS(OS) No.2356/1998 Page 16 of 24
goodwill of the defendant No.1 by making its customers believe that the
goods are from the house of Toshiba. The dispute is not that the plaintiff is
selling counterfeit or fake goods. Counterfeiting entails making the same
goods which another is already making and then selling the same either
under the same mark as of another or a mark with minor variation incapable
of detection in the market. The dispute between the plaintiff and the
defendant No.1, as per averments in the plaint, is not of defendant No.1
accusing the plaintiff of counterfeiting the goods of the defendant No.1, and
which was the subject of impugned article. The depiction of the mark / label
/ logo „TOSIBA‟ in the photograph in the impugned article cannot thus
possibly be to the plaintiff. The plaintiff has further expressly pleaded in the
plaint that its goods are genuine and have never been seized. However, the
caption of the photograph of the defendant No.5 comprised in the impugned
article is of the defendant No.5 displaying seized fake goods. The senior
counsel for the defendant No.5 is thus correct in contending that since it is
the pleaded case of the plaintiff that its goods are not fake and were never
seized, the reference to the mark „TOSIBA‟ in the photograph cannot be to
the plaintiff as it is with reference to "seized fakes".
17. I am therefore unable to find the plaint to be disclosing any cause of
action against the defendant No.5 either.
18. Though, as aforesaid, the application and the nature of Order VII Rule
11 of CPC under consideration was of the defendant No.5 only but on
hearing arguments, it was felt that what was urged on behalf of the
defendant No.5 applied equally to the defendants No.2 to 4 as well. If there
CS(OS) No.2356/1998 Page 17 of 24
is no cause of action against the defendant No.5 for defamation for having
been photographed, as aforesaid, there cannot be any cause of action for
defamation against Outlook Magazine also. It was for that reason only that
the questions as recorded in the order dated 4 th January, 2017 were posed to
all the counsels.
19. There is another aspect of the matter. The counsel for the plaintiff in
response to the queries handed over written submissions along with copies
of Ashok Kumar Keshari Vs. Manika Gupta 2015 (1) AD (Delhi) 190, D.V.
Singh Vs. Pritam Singh Taneja 186 (2012) DLT 178, Reckitt & Colman of
India Ltd. Vs. Liwi T.T.K. Ltd. 63 (1996) DLT 29, and Ashok Kumar Vs.
Radha Kishan Vij 23 (1983) DLT 27. I do not find any of the said
judgments to have any bearing on the issues raised in the order dated 4 th
January, 2017 or to make me take a view other than that taken..
20. I have recently in Primero Skill & Training Pvt. Ltd. Vs. Selima
Publications Pvt Ltd. MANU/DE/0789/2017, for detailed reason given
therein and relying inter alia on Naresh Shridhar Mirajkar Vs. State of
Maharashtra AIR 1967 SC 1, held a) that Journalists have a fundamental
right to carry on their occupation under Article 19(1)(g) of the Constitution
of India; b) that the right to freedom of speech and expression guaranteed by
Article 19(1)(a) of the Constitution includes their right to publish as
Journalists a faithful report of the proceedings which they have witnessed
and heard in Court; c) freedom of speech and expression guaranteed by
Article 19(1)(a) of the Constitution includes the freedom of press; d) that
what takes place in Court is public and the publication of the proceedings
CS(OS) No.2356/1998 Page 18 of 24
merely enlarges the arena of the Court and gives to the trial that added
publicity which is favoured by the rule that the trial should be open and
public; e) that media has a right to know what is happening in Courts and to
disseminate the information to the public which enhances the public
confidence in the transparency of Court proceedings; f) that the said right
however has to be balanced with the right of a person to his reputation and
which is a facet of Article 21 of the Constitution of India; g) that there can
be no cavil that the right to freedom of speech and expression is a right that
has to get ascendance in a democratic body polity but at the same time the
limit has to be "proportionate" and not unlimited.
21. Though I have held the plaint to be not disclosing a cause of action
against the defendants but I may also add that the impugned article, I
reiterate, is not targeted against the plaintiff or its trademark and is general
in nature and on a subject of public interest on which Outlook as a news
Magazine was/is entitled to publish. The defendant No.5, I reiterate, was not
the only person contacted by the author of the article for collating
information / data published therein and as aforesaid a number of other
persons in the know of the subject were contacted. The defendant No.5 as
an advocate practicing and specializing in the field of copyright and
trademark was justified in furnishing information from his own experience
in the field. It is not in dispute that litigation between the plaintiff and the
defendant No.1 and in which the defendant No.5 was the advocate of the
defendant No.1 was underway at the time when the article was published
and continues to be so today. Though the article refers to counterfeit / fake
goods but reference therein is also found of "altered logos", of the owners of
CS(OS) No.2356/1998 Page 19 of 24
reputed brands earlier not bothering about the sale of fakes in India and in
fact seeing it as image "enhancing" and the scenario having changed with
the brands entering India etc. It is also not as if the defendant No.5 chose to
be photographed only with the packaging of the plaintiff‟s, if at all it can be
said to be so. The defendant No.5 has been photographed with a large
number of packagings, as aforesaid, and considering that the dispute was
pending, the photograph is nothing but intimation to the public of the
pending dispute.
22. The plaintiff, along with its documents, has filed the issue of the
Weekly Magazine Outlook of 9th March, 1998 containing a Corrigendum on
the letters page thereof to the effect:
―Corrigendum
In a photograph used in the article Spot the fake One
(November 3), the brand Tosiba owned by Tosiba Appliances
was inadvertently shown as part of a collection of counterfeits.
We regret the error.‖
The counsel for the defendants No. 2 to 4, on 4th January, 2017 also, agreed
to even now publish a clarification as recorded in that order.
23. I therefore hold the plaint to be not disclosing any cause of action
against the defendants No. 2 to 4 also.
24. Though in the light of my findings of the plaint not disclosing any
cause of action against the defendants No.2 to 4 also, the other legal
questions raised in the order dated 4th January, 2017 pale into insignificance
but for the sake of completeness, I may also record that in my opinion, the
CS(OS) No.2356/1998 Page 20 of 24
harm done by defamation being to the reputation of a person, a direction to
issue a public apology or a direction to correct the errors, if any, particularly
in defamation arising out of libel by media appears to be a more appropriate
relief than a relief of monetary damages. Compensation in monetary
damages can never set the record straight or restore the damaged reputation
caused by a libelous news report. The person aggrieved by a libelous news
report having a large circulation can never exactly know who all have had
access thereto and cannot possibly go to each and everyone of those persons
with the judgment of award of compensation to him. Reputation of an
individual is not something which can be measured or equated in money. It
is only a written apology contained in the same media which may reach the
same people who may have had access to the libelous material earlier
published and that alone can restore the reputation.
25. Not only so, award of damages, particularly in large amounts, against
media houses may also have a chilling effect on the media. In some cases,
payment of such amount of compensation, if unable to afford, may compel
the media to shut down or may make the media over conscious and thereby
fail in its duty to report news on contemporaneous subjects of public
interest.
26. Not only so, the plaintiff in the legal notice preceding the suit also
called upon the defendants to publish an apology failing which only the
plaintiff threatened to institute a suit for recovery. Though the defendants
No.2 to 4 published an apology but the plaintiff dissatisfied therewith,
nevertheless filed the suit.
CS(OS) No.2356/1998 Page 21 of 24
27. I had in fact during the hearing cautioned the counsel for the plaintiff
that publication now by the defendants No. 2 to 4 of a apology or a
clarification may bring adverse publicity to the plaintiff and do harm which
the impugned article is not found to have done . The counsel for the plaintiff
however did not agree.
28. The counsel for the plaintiff during the hearing referred to Arun
Jaitley Vs. Arvind Kejriwal 2016 (155) DRJ 370 to show that the plaint has
to be read as a whole.
29. The counsel for the defendant No.5 in the note submitted by him in
response to the order dated 4th January, 2017 has (i) contended that the Court
has to place itself in the shoes of a reasonable person reading the article and
is not to read the article in the way in which the claimant or defendant would
regard the statement; reliance in this regard is placed on Winfield And
Jolowicz On Tort, Nineteenth Edition at page 360 and on B.M. Thimmaiah
Vs. Smt. T.M. Rukimini AIR 2013 Karnataka 81; (ii) referred to Ismail
Merchant Vs. State of Rajasthan 1988 Raj Cr.C. 119 holding that if there is
a controversy whether the material complained of is defamatory or not, the
Court will have to first decide, as a question of law, whether the said
material is capable of being understood in a defamatory sense and only if the
Court decides the said question in the affirmative, will it then proceed to
determine whether the said material containing a defamatory potential had in
fact harmed the reputation of the complainant; (iii) referred to Sh. H. Syama
Sundara Rao Vs. Union of India MANU/De/9650/2006 (DB) holding that
it is the duty of the Courts to protect the advocate from being cowed down
CS(OS) No.2356/1998 Page 22 of 24
into submission and under pressure of threat of menace from any quarter and
thus abandon their clients by withdrawing pleas taken on their behalf or by
withdrawing from the brief itself; (iv) referred to Winfield And Jolowicz On
Tort, Nineteenth Edition at page 383 opining that impartial report of Court
proceedings cannot give rise to a cause of action for defamation; (v) referred
to John Vs. MGN Ltd. [1997] Q.B. 586, Paul Rackham Vs. Sandy [2005]
EWHC 482 (QB) at para 124, Pamplin Vs. Express Newspapers Ltd. [1988]
1 W.L.R. 116 and Grobbelaar Vs. News Group Newspapers Ltd. [2002] 1
W.L.R. 3024 to contend that the amount of damages can be reduced, if the
defendant withdraws the defamatory statement and offers a correction and to
award minimal damages.
30. Accordingly, though the plaint is rejected as not disclosing cause of
action but for the reasons aforesaid, the defendants No.2 to 4 are directed to
within six weeks of today publish in 'Wide Latin' font in '16' size on the
Index page of its issue of Outlook Magazine, the following content:
"With reference to article titled „Fake Goods-- Spot the Fake One--
Big brands take on counterfeiters--but it‟s guerrilla warfare‟ in 3rd
November, 1997 issue of this Magazine, it is clarified that M/s Tosiba
Appliances Co. Pvt. Ltd., Sheikh Sarai, Malviya Nagar, New Delhi
claiming right to the trademark „TOSIBA‟ and M/s Kabushiki Kaisha
Toshiba claiming right to the trademark „TOSHIBA‟ have been in
litigation and no part of the said article be read as imputing that the
goods of M/s Tosiba Appliances Co. Pvt. Ltd., Sheikh Sarai, Malviya
CS(OS) No.2356/1998 Page 23 of 24
Nagar, New Delhi are fake / counterfeit goods of „TOSHIBA‟ of M/s
Kabushiki Kaisha Toshiba".
No costs.
Decree sheet be drawn up.
RAJIV SAHAI ENDLAW, J.
st MAY 1 , 2017 „gsr/bs‟ CS(OS) No.2356/1998 Page 24 of 24