'Any Use Whatsoever' Includes Promotion & Events: Bombay High Court Restrains New Indian Express Group From Hosting Commercial Events Outside Southern States

"Terminology used in the MOS clearly restricting the 'use' of the title 'New Indian Express' which was restricted only for publications, in our view do not admit 'advertisement or promotion' outside the five southern States and the Union Territories." Bombay High Court, in a significant ruling, upheld an injunction restraining Express Publications (Madurai) Private Limited from using the trademark "The New Indian Express" to conduct commercial events outside its designated southern territories.

A division bench of Justice Bharati Dangre and Justice Manjusha Deshpande held that the restrictive covenants in the family settlement between the parties encompass every mode of commercial exploitation, including advertising and event sponsorship.

The Court observed that the right to use the derivative mark was a "permitted use" under a business arrangement and did not confer independent proprietary rights that could override the geographical limitations set by the Intellectual Property Appellate Board (IPAB) and previous consent decrees.

The dispute traces back to a 1995 Memorandum of Settlement (MOS) and a 2005 Supplemental Agreement aimed at dividing the "Indian Express" business between heirs of Late Shri Ramnath Goenka. Under the settlement, the Indian Express Group (Respondent) retained absolute ownership of the "Indian Express" titles, while the Madurai-based Express Publications (Appellant) was permitted restricted use of the title "New Indian Express" within five southern states. The current litigation was triggered when the Appellant organized the "Mumbai Dialogue" event in September 2024, which the Respondent claimed violated the geographical and functional restrictions of the settlement.

The primary question before the court was whether the restrictive phrase "for no other purpose or any other area or territory for any use whatsoever" in the MOS included promotional events and advertising. The court was also called upon to determine if a prior interim order from the Delhi High Court in a similar dispute operated as res judicata and whether the Respondent had acquiesced to the Appellant's nationwide activities.

Statutory Definition Of "Use" Includes Non-Physical Exploitation

The Court placed heavy reliance on Section 2(2)(b) and 2(2)(c) of the Trade Marks Act, 1999, to interpret the scope of the word "use." It noted that the statutory definition is expansive and is not limited to the physical application of a mark on goods. The bench observed that "use" in relation to a mark shall be broadly construed to include its appearance in advertisements, invoices, and promotional materials.

By applying the principles laid down by the Supreme Court in Hardie Trading Limited vs. Addisons Paints and Chemicals Limited, the Court concluded that the term "use" encompasses "Promotion and Advertising." Therefore, any activity that promotes the Appellant’s publication outside the five southern states constitutes a violation of the negative covenant agreed upon in the 1995 settlement.

"The terminology used in the MOS clearly restricting the 'use' of the title 'New Indian Express'... do not admit 'advertisement or promotion' outside the five southern States."

IPAB Order Restricting Registration To Specific Territories Is Binding

The bench emphasized the 2015 order of the Intellectual Property Appellate Board (IPAB), which had restricted the Appellant's registration of the mark "The New Indian Express" solely to the states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, and Odisha. The Court noted that this order had attained finality as it was never challenged in appeal.

Under Section 124(4) of the Trade Marks Act, findings rendered in rectification proceedings are binding on Civil Courts. The bench held that since the IPAB had already circumscribed the geographic scope of the Appellant’s trademark registration, the Appellant could not claim a broader right to use the mark for commercial purposes in Mumbai or other non-permitted territories.

Court Rejects Plea Of Res Judicata Based On Interim Orders

The Appellant had argued that a 2011 interim order by the Delhi High Court, which declined an injunction against them, should bind the present proceedings. However, the Division Bench clarified that an interim order containing prima facie findings does not conclusively determine the rights of parties and cannot act as a precedent.

Citing State of Assam vs. Barak Upatyaka D.U. Karmachari Sanstha, the bench noted that once a suit is dismissed for non-prosecution, as was the case with the Delhi suit, all interim orders merge into the final order and cease to exist. The Court held that the findings in the earlier litigation were only tentative arrangements to preserve the status quo and carried no weight after the suit’s dismissal.

"An interim order which does not finally and conclusively decide an issue cannot be a precedent."

Acquiescence Requires Positive Act Of Encouragement

Dealing with the allegation that the Respondent had "maintained a stoic silence" while the Appellant advertised nationwide for years, the Court held that a consent decree cannot be varied by mere conduct or inaction. The bench clarified that acquiescence implies a positive act of encouragement that leads the other party to change its position, not merely a failure to sue.

The Court found that the Respondent had consistently asserted its rights by contesting the Appellant's registration before the IPAB and filing suits in various High Courts. It further noted that if the use of a mark is found to be "dishonest" or in deliberate violation of a consent decree, the plea of delay or acquiescence becomes entirely irrelevant.

"A consent decree cannot be varied by conduct of the parties and acquiescence definitely implies a positive act and mere inaction would not amount to acquiescence."

Appellant Is A Permitted User, Not An Independent Owner

The Court meticulously analyzed the clauses of the MOS to determine the nature of the Appellant's rights. It found that the Indian Express Group remained the "ultimate right vested" owner, and the Appellant was required to act "on behalf of and in the name of the respondent" in certain infringement scenarios. This indicated that the Appellant was merely a "permitted user" under a restricted license.

The bench concluded that the "Mumbai Dialogue" event was not a mere promotion of a newspaper but an exploitation of the mark to host independent commercial assets generating corporate sponsorship. Since this occurred in a "contractually and legally forbidden territory," it amounted to a gross overreach of the explicit restrictions set forth in the settlement.

The Division Bench dismissed the appeal, upholding the Single Judge's order of injunction. It held that the Appellant must strictly abide by the geographical boundaries assigned to it in the MOS and the supplemental agreements. The Court reaffirmed that the Indian Express Group’s ownership of the "well-known mark" is unlimited in point of territory and time across India, except for the specific "permitted use" carved out for the Madurai group.

Date of Decision: 15 June 2026