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by Admin
11 December 2025 4:14 PM
“The Defendant cannot promote its publication outside the five Southern States and specified UTs” — In a landmark order Justice R.I. Chagla of the Bombay High Court (Commercial Division) granted a sweeping interim injunction in favour of The Indian Express (P) Ltd., restraining Express Publications (Madurai) Pvt. Ltd. from using the title “New Indian Express” outside the permitted geographical boundaries defined under a Consent Decree dated 16 April 1997 and a Supplemental Memorandum of Settlement (MoS) dated 12 August 2005.
Holding that the defendant’s use of the trademark ‘New Indian Express’ in Mumbai for the event “Mumbai Dialogues” amounted to a clear breach of the consent decree, the Court observed:
“The limited permission to the Defendant conferred by the MoS is only to use for publication in the five Southern States and specified UTs and for no other purpose.”
The ruling addresses critical questions surrounding the interpretation of consent decrees, limits of trademark use, and the legal doctrine of acquiescence, while reinforcing that a party cannot override judicially recorded settlements through unilateral conduct.
“New Indian Express is Merely a Derivative of Indian Express, Not a Distinct Mark” — Court Rejects Defendant’s Claim to Proprietary Rights
Justice Chagla’s decision turned heavily on the nature of the MoS, which he found granted only limited, territorial and purpose-specific rights to the Defendant, and in no manner constituted a partition of assets or transfer of proprietary ownership in the mark “Indian Express” or its derivatives. The Court categorically ruled:
“The expression ‘New Indian Express’ is only a derivative of the mark ‘Indian Express’ by adding the word ‘New’. The Plaintiff is the absolute proprietor of the mark ‘Indian Express’. By merely adding ‘New’… the Defendant cannot claim their limited user includes absolute and unregistered use of the mark ‘New Indian Express’ outside of the five Southern States and UTs.” [Para 92]
The Court emphasized that the MoS did not create two proprietary title holders, but rather granted a narrowly defined permissive use of a derivative trademark to the Defendant.
Division of Indian Express Legacy Post Ramnath Goenka’s Death
The dispute arose from the family division of the Indian Express Group following the death of Shri Ramnath Goenka in 1991. Civil suits filed in 1992 led to a 1995 MoS, under which the Defendant was permitted to use the term “New Indian Express” only to publish an English daily in five southern states — Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, and Orissa — and certain UTs.
This MoS was decreed by the Madras High Court in 1997, binding both parties.
However, on 20 September 2024, the Defendant organized an event titled “The New Indian Express – Mumbai Dialogues”, which was held in Mumbai, a region clearly outside the permitted zones. This action triggered a fresh legal challenge from the Plaintiff, who asserted a violation of the decree and trademark infringement.
“This Is Not Promotion, But a Standalone Revenue-Generating Event” — Court Calls Out Defendant’s Commercial Strategy
Justice Chagla rejected the Defendant’s argument that the Mumbai event was a form of permissible promotion. Instead, the Court found that it was an independent business activity and not tied to the act of publishing the newspaper:
“This event is not merely a promotion of its publication but a standalone event with sponsors which brings in additional revenue and amounts to a separate business and income stream altogether.” [Para 76]
Referring to Clauses 17, 18(iv), and 19(iv) of the MoS, the Court observed:
“The Defendant only has a limited permissive user… and cannot use ‘Indian Express’ or any of its derivatives… at any time whatsoever.” [Para 75]
“Consent Decree Cannot Be Waived Or Diluted Through Acquiescence” — Bombay High Court Refuses to Recognize Passive Silence as Permission
The Defendant invoked acquiescence and waiver, arguing that the Plaintiff’s previous silence, including a joint advertising arrangement, amounted to tacit consent. However, the Court decisively rejected this defense:
“No waiver/acquiescence can override a binding consent decree.” [Para 87]
Justice Chagla reinforced the legal principle that a Consent Decree, once recorded by a Court, cannot be overridden by later conduct or silence unless modified through proper legal channels:
“A Court seized of a subsequent dispute involving interpretation of a Consent Decree can certainly not validate the breach of the Consent Decree on the grounds of alleged acquiescence.” [Para 87]
The Court emphasized that the Joint Advertising Agreement executed in the past did not alter the legal boundaries defined by the MoS, and its termination in 2010 negated any continuing reliance.
“The Source and Origin of the Mark Indian Express Is Wholly Vested with the Plaintiff” — Court Applies ‘One Mark, One Source’ Doctrine
One of the central themes in the judgment was the preservation of source identity in trademark law. The Court upheld that the concept of “one mark, one source” underlies trademark protection and concluded:
“Given the overarching principle of ‘one mark, one source’, the source / origin of the mark ‘Indian Express’ is wholly vested with the Plaintiff… and the Defendant cannot seek to usurp the same in derogation of the language of the MoS.” [Para 78]
The Court thus held that any use of the derivative mark outside the agreed zones amounted to deceptive use, likely to cause confusion and erode the goodwill that belonged exclusively to the Plaintiff.
“IPAB Order Restricting Use to Southern States Is Binding” — Defendant Barred from Claiming Independent Rights
The Court highlighted that the IPAB Order dated 18 June 2015, which restricted the Defendant’s trademark use to the five southern states and UTs, was not challenged and had attained finality.
“Any statutory rights claimed by the Defendant is subject to the MoS and does not have any standalone basis.” [Para 80]
This observation further undermined the Defendant’s contention of proprietary rights independent of the MoS and showed that even statutory registration was subservient to contractual obligations.
Delhi High Court Interim Orders Have No Precedential Value — Court Clarifies Limited Effect
Rejecting the Defendant’s heavy reliance on Delhi High Court’s interim order dated 10 October 2011, Justice Chagla noted that it was neither binding nor conclusive, and had in any case been overtaken by later developments, including the IPAB decision.
“The reliance placed by the Defendant upon the Delhi High Court proceedings and the said Order… is misplaced.” [Para 83]
The Court clarified that the Delhi Suit was dismissed for non-prosecution and the interim observations could not dilute the force of a decreed consent settlement.
Defendant’s Use of ‘New Indian Express’ Outside Permitted Territories Is Unauthorized, Infringing, and Actionable
Summarizing its findings, the Bombay High Court held:
“The Plaintiff being the absolute owner of the trademark ‘Indian Express’… is entitled to restrain the Defendant from the use of ‘New Indian Express’ outside of the permitted territories.” [Para 93]
It concluded that the Defendant’s actions amounted to:
Violation of the Consent Decree
Trademark infringement under the Trade Marks Act, 1999
Passing off
Deceptive expansion of limited user rights
“Such usage would also result in irreparable harm being caused to the Plaintiff.” [Para 94]
Interim Injunction Allowed in Full
Justice Chagla allowed the Interim Application fully:
“The Interim Application is accordingly made absolute in terms of prayer Clauses (a) to (d). There shall be no order as to costs.” [Para 95]
This effectively bars the Defendant from:
Using “New Indian Express” outside the specified five southern states and UTs
Organizing events or promotional activities under the disputed mark beyond permitted territories
Asserting any right inconsistent with the MoS and Supplemental MoS
Date of Decision: 13 November 2025
