The main legal point established in the judgment is the relationship between the special act, Press Act, and the Trade Marks Act, 1999, emphasizing the importance of registration under the Press Act for publishing a newspaper in India and the protection of well-known marks under the Trade Marks Act, 1999.

1. The Plaintiffs, the owners and proprietors of the popular and well known “Indian Express” group of newspapers and publications seek an injunction against the Defendant restraining him from infringing their registered trade mark “Indian Express”. The Plaintiffs have set out the inter se devolution of title between them. This is not immediately germane, not being disputed. The 2nd Plaintiff is the registered proprietor of various trade marks and it has assigned these to the 1st Plaintiff, today the subsequent proprietor.

2. The Defendant says that he is a publisher as much by occupation as inclination. He is a resident of Ganeshpura, Morena, Madhya Pradesh. There, he claims to have begun and carried on for a short time the publication and limited distribution of a journal or a newspaper with the name “Indian Express”, written, however, in Devnagari. It is this action that prompted the present suit.

3. The Plaintiffs are two of several companies and corporate entities in the Indian Express group. The phrase “Indian Express” features prominently in the corporate names of most, if not all, of these corporate entities. The Plaintiffs publish newspapers and magazines in English and many other regional languages. There are about 20 such publications with 68 editions. These emanate from 50 centres across India. Till recently there was also a publication in the United States. The Indian Express newspaper itself has been in publication since 1932. It is published from various cities. It has a popular and busy online edition. It enjoys a circulation even in the areas where it is not actually published.

4. The Plaintiffs also claim to have registrations to the mark “Indian Express” in Class 16. I will turn to the evidentiary material in this regard shortly. It is, however, sufficient to note that this claim to the ownership of the trade mark registration is not disputed by the Defendant.

5. In addition to these trade mark registrations, and this is of some consequence, the Plaintiffs have also registered the title “The Indian Express” with the Registrar of Newspapers for India (“RNI”). This is a statutory body under the Press and Registrations of Books Act, 1867 (“the Press Act”). The Plaintiffs have some title registration dating back half a century or more in various parts of India. Particulars are set out in the Plaint, which also contains particulars of various awards won by the Plaintiffs and their publications, the work that they are known for, their Internet presence and so on.

6. The Plaintiffs claim that in May 2009 they learnt that the Defendant approached the RNI and attempted to register “Indian Express” under the Press Act. The Defendant claimed to be using the word “Indian Express” in “another language”. It is true that what the Defendant registered was in Devnagari but, as Dr. Chandrachud for the Plaintiffs points out, whether this can be said to constitute use “in another language” is more than somewhat debatable. The Plaintiffs wrote to the RNI on 5th May 2009 asserting their rights. I will revert to the relevant documentary evidence in this regard later. The Plaintiffs also applied for trade mark registration of “Indian Express” in Devnagari.

7. The Defendant has filed a Written Statement. He says in this that he obtained title registration to “Indian Express” in Devnagari under the Press Act long before the Plaintiffs obtained trade mark registration in Devnagari. Having obtained title registration, he bona fide used it till he received a notice from the Plaintiffs. The sum and substance of the Written Statement, as I see it, is not a dispute or contest on facts at all. What the Defendant says is that he is entitled to use and exploit his Press Act registration and that this does not constitute an infringing use of the Plaintiffs’ mark. In short, the Defendant says that he used the words “Indian Express” writt