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2025 Supreme(Online)(Bom) 6072

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
R.I. Chagla, J
The Indian Express (P) Ltd. – Appellant
Versus
Express Publications (Madurai) Pvt. Ltd. – Respondent
INTERIM APPLICATION (L) NO.31555 OF 2024 | IPR SUIT (L) NO.31230 OF 2024

Advocates:
For the Appellants/Petitioners: Mr. Darius Khambata, Mr. Arun Mohan, Dr. Abhinav Chandrachud, Mr. Pranit Kulkarni, Ms. Chanan Parwani, Ms. Tejasvi Ghag, Mr. Shivam Singh, Ms. Poorvi Kamani
For the Respondents: Mr. Zal Andhyarujina, Ms. Revati Desai, Mr. Deepak Chitnis

The trademark 'New Indian Express' is a derivative of 'Indian Express', limited to defined territories; unauthorized use by the Defendant outside these parameters constitutes trademark infringement.

Headnote:(A) Trade Marks Act, 1999 - Sections 2(1)(r), 28, 53 - Consent Decree - Dispute between parties regarding trademark 'New Indian Express' and its permitted use - Plaintiff's rights to 'Indian Express' upheld - Defendant's permission limited to publication in specified southern states and UTs - Unauthorized commercial use or promotional activities outside this area amounts to infringement and passing off. (Paras 72-94)

(B) Acquiescence in Law - A party cannot waive rights under a consent decree; mere inaction or acquiescence does not confer rights on the opposing party. (Paras 87-90)

(C) Interpretation of Contracts - Clauses of a consent decree must be construed strictly; any extension of rights must be expressly provided. (Paras 18(iv), 75)

Facts of the case:
The Plaintiff sought injunction against the Defendant for unauthorized use of the phrase 'New Indian Express' beyond permitted territories established in the Memorandum of Settlement (MoS) of 1995 and its Supplemental Agreement of 2005. The Defendant's claim of broader rights was refuted.

Findings of Court:
The Court upheld Plaintiff's ownership over the trademark 'Indian Express' and restricted Defendant's use of 'New Indian Express' to five southern states and Union Territories only for publication. Substantial unauthorized use leads to harm and violates the MoS.

Issues: Determining the validity of the Defendant's claims to broader use rights beyond those permitted in the MoS and whether historical usage amounts to acquiescence by the Plaintiff in the infringement of trademark rights.

Ratio Decidendi: The MoS and Supplemental Agreements strictly limit the Defendant's use rights, and the Plaintiff's consent decree is binding. No circumvention of these rights is permissible, hence the Defendant's unauthorized activities infringe Plaintiff's trademark rights.

Result: Interim Application granted in favor of the Plaintiff.

Table of Content
1. injunction sought based on terms of settlement. (Para 1 , 2)
2. arguments on limited rights under the mos. (Para 3 , 4 , 5 , 6 , 7)
3. financial terms agreed in mos. (Para 8)
4. ownership and control asserted by plaintiff. (Para 9 , 10 , 11 , 12)
5. negative covenants restrict defendant's use. (Para 13 , 14 , 15 , 16 , 17 , 18 , 19 , 20)
6. no waiver of rights as per consent decree. (Para 21 , 22 , 23 , 24 , 25 , 26)
7. counterarguments by defendant on acquiescence noted. (Para 27 , 28 , 29 , 30 , 31 , 32)
8. defendant’s interpretation of the mos challenged. (Para 33 , 34 , 35 , 36 , 37)
9. past conduct can inform contract intent. (Para 38 , 39 , 40)
10. waiver of rights under a consent decree discussed. (Para 41 , 42 , 43 , 44)
11. plaintiff did not take action leading to acquiescence claims. (Para 45 , 46 , 47 , 48)
12. joint advertising agreement explained. (Para 49 , 50 , 51)
13. defendant’s rights clarified under trademarks law. (Para 52 , 53 , 54 , 55 , 56 , 57)
14. mos as a corporate settlement highlighted. (Para 58 , 59 , 60)
15. claims of exclusive rights and prior usage evaluated. (Para 61 , 62 , 63)
16. ipab order's limitations discussed. (Para 64 , 65)
17. defendant's legitimacy questioned. (Para 66 , 67 , 68 , 69)
18. court’s observations on merits of interim application. (Para 70 , 71)
19. mos tailors settlement of disputes. (Para 72 , 73 , 74)
20. court’s authority to enforce stipulated contractual terms. (Para 75 , 76 , 77)
21. scope and limitations of defendant’s rights analyzed. (Para 78 , 79 , 80)
22. mos and associated documents remain in effect. (Para 81 , 82 , 83)
23. ipab's jurisdiction on trademark use confirmed. (Para 84 , 85 , 86)
24. defendant's arguments on waiver examined. (Para 87 , 88 , 89)
25. court emphasizes no goodwill conferred on defendant. (Para 90 , 91 , 92 , 93)
26. interim relief justified due to potential harm. (Para 94 , 95)

ORDER:-

1. By this Interim Application, the Applicant / Plaintiff has sought an Order of injunction restraining the Defendant from breaching, violating or acting contrary to the terms and conditions of the Memorandum of Settlement dated 5th February, 1995 recorded as a decree on 16th April, 1997 in C.S. Nos.1246 and 1247 of 1992 by the Madras High Court and the Supplemental Agreement dated 12th August, 2005 executed between the Plaintiff and Defendant. The Applicant has also sought an injunction restraining the Defendant from infringing and / or passing off or misrepresenting the Plaintiff’s registered trademarks, by using the Plaintiff’s trademarks or the title “The New Indian Express” for any purpose or event or program or business outside the specified states of Karnataka, Kerala, Tamil Nadu, Andhra Pradesh and Orissa and the Union Territories (UTs) of Pondicherry, Enam, Andaman Nicobar Islands and Lakshadweep islands as specified under the Memorandum of Settlement dated 5th February, 1995 recorded as a decree on 16th April, 1997 in C.S. Nos.1246 and 1247 of 1992 by the Madras High Court and the Supplemental Agreement dated 12th August, 2005 executed between the Plaintiff and Defendant or in any other manner likely to cause confusion, deception or mistake among the public.

2. The brief background of facts is as under:-

(i) Shri Ramnath Goenka was the founder of the Indian Express Group. All the newspapers were held by a holding company called Nariman Point Building Services & Trading Pvt. Ltd. (“NPBS”). Ramnath Goenka divided NPBS shareholding between his two grand sons Vivek Goenka, son of Krishna Khaitan, and Manoj Kumar Sonthalia, son of Radhadevi Sonthalia. NPBS shareholding comprised of 25,000 equity shares of which Vivek Goenka was given 15,680 shares (62.72%) and Manoj Kumar Sonthalia was given 9280 shares (37.12%). Additionally, Manoj Kumar Sonthalia’s mother Radhadevi Sonthalia held 40 shares (0.16%).

(ii) In 1990, Ramnath Goenka adopted Vivek Goenka as his son. The adoption deed was registered and eminent personalities were witnesses.

(iii) Sometime in 1990, Mano

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2025 Supreme(Online)(Bom) 6072

IN THE HIGH COURT OF JUDICATURE AT BOMBAYR.I. Chagla, JThe Indian Express (P) Ltd. – AppellantVersusExpress Publications (Madurai) Pvt. Ltd. – RespondentINTERIM APPLICATION (L) NO.31555 OF 2024 | IPR SUIT (L) NO.31230 OF 2024

The trademark 'New Indian Express' is a derivative of 'Indian Express', limited to defined territories; unauthorized use by the Defendant outside these parameters constitutes trademark infringement.

Cases Referred (5)

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
R.I. Chagla, J
The Indian Express (P) Ltd. – Appellant
Versus
Express Publications (Madurai) Pvt. Ltd. – Respondent
INTERIM APPLICATION (L) NO.31555 OF 2024 | IPR SUIT (L) NO.31230 OF 2024