Bombay High Court Restrains 'The New Indian Express' from Holding Mumbai Event, Upholds Sanctity of 1995 Family Settlement

Mumbai, India – In a significant ruling concerning a long-standing dispute within the Indian Express newspaper empire, the Bombay High Court has granted an interim injunction restraining Express Publications (Madurai) Pvt. Ltd. from using the title “The New Indian Express” for any event or business outside of five specified southern states and certain union territories.

Justice R.I. Chagla, affirming the sanctity of a court-decreed family settlement from 1995, held that the Defendant's use of the brand for an event in Mumbai was a prima facie breach of the agreement and amounted to trademark infringement. The court emphatically rejected the Defendant's argument that the Plaintiff had waived its rights through acquiescence, stating that rights accrued under a consent decree cannot be diluted or waived in such a manner.

Background of the Dispute

The case stems from a corporate and family settlement formalized through a Memorandum of Settlement (MoS) in 1995, which resolved disputes between Vivek Goenka (controlling The Indian Express (P) Ltd.) and his cousin Manoj Kumar Sonthalia (controlling Express Publications (Madurai) Pvt. Ltd.). The MoS, later decreed by the Madras High Court, delineated the use of the iconic "Indian Express" brand.

Under the settlement, The Indian Express (P) Ltd. retained absolute ownership of the "Indian Express" trademark throughout India. Express Publications (Madurai) Pvt. Ltd. was granted a limited "permitted use" of the derivative title "The New Indian Express" only for the publication of an English daily newspaper in the states of Karnataka, Kerala, Tamil Nadu, Andhra Pradesh, and Orissa, and specified Union Territories.

The present conflict arose when The Indian Express (P) Ltd. discovered that the Defendant was organizing a sponsored event in Mumbai titled “The New Indian Express – Mumbai Dialogues,” which it argued was a clear violation of the territorial and purpose-based restrictions in the MoS.

Key Arguments Presented

Plaintiff's Submissions (The Indian Express (P) Ltd.): Senior Advocate Darius Khambata, representing the Plaintiff, argued that the 1995 MoS was not an equal partition but a carefully structured agreement granting the Defendant a limited license. He emphasized the negative covenants in the MoS, particularly Clause 18(iv), which explicitly states that the use of "New Indian Express" is for newspaper publication in the specified territories "and for no other purpose or any other area or territory for any use whatsoever." He contended that organizing a sponsored event in Mumbai constitutes a separate business stream that directly violates this decree and infringes upon the Plaintiff's absolute ownership of the "Indian Express" trademark.

Defendant's Submissions (Express Publications (Madurai) Pvt. Ltd.): Representing the Defendant, Senior Advocate Zal Andhyarujina countered that the MoS was a division of the family business, not a mere licensing arrangement. He argued that the agreement did not explicitly prohibit the promotion of their newspaper outside the southern states. The core of his defense was the doctrine of acquiescence, citing that the Plaintiff had, for years, been aware of and even participated in promoting "The New Indian Express" nationally, thereby waiving its right to object. He also relied on a 2011 interim order from the Delhi High Court that had previously declined to grant an injunction on similar grounds.

Court's Analysis and Pivotal Findings

Justice Chagla, in a detailed order, sided with the Plaintiff, establishing a strong prima facie case. The court's reasoning was built on several key pillars:

• Strict Interpretation of the Consent Decree: The court held that the language of the MoS was clear and unambiguous. It found that the Defendant was a "permitted user" with rights strictly confined to newspaper publication within the specified geography. The judgment noted, “The Defendant has by its own interpretation not been able to justify the use of the phrase ‘only for the publication’ and ‘for no other purpose or any other area or territory for any use whatsoever’.”

• Events as a Separate Business: The court distinguished between promoting a publication and conducting a standalone sponsored event, which it viewed as a separate business and income stream. “This event is not merely a promotion of its publication but a standalone event with sponsors which brings in additional revenue… which in my prima facie view is prohibited by the terms of the MoS.”

• No Waiver by Acquiescence for a Consent Decree: The court made a crucial distinction on the issue of acquiescence. While waiver can apply to statutory rights, it cannot be used to flout a court decree. Citing Supreme Court precedents, the judgment stated, “I find much merit in the submission on behalf of the Plaintiff that there has been no acquiescence... In any event, it is well settled that there cannot be an acquiescence or waiver of rights accrued under a consent decree... The Defendant’s contention on waiver of the Consent Decree strikes at the sanctity of a Consent Decree.”

• Impact of the IPAB Order: The court also gave weight to a 2015 order from the Intellectual Property Appellate Board (IPAB), which had formally restricted the Defendant’s registered trademark for “The New Indian Express” to the five southern states. The court noted that this order, which the Defendant never challenged, superseded the earlier prima facie findings of the Delhi High Court.

Final Decision and Implications

Finding the balance of convenience in the Plaintiff's favor and to prevent irreparable harm and dilution of the "Indian Express" mark, the court made the Interim Application absolute. The Defendant, Express Publications (Madurai) Pvt. Ltd., is now restrained from breaching the 1995 settlement and from using the trademark "The New Indian Express" for any purpose or event outside its contractually permitted territories.

This order reaffirms the legal principle that court-sanctioned consent decrees must be rigorously adhered to and that a party's rights under such a decree cannot be easily eroded by claims of delay or inaction from the other party.