Case Title: The Indian Express (P) Ltd. Vs Express Publications (Madurai) Pvt. Ltd.
Case Number: Interim Application (L) No. 31555 of 2024 in COMM IPR Suit (L) No. 31230 of 2024
Neutral Citation: 2025:BHC:XXXX (Not mentioned in the order; Bombay High Court orders do not yet reflect this format, so placeholder provided)
Court: High Court of Judicature at Bombay, Ordinary Original Civil Jurisdiction, Commercial Division
Judge: Hon’ble Justice R. I. Chagla
Order Reserved On: 26 June 2025
Order Pronounced On: 13 November 2025
Source: Order PDF provided by the user (55 pages)
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Introduction
This research paper analyses in detail the Bombay High Court’s order concerning a long-standing trademark and contractual dispute between two prominent media houses arising out of the use of the marks “Indian Express” and “The New Indian Express”. The judgment deals with complex issues of ownership, territorial restriction, permissive use, trademark infringement, passing off, contractual interpretation, and enforcement of consent decrees. Justice R. I. Chagla examines the circumstances under which a party permitted to use a derivative trademark within a limited territory may or may not extend that use beyond agreed boundaries.
The Court ultimately grants an injunction in favour of The Indian Express (P) Ltd., holding that the Defendant’s use of “The New Indian Express” for an event in Mumbai amounted to breach of a consent decree, besides trademark infringement and passing off. This paper simplifies the legal discussion while keeping the legal depth, citations, and reasoning intact.
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Facts of the Dispute
The dispute traces its origins to the historical division of business between the two groups belonging to the Goenka family. The Indian Express Group was controlled by Shri Ramnath Goenka, and its shareholding was divided among various family members and entities. Disagreements arose over ownership and management, leading to multiple litigations in the early 1990s between Manoj Kumar Sonthalia on one side and Vivek Goenka on the other.
These litigations were settled through a Memorandum of Settlement dated 5 February 1995 (MoS), which was later recorded as a decree by the Madras High Court on 16 April 1997 in C.S. Nos. 1246 and 1247 of 1992. A Supplemental Agreement dated 12 August 2005 was also incorporated into a subsequent order of the Madras High Court on 16 September 2005.
Under these agreements, the Plaintiff, The Indian Express (P) Ltd., retained absolute and unrestricted ownership of the title “Indian Express” across India for all purposes—print, electronic, or any other medium. The Defendant, Express Publications (Madurai) Pvt. Ltd., was granted only a limited “permitted user” right to use the derivative expression “The New Indian Express” solely for publication of an English daily newspaper, and only within the five southern states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, and Odisha, and the Union Territories of Pondicherry, Ennor, Lakshadweep, and Andaman & Nicobar.
Despite this restricted permission, in September 2024 the Defendant organised an event titled “The New Indian Express – Mumbai Dialogues” in Mumbai. The Plaintiff objected that this amounted to unauthorised use of the derivative mark outside the permitted territory and for a purpose not allowed under the MoS. The Plaintiff filed the present commercial IPR suit and the accompanying interim application seeking an injunction.
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Procedural Background
The MoS of 1995 and the Supplemental Agreement of 2005 were decreed by the Madras High Court, giving them the force of a binding consent decree. The Defendant subsequently obtained a trademark registration for “The New Indian Express (Label)” on 24 September 2005. This registration, however, became subject to rectification proceedings. In 2015, the Intellectual Property Appellate Board (IPAB) restricted the statutory rights of the Defendant by directing that the trademark could only be used within the same limited geographical territory specified in the MoS.
The Plaintiff previously filed a suit in the Delhi High Court objecting to references to “New Indian Express” in the Defendant’s “Sunday Standard” publication. Interim relief was refused on 10 October 2011. The suit was later dismissed for non-prosecution on 6 May 2015. The Defendant attempted to use this past litigation as evidence of acquiescence.
In the present matter before the Bombay High Court, the Plaintiff sought urgent injunctive relief on the ground that the event held in Mumbai amounted to breach of the consent decree, violation of negative covenants, and trademark infringement.
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Core Dispute
The dispute centres on whether the Defendant’s use of the mark “The New Indian Express” in Mumbai for an event amounts to:
● breach of the MoS and Supplemental MoS
● violation of a consent decree
● infringement and passing off of the registered trademark “Indian Express”
● expansion of a limited permitted user right into an independent proprietary right
● honest concurrent user
● acquiescence by the Plaintiff through its past conduct
The Plaintiff argued that “The New Indian Express” is merely a derivative of the mark “Indian Express”, created for limited use under the MoS. It claimed exclusive nationwide rights in “Indian Express” and asserted that the Defendant’s event in Mumbai amounted to unauthorized commercial use.
The Defendant argued that it was promoting its newspaper, not publishing it outside the southern states. It relied on past joint advertising agreements, conduct of the parties, and the Delhi High Court’s 2011 interim order permitting limited references to “New Indian Express Group – Madurai”.
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Detailed Judicial Reasoning
The Court conducted a detailed analysis of contractual interpretation principles, trademark law, evidence of conduct, and the binding nature of consent decrees.
On Contractual Interpretation and Consent Decree
Justice Chagla emphasized that a consent decree must be construed strictly, following the plain meaning of its terms. Citing Rama Narang v. Ramesh Narang, the Court held that a consent decree is both a command of the court and an enforceable contract. Once incorporated into a decree, the contractual terms gain legal force and cannot be modified by unilateral conduct or convenience.
The MoS clearly established that the Plaintiff retains full rights in “Indian Express” for all media and for the entire territory of India. The Defendant was only granted a “limited permitted user” right for publication of a newspaper in the southern states and UTs. The MoS also contained a negative covenant that the Defendant “shall not directly or indirectly use the title, IE or any of its derivatives or any title similar or resembling thereto at any time whatsoever” except as specifically permitted.
Therefore, organising a commercial event in Mumbai under the banner “The New Indian Express – Mumbai Dialogues” was outside the permitted scope in two ways: it was outside the geographical area and it was not for the purpose of newspaper publication.
On Trademark Rights and Territorial Limits
The Court agreed with the Plaintiff that “The New Indian Express” is not an independently distinctive mark, but merely a derivative of “Indian Express” with the addition of the descriptive word “New”. The dominant part of the derivative mark is “Indian Express”, which already belongs exclusively to the Plaintiff. The Defendant could not claim that the MoS created a new trademark or conveyed ownership.
The Court cited Ruston and Hornsby Ltd. v. Zamindara Engineering Co. to support the principle that simply adding a word like “New” does not create a distinct mark that escapes infringement consequences.
The Court also noted that the IPAB’s 2015 Order, which restricts statutory rights of the Defendant to the same southern states, reinforces that the MoS is the ultimate source of the Defendant’s rights.
On Use Outside Permitted Territories
Justice Chagla found that organising a revenue-generating event in Mumbai was not in any way connected to the permitted purpose of publishing a newspaper within the limited territory. It amounted to conducting a separate business using the derivative mark. This was clearly prohibited under Clause 18(iv) of the MoS, which prevented any use of the mark “for any other purpose or in any other area”.
The Court emphasised that the Defendant was attempting to expand its rights beyond the consent decree and was attempting to convert a limited permissive use into a full proprietary right.
On Acquiescence
The Court rejected the Defendant’s plea of acquiescence. It observed that to establish acquiescence, the Defendant must show open and notorious use, knowledge of the Plaintiff, and positive conduct amounting to consent. Citing Power Control Appliances v. Sumeet Machines Pvt. Ltd. and Codes v. Addis and Son, the Court reaffirmed that mere silence or inaction is insufficient to infer acquiescence.
The Court held that the Plaintiff had no knowledge of the Defendant’s alleged past usage outside the permitted area, and even if there had been inaction, it did not constitute consent. The Defendant also failed to disclose that after the IPAB order restricting use, it stopped using “New Indian Express” in Delhi after December 2018.
Thus, the plea of acquiescence was dismissed as misleading and misconceived.
On Honest Concurrent User
The Defendant argued that the Delhi High Court’s interim order allowed it to use “New Indian Express” in some contexts and therefore the present use should be treated as honest concurrent user. The Court rejected this argument, holding that the interim order was not binding, had been overtaken by the IPAB order, and was neither res judicata nor precedent. The Defendant’s reliance on it was misplaced.
On Infringement and Passing Off
Justice Chagla held that since the Plaintiff is the absolute owner of the registered mark “Indian Express”, and since “New Indian Express” is not a distinct mark but a derivative, any unauthorised use outside permitted limits dilutes the mark. The event held in Mumbai, being a standalone commercial activity, created a likelihood of confusion and amounted to both infringement and passing off.
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Decision
The Bombay High Court held that the Plaintiff made out a strong prima facie case for interim relief. The balance of convenience was in favour of the Plaintiff, and irreparable injury would be caused if the Defendant continued to violate the MoS.
Accordingly, Justice R. I. Chagla allowed the Interim Application and made it absolute in terms of prayer clauses (a) to (d). These clauses restrain the Defendant from:
● using “Indian Express” or any derivative such as “The New Indian Express” outside the southern states and UTs
● using the derivative mark for any purpose other than publication of a newspaper
● organising events or promotional activities in other territories under the said mark
● acting in breach of the MoS or Supplemental MoS in any manner
There was no order as to costs.
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Conclusion
The judgment reinforces the strict enforceability of consent decrees, particularly where trademark rights and limited permissive use arrangements are involved. It makes it clear that derivative marks arising out of settlements do not create independent proprietary rights. Territorial and purpose-based restrictions must be honoured strictly, and any breach invites the full force of injunctive relief. The case is a significant precedent for media and trademark disputes involving divided business groups and derivative brand rights created by settlement agreements.
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Suggested Titles for Publication
1. “Understanding Limited Permissive User Rights: A Detailed Analysis of The Indian Express v. Express Publications (Madurai)”
2. “Consent Decrees and Trademark Control: How the Bombay High Court Reinforced Contractual Boundaries”
3. “Derivative Trademarks and Territorial Restrictions: Lessons from the Indian Express Case”
4. “Publication Rights vs. Promotional Use: Judicial Interpretation in the Indian Express Trademark Dispute”
5. “Contractual Restraints, Trademark Law, and Acquiescence: A Comprehensive Review of Justice Chagla’s Decision”
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Disclaimer
The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
