Bombay High Court restrains ‘The New Indian Express’ from using the mark outside South India after 'Indian Express' sues

The Bombay High Court on Thursday temporarily restrained Express Publications (Madurai) Pvt Ltd (EPM), publisher of The New Indian Express, from using the title The New Indian Express or any derivative of Indian Express for events, programmes, business or activities outside the five southern States and the specified Union Territories [Indian Express Vs Express Publications Madurai].

Justice RI Chagla held that use of the mark outside South India violates a binding consent decree between the The Indian Express (plaintiff) and The New Indian Express (defendant).

“The Plaintiff has accordingly made out a strong prima facie case for grant of interim relief. The balance of convenience is also in favour of the Plaintiff, as such usage by the Defendant of “New Indian Express” outside the permitted territory results in violation of the express terms of the MoS and Supplemental MoS and dilution of the Plaintiff’s mark “Indian Express” of which the mark “New Indian Express” is a derivative for limited territory and for no other purpose whatsoever. Such usage would also result in irreparable harm being caused to the Plaintiff," the Court directed.

The case stemmed from a family dispute within the Indian Express Group following founder Ramnath Goenka's death in 1991.

Ramnath Goenka had divided shareholding in Nariman Point Building Services & Trading Pvt. Ltd. (NPBS), the holding company, between his grandsons Vivek Goenka and Manoj Kumar Sonthalia. Vivek Goenka held 62.72 percent of shares while Manoj Kumar Sonthalia held 37.12 percent.

In 1992, Manoj Kumar Sonthalia filed civil suits in the Madras High Court challenging share transfers. The parties entered into a Memorandum of Settlement (MoS) on February 5, 1995, which was decreed by the Madras High Court on April 16, 1997. A supplemental agreement was executed on August 12, 2005.

Under the settlement, The Indian Express (P) Ltd., controlled by Vivek Goenka, retained absolute ownership of the "Indian Express" trademark.

Express Publications (Madurai), controlled by Manoj Kumar Sonthalia, received limited permission to use "The New Indian Express" only for publishing an English language daily newspaper in Karnataka, Kerala, Tamil Nadu, Andhra Pradesh, Orissa and specified union territories.

The present suit was filed after Express Publications (Madurai) organized "The New Indian Express – Mumbai Dialogues" event in Mumbai on September 21, 2024, using the trademark outside the permitted territories.

The court rejected the defendant's claim to independent proprietary rights in "The New Indian Express" trademark.

"The expression 'New Indian Express' / 'The New Indian Express' is only a derivative of the mark 'Indian Express' by adding the word 'New'. By merely adding 'New' to the Plaintiff's registered mark, the Defendant cannot claim that their limited user includes absolute and unregistered user of the mark 'New Indian Express' outside of the five southern states and UTs," Justice Chagla observed.

The judgment emphasised that the settlement granted only limited permitted user to the defendant and that absolute and total control of the title and mark 'Indian Express' was retained by the plaintiff.

On the defendant's arguments regarding acquiescence and waiver, the court was categorical:

"The Defendant's contention on waiver of the Consent Decree strikes at the sanctity of a Consent Decree and provides a convenient avenue and defense for a party to flout the terms of a consent decree despite it being an order of a Court."

The court concluded that the plaintiff had established a strong prima facie case and granted permanent injunctive relief.

The order restrained Express Publications (Madurai) from using "The New Indian Express" trademark outside specified southern territories for any purpose whatsoever.

Indian Express was represented by Senior Advocate Darius Khambata with advocates Arun Mohan, Abhinav Chandrachud, Pranit Kulkarni, Chanan Parwani, Tejasvi Ghag and Shivam Singh, instructed by Poorvi Kamani.

The New Indian Express was represented by Senior Advocate Zal Andhyarujina with advocates Revati Desai, instructed by Deepak Chitnis.

[Read Order]