Bombay High Court
The Indian Express P Ltd vs Express Publications Madurai Pvt Ltd on 13 November, 2025
Author: R.I. Chagla
Bench: R.I. Chagla
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jsn
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
JITENDRA
SHANKAR INTERIM APPLICATION (L) NO.31555 OF 2024
NIJASURE
Digitally signed by
IN
JITENDRA SHANKAR
NIJASURE
Date: 2025.11.13
COMM IPR SUIT (L) NO.31230 OF 2024
18:05:40 +0530
The Indian Express (P) Ltd. ...Applicant /
Plaintiff
Versus
Express Publications (Madurai) Pvt. Ltd. ...Defendant
----------
Mr. Darius Khambata, Senior Counsel, Mr. Arun Mohan, Dr. Abhinav
Chandrachud, Mr. Pranit Kulkarni, Ms. Chanan Parwani, Ms. Tejasvi
Ghag and Mr. Shivam Singh i/b. Ms. Poorvi Kamani, for the
Applicant / Plaintiff.
Mr. Zal Andhyarujina, Senior Counsel, Ms. Revati Desai i/b. Mr.
Deepak Chitnis for the Defendant.
----------
CORAM : R.I. CHAGLA J.
Reserved on : 26TH JUNE, 2025.
Pronounced on : 13TH NOVEMBER, 2025
O R D E R:
-
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
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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.
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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, Manoj Kumar Sonthalia had a
disagreement with Ramnath Goenka over the NPBS shares given
to him. Ramnath Goenka demanded that the shares be returned.
Manoj Kumar Sonthalia returned the shares with a covering letter.
It is pertinent to note that in January, 1991, in a board meeting,
the shares were transferred back to Ramnath Goenka.
(iv) On 5th October, 1991, Ramnath Goenka died intestate.
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(v) In September, 1992, Manoj Kumar Sonthalia filed Civil Suit
Nos.1246 and 1247 of 1992 in the Madras High Court. The
principal prayer in Civil Suit No.1246 of 1992 was that the shares
of NPBS which Manoj Kumar Sonthalia returned to Ramnath
Goenka were never transferred back to Ramnath Goenka and the
board meeting dated 5th January, 1991 was purportedly illegal,
null and void and subsequent EGM dated 23rd January, 1991 at
which the shares were transferred were purportedly illegal and
void.
(vi) In February, 1995, Vivek Goenka and Manoj Kumar
Sonthalia, along with the companies entered into a Memorandum
of Settlement ("MoS") dated 5th February, 1995 to settle disputes
in the aforesaid Civil Suits. It is pertinent to note that in the MoS,
Manoj Kumar Sonthalia and his mother Radhadevi accepted and
confirmed that Vivek Goenka was lawfully adopted by Ramnath
Goenka as his son. The 9280 shares in NPBS were transferred to
Manoj Kumar Sonthalia and thereafter transferred back to Vivek
Goenka. The 40 shares held by Manoj Kumar Sonthalia's mother
were also transferred back to Vivek Goenka. The MoS was signed
by Indian Express Group ("IEG") consisting of Vivek Goenka,
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Nariman Point Building Services & Trading Pvt. Ltd., (NPBS) and
Indian Express Newspapers (Bombay) Ltd. ("IENB"), the Plaintiff
on one side, and the other group consisting of Radhadevi
Sonthalia, Manoj Kumar Sonthalia, Indian Express (Madurai) Ltd.
("IEM"), the Defendant on the other side. IENB was a subsidiary
of NPBS and IEM was a subsidiary of IENB.
(vii) IEM came to be controlled and owned by Manoj Kumar
Sonthalia only post the MoS dated 5th February, 1995 and Manoj
Kumar Sonthalia has no control in NPBS (which holds IENB) and
which is completely owned and controlled by Vivek Goenka.
(viii) The MoS was decreed by an Order dated 16th April, 1997
passed by the Madras High Court in CS Nos.1246 and 1247 of
1992.
(ix) The Supplemental Agreement dated 12th August, 2005
was entered into between the parties and vide Order dated 16th
September, 2005, the Madras High Court took on record the
Supplemental MoS dated 12th August, 2005.
(x) Trademark Registration was obtained by the Defendant
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for "The New Indian Express (Label)" on 24th September, 2005.
(xi) A Suit was filed by the Plaintiff in the Delhi High Court
inter alia seeking to restraint the Defendant from carrying out any
reference to the term "New Indian Express" in the Defendant's
Sunday Standard Publication in Delhi.
(xii) An order was passed by the Delhi High Court on 10th
October, 2011 refusing to grant any interim relief to the Plaintiff.
(xiii) The Delhi High Court vide Order dated 6th May, 2015,
dismissed the Suit filed by the Plaintiff on account of non-
prosecution.
(xiv) An Order came to be passed by the IPAB on 18th June,
2015 in the rectification proceedings filed by the Plaintiff against
the registration of the Defendant's trade mark, inter alia directing
Registrar of Trademark, Chennai to restrict the use of the
Defendant's trademark to the specified southern states and Union
Territories (UTs).
(xv) The Plaintiff learnt that the Defendant is conducting an
event in Mumbai called "The New Indian Express - Mumbai
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Dialogues" on 20th September, 2024. The said event was
organised by the Defendant in Mumbai on 21st September, 2024.
(xvi) The present Suit was filed by the Plaintiff in this Court on
9th October, 2024 and the present Interim Application was taken
out in the Suit.
3. Mr. Darius Khambata, the learned Senior Counsel
appearing for the Applicant / Plaintiff has submitted that the
settlement between the Plaintiff and Defendant vide MoS dated 5th
February, 1995 and the Supplemental MoS dated 12th August, 2005
was not an equal division or equal partition of assets. The Plaintiff
merely granted permitted user to the Defendant and Manoj Kumar
Sonthalia Group of a derivative "New Indian Express" of the title
"Indian Express". Absolute and total control of the title and mark
"Indian Express" was retained by the Plaintiff, including its entire
goodwill and reputation. He has submitted that the title "New Indian
Express" was not a new mark created by the MoS. It was merely a
derivative of the mark "Indian Express".
4. Mr. Khambata has referred to clauses in the MoS and
Supplemental MoS to contend that the title "Indian Express"
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absolutely vests in the Plaintiff in respect of the whole of India
(Clauses 17 and 18 of the MoS). The title includes not only all rights
in respect of all publications of an English language newspaper under
the name "Indian Express" but also in relation to any use whatsoever
whether in relation to print media, electronic media or any other
medium whatsoever (Clause 18(ii) of the MoS). Further, the
Plaintiff's rights and ownership is unlimited in point of territory or
time (Clause 18(iii) of the MoS).
5. Mr. Khambata has submitted that the Defendant is
permitted to use the title "New Indian Express" only on the condition
that it can be used in the states of Tamil Nadu, Kerala, Karnataka,
Andhra Pradesh and Orissa and the UTs of Pondicherry, Ennore,
Andaman and Nicobar Islands and Lakshadweep islands (Clause 18
of the MoS) for the publication of an English language daily
newspaper (Clause 18(iv) of the MoS). The Defendant is also
permitted to publish any newspaper or periodical in any Indian
language in the aforementioned five southern states and UTs, using
the word "Express" (without any association with the word "Indian"
or any derivative of the word "Indian") to publish a newspaper or
periodical in an Indian language which is not in any manner
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whatsoever in competition with an existing publication of the
Plaintiff (Clause 7 of the Supplemental MoS). The Defendant is also
permitted to use its title "The New Indian Express" or any of its
derivatives / abbreviations on the internet for dissemination of news
(Clause 8 of the Supplemental MoS). The Defendant is permitted to
use the expression "New" along with the expression "Indian Express"
in the manner they deem fit subject to the word "New" being legible
to the naked eye. (Clause 9 of the Supplemental MoS).
6. Mr. Khambata has submitted that there are negative
covenants i.e. restrictions / conditions of permitted use in the MoS
and Supplemental MoS. The Defendant is permitted to use the
expression "New Indian Express" only for the publication of an
English language daily newspaper in the specified five states and UTs
(Clause 18(iv) of the MoS) and; dissemination of news on the
internet (Clause 8 of the Supplemental MoS). The Defendant is not
permitted to use the expression "New Indian Express" for any other
purpose or any other area or territory for any use whatsoever.
(Clause 18(iv) of the MoS).
7. Mr. Khambata has submitted that the negative covenants
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therefore create restrictions on the metes and bounds of permitted
use even within the specified five states and UTs itself, and impose an
absolute restriction outside of this area. It is, therefore, clear that the
Defendant cannot conduct events using the expression "New Indian
Express" even within the specified five states and UTs and has no
permission whatsoever for any manner of use, including for events,
outside of this area. Further, the Defendant does not have the right to
use the title "The New Indian Express" for television or Radio. The
Defendant shall not have any right, title or interest in respect of the
title "Indian Express" and shall not use the title "Indian Express" at
anytime, anywhere (Clauses 18 and 19 of the MoS). The Defendant
shall not at any time whatsoever directly or indirectly use or adopt
any of the said titles in any way whatsoever or any title similar or
resembling thereto save and except what is specifically permitted
under the MoS and Supplemental MoS (Clause 17 of the MoS).
8. Mr. Khambata has submitted that a total of Rs.61 Crores
was paid by the Plaintiff to the Defendant for the forbearance (Clause
22 of the MoS and Clause 12 of the Supplemental MoS), the
sufficiency of which is mutually acknowledged.
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9. Mr. Khambata has submitted that the MoS was carefully
structured to ensure that the total and complete intellectual property
rights of "Indian Express" vested absolutely in IENB i.e. the Plaintiff.
The MoS proceeded on the basis that "Indian Express" was always
meant to be owned and vested in IENB.
10. Mr. Khambata has submitted that vesting did not come as a
result of the MoS. "Indian Express" was always vested in IENB,
(which had been in use since 1932) which came to be registered as a
trademark in favour of IENB on 23rd June, 1994, prior to the MoS.
At no time was IEM the registered owner of the trademark "Indian
Express". The Registration Certificate mentions that the mark had
been used since 1st January, 1953.
11. Mr. Khambata has submitted that the MoS did not create
two separate titles, it only gave the Defendant a limited permitted
user of the phrase "Indian Express" in the form of "New Indian
Express" for a limited purpose, within a limited territorial usage. The
shareholding between the parties also proves that the MoS was not
an equal partition of the business and Vivek Goenka always held a
majority in the shareholding.
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12. Mr. Khambata has submitted that both as per principles of
interpretation of contract, more so given the fact that it is a decree of
the Madras High Court, the plain meaning of the terms have to be
given effect to. He has placed reliance upon the judgment of the
Supreme Court in Bangalore Electricity Supply Co. Ltd. Vs. E.S. Solar
Power (P) Ltd.,1 at paragraphs 16 and 17.
13. Mr. Khambata has submitted that any suggestion that some
kind of purposive interpretation based on historical facts is untenable
in law. That apart, the historical facts herein also bare out that there
was no equal division of the business and that no independent right
to use "New Indian Express" was conferred on the Defendant.
14. Mr. Khambata has submitted that the Plaintiff is the
absolute proprietor of the title "Indian Express", "New Indian
Express" / "The New Indian Express" is only a derivative of the mark
Indian Express with the addition of the descriptive word "New". The
dominant features of "New Indian Express" are "Indian Express". He
has submitted that the Defendant has been given a limited, permitted
use of the derivative mark, only for publication, in the five southern
states and UTs and nothing more. By merely adding "New" to the
1 (2021) 6 SCC 718.
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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.
Neither can it be contended that "New Indian Express" is a distinct
mark which was created by virtue of the MoS. He has placed reliance
upon the judgments of Delhi High Court in M/s. Aviva Fiber Vs. M/s.
Aviva Fibertech Pvt. Ltd.2 at paragraph 17 and of the Supreme Court
in Ruston and Hornsby Ltd. Vs. Zamindara Engineering Co. 3 at
paragraphs 7, 8 and 9, in this context.
15. Mr. Khambata has submitted that the Defendant has
claimed that the right to publication and circulation of the newspaper
includes the purported right to advertise and promote his newspaper
(even where there is no publication and circulation permitted) and
that, the right to advertise is ancillary / incidental to the right to
publication. He has submitted that even assuming that the
Defendant's right to publication includes the right to advertise /
promote, the ancillary right will have to be subject to the same
restrictions as the primary right to publication. The Defendant cannot
stretch the ambit of his right to advertise /promote (for publication)
2 2011 SCC OnLine Del 4541.
3 (1969) 2 SCC 727.
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in a territory where it is restricted from publication. He has submitted
that even otherwise, there is no commercial logic for the Defendant
to advertise / promote its newspaper in a territory where it is not
even permitted publication and circulation.
16. Mr. Khambata has submitted that the learned Senior
Counsel for the Defendant gave an oral clarification before this Court
during the hearing on 16th April, 2025 that the argument of the
Defendant is not that its right to publish includes the right to
promote but that it independently has a right to promote its
publication outside the five southern states and UTs. He has
submitted that the Defendant's interpretation is plainly contrary to
the express provisions of the MoS and the Supplemental MoS. He has
submitted that Clause 18 (ii) of the MoS draws a clear distinction by
referring to the rights of publication and further "also in relation to
any use whatsoever". Clause 18(iv) allows a permitted use of the
expression "New Indian Express" "only for the publication of an
English language daily newspaper in the specified five states and
Union Territories". He has submitted that the language may be
contrasted with the all pervasive language used in Clause 18(ii)
which refers to the right of the Plaintiff as "that this title includes not
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only all rights in respect of all publications of an English language
newspaper under the name "Indian Express" but also...."
17. Mr. Khambata has submitted that user granted in Clause
18(iv) is expressly curtailed by the words "and for no other purpose
or any other area or territory for any use whatsoever".
18. Mr. Khambata has submitted that the MoS repeatedly
reaffirms that the Plaintiff is the absolute owner of the title "Indian
Express", and the same "vests absolutely in IENB" and that "IEM"
shall not have the right, title or interest in respect thereof".
19. Mr. Khambata has submitted that by Clause 19 (iv) it is
provided 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". The only exception to this is "what
is stated in Clause 19 (iii)". He has submitted that it is clear that user
is limited to publication and does not extend to promotion of the
publication or running of a business using the name "New Indian
Express".
20. Mr. Khambata has submitted that the MoS and
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Supplemental MoS being detailed contracts incorporated into a
decree of the Madras High Court, must be construed strictly and not
by implication. When read literally, they confer no such right on the
Defendant, on the contrary, they expressly limit and restrict the
Defendant's rights.
21. Mr. Khambata has submitted that if the clear language of
the MoS was interpreted to extend the meaning of the term
publication to even promotion, that too outside the five southern
states and UTs, it would result in an anomalous position. It would
impinge upon the absolute rights of the Plaintiff in the name and title
"Indian Express". Further, it would render the provisions of Clause 8
of the Supplemental MoS otiose, since it provides that "NIEG shall
not have the right to use the title, "The New Indian Express" for
Television or Radio and further would render unnecessary and otiose
the restriction of the liberty granted in the first portion of Clause 8
for the "use of the title" "The New Indian Express" or any of its
derivatives / abbreviations on the internet for dissemination of
news". Additionally, the forbearance and non-compete amount in
Clause 22 of the MoS would also be rendered meaningless.
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22. Mr. Khambata has submitted that it is well settled that a
compromise decree is as much a decree as a decree passed on
adjudication. A Consent Decree is composed of both a command and
a contract. He has placed reliance upon Rama Narang Vs. Ramesh
Narang4 at Paragraph 23 in this context.
23. Mr. Khambata has submitted that the Defendant having
acknowledged the Plaintiff's absolute right to the title 'Indian
Express' and taken benefit of the limited permitted user of 'New
Indian Express Madurai' is therefore, estopped from claiming any
proprietary rights in the usage of the term, 'New Indian Express
Madurai'. He has submitted that it is evident that the Defendant has
no statutory entitlement to any rights under the Trade Marks Act,
1999. In fact, the IPAB Order dated 18th June, 2015 at Paragraph 5
has expressly curtailed any such claim. This is by restricting the use
of the impugned trademark "The New Indian Express" only to the
five southern states and UTs. The Defendant by accepting this
restriction has therefore accepted that it has no independent
proprietary right to use 'New Indian Express'.
24. Mr. Khambata has submitted that the user by the Defendant
4 (2006) 11 SCC 114.
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cannot confer any goodwill or proprietary rights on it. It is well
settled that no benefit can be reaped by a Defendant based on user
with knowledge of the Plaintiff's right. He has placed reliance upon
judgment of this Court in Mysore Deep Perfumery Household Vs.
Sunil Kumar Amrutlal Jain,5 at paragraphs 50 - 51.
25. Mr. Khambata has submitted that by the Defendant claiming
proprietary rights, this would be contrary to the terms, conditions,
obligations and restrictions contained in the MoS and the
Supplemental MoS which also amounts to violating a consent decree.
He has submitted that there cannot be any expansion of the
Defendant's rights as a permitted user, when its scope has been
explicitly provided. The Defendant by claiming goodwill or
proprietary rights would amount to infringement and passing off of
the Plaintiff's registered trademarks.
26. Mr. Khambata has submitted that it is well settled that there
cannot be acquiescence or waiver of the conditions of a consent
decree. He has placed reliance upon the judgments of the Supreme
Court in Sanwarlal Agrawal Vs. Ashok Kumar Kothari6, at paragraph
5 2022 SCC OnLine Bom 1019.
6 (2023) 7 SCC 307.
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21, Lalchand Vs. Piayare Lal7, at paragraphs 6 and 8 and Shivshankar
Gurar Vs. Dilip8, at paragraphs 10.2, 12, 13.2 and 14.
27. Mr. Khambata has submitted that there has been no
acquiescence by the Plaintiff of the use of NIEM outside of the five
southern states and UTs. The Defendant's case with regard to usage
of the NIEM logo in pan India events such as the Devi Awards is
misconceived. He has submitted that the NIEM logo has been used in
conjunction with and under the masthead of the Sunday Standard
and or the Morning Standard (not independently as sought to be
done in Mumbai). He has submitted that the Defendant is aware that
it cannot use NIEM outside of the 5 southern states and UTs and
hence the need for a camouflage so as to underhandedly use NIEM
outside of its permitted user. He has submitted that acquiescence
requires knowledge and the Plaintiff had no knowledge of this usage.
Assuming without admitting that there has been inaction, inaction in
every case does not necessarily lead to an inference of implied
consent or acquiescence; and consent involves some affirmative
acceptance, not merely a standing by and absence of objection. He
has placed reliance upon the judgment of Union of India Vs.
7 (2010) 15 SCC 608.
8 (2014) 2 SCC 465.
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Divyangna Kumari Harisinh Parmar9 at paragraph 22 in this context.
28. Mr. Khambata has submitted that the interim Order of the
Delhi High Court dated 10th October, 2011 in I.A No.7619 of 2011 in
CS (OS) 1134 of 2011 and Order dated 22nd November, 2011 in FAO
(OS) No.565 of 2011 are not binding on this Court and have been
overtaken by subsequent events but are also patently erroneous. He
has submitted that they are neither res judicata nor precedents. He
has place reliance upon the judgment of the Supreme Court in Ebix
Singapore Pvt. Ltd. Vs. Committee of Creditors of Educomp Solutions
Ltd.10 at paragraphs 181 and 183, Sheodan Singh Vs. Daryao
Kunwar11 at paragraph 9 and State of Assam Vs. Barak Upatyaka DU
Karamchari Sanstha12 at paragraph 21.
29. Mr. Khambata has submitted that the issue raised by the
Defendant in its Reply of the Order dated 10th October, 2011 under
Section 28 of the Trade Marks Act, 1999 on concurrent use of
registered trademarks, no longer survives in view of the fact that the
IPAB Order dated 18th June, 2015 at paragraph 5, restricts use of the
trade mark 'The New Indian Express' only to the five southern states
9 2005 SCC OnLine Bom 179.
10 (2022) 2 SCC 401.
11 1966 SCC OnLine SC 98.
12 (2009) 5 SCC 694.
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and UTs. The Registrar of Trademarks Chennai has entered these
restrictions on its website which have not been challenged by the
Defendant.
30. Mr. Khambata has submitted that Delhi High Court did not
have the benefit of considering the Joint Advertising Agreement
dated 18th April, 1997 nor its termination dated 21st July, 2010. The
Delhi High Court thus did not consider that all invoices filed in
support of advertising are between the period of 1997 to 2009, which
is prior to the termination of the Joint Advertising Agreement in 21st
July, 2010. The same invoices have again been wrongly relied upon
in the present Petition before this Court, even though they have no
correlation whatsoever to the present cause of action. He has
submitted that the Joint Advertising Agreement constituted very
limited permission to use the terms 'The New Indian Express' in
advertising and hence there is not question of acquiescence in such
user by the Plaintiff.
31. Mr. Khambata has submitted that the Delhi High Court did
not consider that the usage by the Defendant was in breach of the
Consent Decree of the Madras High Court (decreeing the MoS dated
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5th February, 1995 and Supplemental MoS dated 12th August, 2005)
and hence amounts to dishonest user and consequently no question
of acquiescence can arise. He has placed reliance upon Bal Pharma
Ltd. Vs. Centaur Laboratories Pvt. Ltd. 13 at paragraph 8, Emcure
Pharmaceuticals Ltd. Vs. Corona Remedies Pvt. Ltd. 14 at paragraphs
16, 18 and 21, Novarhs AG Vs. Wanbury Ltd.15 at paragraph 28,
Colgate Palmolive Co. Vs. Anchor Health and Beauty Care (P) Ltd. 16
at paragraph 66.
32. Mr. Khambata has submitted that the findings of the Delhi
High Court are only prima facie and only for the purpose of disposal
of the Interim Application before it, as held in the Order dated 10th
October, 2011.
33. Mr. Khambata has submitted that the Plaintiff is the
absolute owner of the trademark 'Indian Express' along with the
goodwill and reputation that the mark has generated, since 1932. He
has submitted that the MoS and Supplemental MoS which grants a
limited permitted user of the mark 'New Indian Express', being a
derivative of the mark 'Indian Express' for a limited territory and no
13 2001 SCC OnLine Bom 1176.
14 2014 SCC OnLine Bom 1064.
15 2005 SCC OnLine Del 705.
16 2003 SCC OnLine Del 1005.
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other purpose whatsoever, being incorporated in the consent decree
by the Madras High Court, are binding and cannot be transgressed by
the Defendant. He has submitted that the Defendant has no
proprietary rights in the use of NIEM / New Indian Express and any
use by the Defendant beyond the express terms of the MoS and
Supplemental MoS is in violation of the consent decree and
actionable. He has submitted that the present use of 'New Indian
Express' in Mumbai by the Defendant, outside of the permitted
territories, to promote its sponsored event is beyond the permissive
user granted by the Plaintiff, contrary to the consent decree between
the parties and amounts to infringement and passing off of the
Plaintiff's registered trademark.
34. Mr. Zal Andhyarujina, the learned Senior Counsel for the
Defendant has submitted that in the two Suits filed by Manoj Kumar
Sonthalia in the year 1992, the transfer of shares that were held by
him as well as the transfer of shares that were held for the benefit of
Mr. Anil Sonthalia had been impugned. Anil Sonthalia is the elder
brother of Manoj Kumar Sonthalia who is mentally challenged. The
shareholding of NPBS, holding company of the Indian Express Group
comprising of several group companies, were held by Ramnath
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Goenka, Vivek Goenka and Manoj Kumar Sonthalia. Ramnath
Goenka held 24.32% (the said shares were retained by Ramnath
Goenka only for the benefit of Anil Sonthalia), Vivek Goenka held
50.40% and Manoj Kumar Sonthalia held 24.96% of NPBS.
35. Mr. Andyarujina has submitted that in the year 1989, it
was proposed that the shares held by Ramnath Goenka for the
benefit of Anil Sonthalia viz. 24.32% would be divided equally and
kept in joint names of Manoj Sonthalia and Vivek Goenka. It was the
contention of the Manoj Kumar Sonthalia that in the year 1990,
24.96% shareholding as owned and held by Manoj Kumar Sonthalia
and 12.16% shareholding as held by Manoj Kumar Sonthalia in trust
for Anil Sonthalia were transferred fraudulently in favour of Ramnath
Goenka as a part of a larger conspiracy by Vivek Goenka to take over
the entire management and ownership of NPBS and effectively, the
entire Indian Express Group of Companies. It was also contended
that the shares held by Vivek Goenka in trust for Anil Sonthalia were
also retained and misappropriated by Vivek Goenka as his own. Thus,
the transfer of 49.28% of the entire shareholding of NPBS was the
subject matter of the dispute. This dispute was settled under the
MoS.
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36. Mr. Andhyarujina has submitted that under Clause 18(iv) of
the MoS, the Defendant was entitled to use the expression "New
Indian Express" only for the publication of an English language daily
newspaper in the five southern states and UTs. The said Clause
further imposed a negative covenant on the Defendant whereby the
Defendant would not use the expression "New Indian Express" for
any other purpose or any other area or territory for any use
whatsoever. He has submitted that neither the said Clause nor any
other clause of MoS or Supplemental MoS, as such, prohibited the
Defendant promoting, outside of the five southern states and UTs, its
publication having circulation in the five southern states and UTs.
37. Mr. Andhyarujina has submitted that the parties have
always understood this to be the correct interpretation of the said
clauses of the MoS / Consent Decree as is evident from their
consistent conduct till date. The Plaintiff used the expression "New
Indian Express" as well as the Defendant's logo in its newspapers in
circulation outside of the five southern states and UTs, while
advertising / promoting the Defendant's newspaper. Whereas the
Defendant used the expression "Indian Express" as well as the
Plaintiff's logo in newspapers in circulation in five southern states
ial-31555-2024.odt
and UT's while advertising / promoting the Plaintiff's newspaper.
38. Mr. Andhyarujina has submitted that it is well settled that
extrinsic evidence of the acts of parties done under an instrument is a
guide to the intention of the parties and is permissible where there
remains a doubt as to its true meaning. He has placed reliance upon
the judgment of Supreme Court in Godhara Electricity Co. Ltd. and
Anr. Vs. The State of Gujarat and Anr. 17 at paragraphs 11 and 18 in
this context.
39. Mr. Andhyarujina has submitted that the Delhi High Court
in its Order dated 10th October, 2011 has also confirmed the
Defendant's interpretation. He has placed reliance upon paragraph
13 of the said Order.
40. Mr. Andhyarujina has relied upon various publications of
paid advertisements by the Defendant in the Plaintiff's newspapers
having nationwide circulation. He has placed reliance upon use of the
Defendant's logo by the Plaintiff in its newspaper supplements. He
has also relied upon the advertisements by the Plaintiff in the
Defendant's newspaper from 1997 to 2009. These documents have
17 (1975) 1 SCC 199.
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been placed on record in the form of invoices for such
advertisements.
41. Mr. Andhyarujina has submitted that on demurrer assuming
while denying that there is a breach of the MoS / Consent Decree,
the Plaintiff has acquiesced in and waived its right to complain
against any breach of the MoS by the Defendant.
42. Mr. Andhyarujina has submitted that there is no judgment
supporting the Plaintiff's proposition that the doctrine of
acquiescence does not apply to a consent decree. He has
distinguished the judgments relied upon by the Plaintiff in support of
its proposition. He has submitted that the judgment in Sanwarlal
Agrawal (Supra) is distinguishable on the ground that the
proposition laid down is that the executing Court cannot interpret an
ambiguous decree by going behind the decree. He has submitted that
this proposition is not applicable in the present case. He has also
distinguished the judgment of Supreme Court in the case of Lalchand
(Supra) on the ground that it was held that the conduct could not
vary the compromise order (not the Defendant's case in the present
matter). He has submitted that it is relevant to note that the Plaintiff
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itself admittedly on its own case by the Joint Advertisement,
proceeded on the basis that it has varied the agreement. He has also
distinguished the judgment of the Supreme Court in Shivshankar
Gurar (Supra) on the ground that in that case there was no
acquiescence with regard to the compromise order / decree. The
acquiescence was with regard to a subsequent order. In that case
modification was done by the Court and not by the parties.
43. Mr. Andhyarujina has submitted that the Plaintiff waived its
rights under the MoS / Consent Decree by committing various acts of
acquiescence, and as such is now estopped from restricting the use of
the expression "New Indian Express". He has submitted that even
statutory rights are liable to be waived by persons who stand to
benefit from such rights; as such, there cannot be any prohibition or
bar against waiver of rights conferred by a consent decree / order of
the Court. He has placed reliance upon the judgments of the
Supreme Court in Arce Polymers Private Ltd. Vs. Alphine
Pharmaceuticals Pvt. Ltd. and Ors.18 at paragraphs 16 -26 and
Jaswant Singh and Anr. Vs. Ahmedabad Municipal Corporation and
Ors.19 at paragraphs 8 - 14.
18 (2022) 2 SCC 221.
19 1992 Supp (1) SCC 5.
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44. Mr. Andhyarujina has submitted that acquiescence, does not
always require a positive act; acquiescence can also be implied from
passive acceptance of a particular act. When combined with delay it
becomes laches. He has relied upon Union of India Vs. Murugesan20
at Paragraph 25 in this context.
45. Mr. Andhyarujina has submitted that waiver and
acquiescence may be express or implied. It is to be found in the facts
of each individual case. Waiver involves the voluntary relinquishment
of a known legal right evincing awareness of the existence of the
right and to waive the same. He has placed reliance upon the
judgment of the Supreme Court in Kanchan Udyog Ltd. Vs. United
Spirits Ltd.21 at paragraphs 21 - 22. He has submitted that this is
particularly relevant given the various acts of acquiescence and
waiver after the dispute had been heard by the Delhi High Court and
the Delhi High Court Order had been passed.
46. Mr. Andhyarujina has submitted that some of the acts of
acquiescence by Plaintiff were positive acts of acquiescence and some
others amounted to tacit or passive acceptance. He has submitted
20 (2022) 2 SCC 25.
21 (2017) 8 SCC 237.
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that the expression "New Indian Express" as well as the Defendant's
logo was used by the Plaintiff itself while advertising / promoting the
Defendant's newspaper outside of the five southern states and UTs,
which amounts to a positive act on the part of the Plaintiff. The Delhi
High Court in its Order dated 10th October, 2011 also rendered a
finding that such acts amounted to acquiescence.
47. Mr. Andhyarujina has submitted that it is pertinent to note
that the Plaintiff, particularly after the Delhi High Court Order could
be expected to raise every objection possible to restrict the use of the
expression "New Indian Express" outside of the five southern states
and the union territories. Further, despite knowledge of the events
being organised by the Defendant since 2011, the Plaintiff did not
take any action against the Defendant in respect of such events.
48. Mr. Andhyarujina has submitted that the Plaintiff's
contention that the Defendant has organised and promoted the
events surreptitiously and behind the back of the Plaintiff and that
the events have been conducted by the Defendant in an "under the
radar" manner is entirely false. The Defendant has published the
news reports of the events from time to time in its newspapers having
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circulation in Kolkata and Delhi, as well as in newspapers circulated
in Madras and Bangalore. Videos of events held in Chhatisgarh,
Kolkata, Mumbai and Lucknow were also uploaded on Youtube. As
regards the news reports in the newspapers in Madras and
Bangalore, copies of the said newspapers were also delivered to the
offices of the Plaintiff. This has been averred in paragraph 14 of the
Reply which have not been denied by the Plaintiff, and as such, are
deemed to have been admitted. The Chief ministers of respective
states and other luminaries have attended the said events which were
widely publicized and widely attended.
49. Mr. Andhyarujina has submitted that another "positive act"
of acquiescence was the apparent abandonment by the Plaintiff of the
suit filed by it before the Delhi High Court. The Plaintiff allowed the
suit before the Delhi High Court to be dismissed for non-prosecution.
By abandoning the said suit by permitting the same to be dismissed
for want of prosecution and by thereafter being aware of, and not
taking any steps against, the Defendant's use of expression "New
Indian Express", the Plaintiff has positively acquiesced in the
continuing use of the said expression "New Indian Express" in the
said manner by the Defendant. In doing so, it has clearly waived its
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right to object to the same. Without prejudice to the above and in the
alternative, the Defendant submits that the Plaintiff had, in fact,
accepted the findings made by the Delhi High Court. This is evident,
inter alia, from the fact that its appeal stood dismissed by the order
of the appeal court dated 22.11.2011. He has submitted that for a
long period from 2011 till the filing of the present suit, despite being
aware of the said use of the expression "New Indian Express", it has
never protested against the same.
50. Mr. Andhyarujina has submitted that the Plaintiff has sought
to contend that the acts of acquiescence noticed by the Delhi High
Court can be explained by the Joint Advertising Agreement. He has
submitted that when the Defendant's defence of acquiescence was
pleaded by the Defendant in the proceedings before the Delhi High
Court, the Plaintiff did not plead the fact of execution of the Joint
Advertising Agreement. Instead, the Plaintiff vaguely referred to "a
comity and concurrence of commercial interest". He has submitted
that a reliance on the Joint Advertising Agreement by the Plaintiff is
clearly an afterthought.
51. Mr. Andhyarujina has submitted that the principal purpose
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of the Joint Advertising Agreement was for All India Advertisements
and the revenue sharing in respect of such advertisements. There is
no reference whatsoever to the manner in which the expression
"Indian Express" is to be used by the parties and, as such, the Joint
Advertising Agreement did not, in any manner, alter the contractual
rights of the parties. It is the Defendant's case that the advertisements
were undertaken since the MoS / Consent Decree did not limit /
prevent such use. He has submitted that the Joint Advertising
Agreement has no bearing whatsoever on the Defendant's case that
the Plaintiff has, time and again, acquiesced in the use of the
expression "New Indian Express" outside of the five southern states
and UT's.
52. Mr. Andhyarujina has submitted that the Plaintiff's
argument that the the Joint Advertising Agreement conferred a very
limited permission to use the terms 'The New Indian Express"' cannot
be reconciled with their own argument that a consent order cannot
be altered by the parties.
53. Mr. Andhyarujina has submitted that the Delhi High Court
has in the said order held that there was no prohibition in the
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agreements between the parties, against promotion/advertisements
of the newspaper "New Indian Express" outside the specified
southern States and UT's specified therein. There can be no embargo
placed on the Defendant's rights to advertise its newspaper "New
Indian Express" outside the specified southern states and the UTs.
Further, the Plaintiff has acquiesced in the use of the expression "New
Indian Express" outside of the specified southern states and UTs, and
as such, the Plaintiff was now estopped from objecting to such a use.
It is further held by the Delhi High Court that no case for
infringement of the Plaintiff's trademark was made out. The
advertisement by the Defendant of the newspaper published by it
from any of the specified southern states or UTs in any newspaper
would not amount to passing off.
54. Mr. Andhyarujina has submitted that principles akin to res
judicata apply, and as such, the Plaintiff is estopped from raising
these issues once again before this Court. He has placed reliance
upon the judgment of the Supreme Court in Hope Plantations Vs.
Taluk Land Board22 at paragraphs 26 - 31 in this context.
55. Mr. Andhyarujina has submitted that since 17.01.2005 the
22 (1999) 5 SCC 590.
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Defendant has been registered as the registered proprietor of the
trademark "The New Indian Express" under Section 28 of the TM Act,
1999. The registration of the Defendant as proprietor of the
trademark is inconsistent with the Plaintiffs case that the Defendant
is not the proprietor. The Plaintiff's said argument is liable to rejected
in limine on this ground alone.
56. Mr. Andhyarujina has submitted that the Plaintiff has never
taken any steps to register the trademark "New Indian Express" as an
associated trademark under Section 16 of the Trademarks Act, 1999.
The Plaintiff, however, has on its own showing, registered itself as the
registered proprietor of "Indian Express" and not the expression "The
New Indian Express".
57. Mr. Andhyarujina has relied upon the definition of
permitted use in Section 2(1) (r) of the Trademarks Act, 1999. This
clearly evidences the fact that the Defendant is neither a registered
user under Section 2(1) (r) (i) nor is he a person "other than the
registered proprietor and user in relation to goods and services"
under Section 2(1) (r) (ii).
58. Mr. Andhyarujina has submitted that such an arrangement
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is contrary to and the very antithesis of the agreement under the MoS
i.e. to separate the Indian Express group between the disputing
parties. The effect of such license would be that there would have to
be a connection being maintained between the Defendant's
newspapers and the trademark Indian Express which would be
contrary to the very purpose of separation which was sought to be
achieved by the MoS. He has submitted that no royalty or any
consideration for the permitted use is payable, or even contemplated,
under the MoS / Consent Decree which is the normal feature of a
license / permitted use. He has submitted that quite to the contrary,
under Clause 22 of the MoS, the Defendant was to receive a sum of
Rs.56 Crores as a "non-competing and forbearance capital fee" and
not towards such royalty.
59. Mr. Andhyarujina has submitted that if the Defendant was a
permitted user/licensee of the Plaintiff, then the Defendant would
have been registered as a user in respect of the trademark "Indian
Express" and/or "New Indian Express". He has referred to the
Sections 48 and Section 49 of the Trade Marks Act, 1999 read with
Rule 86 of the Trademark Rules, 2017 in this context.
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60. Mr. Andhyarujina has relied upon Section 53 of Trademarks
Act, 1999, which provides that a non-registered permitted user has
no right to institute any proceedings for infringement. He has
submitted that Clause 6 of the Supplemental Agreement modifying
Clause 19(v) of the MoS grants liberty to NIEG to take necessary
actions as NIEG deemed necessary against any infringement by any
one of its title 'The New Indian Express' in the five southern states
and UTs without first calling upon IEG to take any action, would be
rendered meaningless if the Defendant was merely a permitted user.
He has submitted that this combined with the fact that the Defendant
is in fact registered as a proprietor of the trademark shows that the
right against infringement recognized by the amended Clause 19(v)
was its right as a proprietor against infringement.
61. Mr. Andhyarujina has submitted that the MoS / Consent
Decree makes no statement with regard to the Plaintiff's ownership
of the expression "The New Indian Express". He has submitted that
the word "Indian Express" and "its derivatives" has been used in
contradistinction to "New Indian Express". He has submitted that the
MoS / Consent Decree is to be understood to be an overall settlement
of the dispute in the suit that was filed before the Madras High Court
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by dividing the business on terms as set out therein. The MoS /
Consent Decree expressly refers to the settlement as a 'corporate cum
family settlement' between the parties. He has submitted that it is
inconceivable that the Defendant would agree to a division of
business of publication of newspapers based on a mere permissive
license. The MoS / Consent Decree does not meet necessary
ingredients to constitute a license.
62. Mr. Andhyarujina has submitted that the MoS expressly
provides that the Defendant shall use the expression "New Indian
Express". Subsequently thereto, the Defendant has gained a
reputation associated with the expression "The New Indian Express"
and "The New Indian Express" as its trademark. The registration of
trademark under Section 28 of the Trademark Act, 1999 recognizes
the Defendant as the registered proprietor of the same.
63. Mr. Andhyarujina has submitted that it is settled law that
registration only recognises the proprietary rights that are pre-
existing in common law and does not create any rights. He has
placed reliance upon the judgment of the Supreme Court in Syed
Mohideen Vs. Sulochana Bai23 at paragraphs 26 and 33.
23 (2016) 2 SCC 683.
ial-31555-2024.odt
64. Mr. Andhyarujina has submitted that the effect of the IPAB
Order is merely to limit the benefits of Section 28 to the five southern
states and UTs. It has no further effect. He has submitted that even
under the Trademarks Act,1999, the Registrar of Trademarks has the
right to restrict only the exclusive use of the trademark, and not the
use of the trademark that inheres in the proprietor under common
law. This is evident from the definition of 'limitation' under Section
2(1)(l) read with Section 18(4) of the Trademarks Act, 1999.
65. Mr. Andhyarujina has submitted that the IPAB Order only
took note of the geographical extent of the Defendant's use of the
trademark as set out in the MoS by extending to the Defendant, the
protection under Section 28 with regard to the southern states and
UTs. However, as regards all other contentions that were raised by
the Plaintiff in the rectification application, the IPAB observed that "it
is open to the parties to agitate the same either in the suit filed by the
applicant and pending on the file of the Hon'ble Delhi High Court or
by initiating any proceedings before the appropriate forum ". He has
submitted that by the time the IPAB Order was passed, the Plaintiff
had already abandoned the Delhi High Court Suit. Thus, the Plaintiff
has acquiesced in the Defendant's use of the trademark "The New
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Indian Express" outside the five southern states and UTs and waived
its rights to object.
66. Mr. Andhyarujina has submitted that the Plaintiff's conduct
amounts to acquiescence in the context of trademark infringement.
He has submitted that principles governing Acquiescence in
trademark infringement have been laid down by the Supreme Court
in Power Control Appliances Vs. Sumeet Machines Pvt. Ltd. 24 at
paragraph 26. This includes sitting by when another is invading the
rights and spending money on it. Course of conduct inconsistent with
the claim for exclusive rights in a trade mark, trade name etc. and
implies positive acts; not merely silence or inaction such as is
involved in laches.
67. Mr. Andhyarujina has submitted that the expression
'standing by' was elaborated in Codes Vs. Addis and Son25, followed
in Power Control Appliances (supra), wherein the Court was pleased
to observe that the plaintiff is not entitled to shut his eyes to the
actions of his rivals. He has submitted that the defence of
acquiescence shall be available only if, there has been an open use of
24 (1994) 2 SCC 448.
25 (1923) 40 RPC 130, 142
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the Plaintiff's mark; the Plaintiff ought to have known about such use
and the Plaintiff has failed to take immediate action to prevent
continuance of such use.
68. Mr. Andhyarujina has submitted that the Plaintiff did not
object to any of the said events, and stood by as the Defendant
continued to use the expression for organizing its events. The
Plaintiff even abandoned the Delhi High Court Suit, which was later
dismissed for non prosecution.
69. Mr. Andhyarujina has submitted that the Plaintiff has not
made out any case for infringement of its mark 'Indian Express'.
There is no deceptive similarity in the logo used by the Defendant for
the said event from that of the Plaintiff's logo. He has submitted that
use of the word 'New Indian Express' in the event 'Mumbai Dialogues'
is also followed by the words "Group Madurai". The use of both the
trademarks was contemplated under the MoS / Consent Decree.
70. Mr. Andhyarujina has submitted that the use of the mark
"New Indian Express" is for the purpose of organizing events for
promoting the Defendant's business and not for publication of
newspapers, outside the five southern states and UTs. The Defendant
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is the duly recognized registered proprietor of the trademark "New
Indian Express" who has not curtailed its rights except as stated in
the MoS / Consent Decree under Clause 18 (iv). The use of the mark
"The New Indian Express" was expressly permitted by the Delhi High
Court and under the MoS / Consent Decree and thus, the use of the
mark is by way of honest concurrent user.
71. Mr. Andhyarujina has accordingly submitted that the
present Interim Application has no merit and deserves to be rejected.
72. Having considered the submissions, the background of
entering into the MoS is a relevant factor. The MoS had settled Civil
Suits filed by the Manoj Kumar Sonthalia in the Madras High Court
impugning the transfer of his NPBS shares as well as the NPBS shares
held by him for the benefit of Anil Sonthalia. It was Manoj Kumar
Sonthalia's contention that the shares of NPBS which he had returned
to Ramnath Goenka were never transferred back to Ramnath
Goenka. It is pertinent to note that Vivek Goenka had been given
15,680 shares of NPBS i.e. 62.72% of the NPBS shareholding and
which was undisputed. Thereafter, in the MoS, Manoj Kumar
Sonthalia and his mother Radhadevi had accepted and confirmed
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Vivek Goenka was lawfully adopted by Ramnath Goenka as a son.
The 9280 shares in NPBS were transferred to Manoj Kumar Sonthalia
and thereafter transferred back to Vivek Goenka. The 40 shares held
by Manoj Kumar Sonthalia's mother were also transferred back to
Vivek Goenka.
73. The MoS has accordingly recorded a settlement of the
parties and which has thereafter been decreed by Order dated 16th
April, 1997 passed by the Madras High Court. It is apparent from the
MoS and Supplemental MoS dated 12th August, 2005 that the
Plaintiff merely granted a limited permitted user to the Defendant
and Manoj Kumar Sonthalia, Group of a derivative "New Indian
Express" of the title "Indian Express". The Consent Decree of the
Madras High Court mentions that the allegations made by Manoj
Kumar Sonthalia with regard to shares being purportedly held in
trust for his brother Anil Kumar Sonthalia were made without
reference to Anil Kumar Sonthalia and further that neither in the
lifetime of Shri Ramnath Goenka nor thereafter has Anil Kumar
Sonthalia himself ever made such a claim. These allegations made by
Manoj Kumar Sonthalia stood withdrawn by the said Consent Decree.
This has been recorded in paragraphs 6 and 31 of the said Consent
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Decree.
74. Vivek Goenka has at all times held the majority
shareholding in NPBS and continues to hold absolute and total
majority in the shareholding of the Plaintiff Company, being the
absolute owner of the accumulated goodwill, reputation in the
Plaintiff's registered trademark "Indian Express". The Defendant had
by way of the MoS been granted limited permitted user of the phrase
"New Indian Express" in the five Southern states and UTs only for
publication.
75. Clause 18 (iv) of the MoS imposes a negative covenant on
the Defendant by which the Defendant would not use the expression
"New Indian Express" for any other purpose or any other area or
territory for any use whatsoever. 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". The said Clause read with Clause
19(iv) makes it clear that the Defendant only has a limited
permissive user to the extent of publication within the five Southern
states and UTs and cannot use "Indian Express" or any of its
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derivatives or any title, similar or resembling Indian Express at any
time whatsoever. In my prima facie view, the limited permission to
the Defendant conferred by the MoS is only to use for publication in
the five Southern States and specified UTs and for no other purpose.
The Defendant cannot promote its publication outside the five
Southern states and specified UTs.
76. The event which has been organized by the Defendant with
the use of the phrase "New Indian Express" in Mumbai viz. "New
Indian Express - Mumbai Dialogues on 20th September, 2024 has
given rise to the filing of the captioned Suit and the present Interim
Application. This event is not merely a promotion of its publication
but a standalone event with sponsors which brings in additional
revenue and amounts to a separate business and income stream
altogether, which in my prima facie view is prohibited by the terms of
the MoS.
77. It is further evident from the Clauses of the MoS in
particular Clauses 17, 18(iv), 19(ii), (iv), that the Plaintiff has an
absolute and all-encompassing ownership of "Indian Express". The
parties have agreed that such provisions conferring obligations and
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restraints are valid and reasonable and do not amount to restraint of
trade or business and that the same may be enforced by way of
declaratory and injunctory proceedings in case of breach.
78. The Defendant has sought to contend that it is not a
"permitted user". This is contrary to Clause 18 (iv) of the MoS which
is the only source of permission to use the expression "New Indian
Express" by the Defendant i.e. only for publication of an English
language daily newspaper in the specified five states and UTs and for
no other purpose whatsoever. There is no common law or equitable
basis for the Defendant to seek any manner of right beyond or
contrary to such permission. The Defendant is therefore estopped in
law and equity from taking a position to the contrary in a manner
that is wholly self-serving. The Defendant in attempting to do is
establishing its intent to derail the terms of the MoS and
Supplemental MoS. Given the overarching principle of "one mark,
one source", the source / origin of the mark "Indian Express" is
wholly vested with the Plaintiff as per the clause of the MoS and the
Defendant cannot seek to usurp the same in derogation of the
language of the MoS.
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79. Further, under Clause 6 of the Supplemental MoS dated
12th August, 2005, the Defendant is entitled to initiate infringement
actions in respect of its title "The New Indian Express" and that this
shall not be in derogation to the rights of the Plaintiff to take action
against any infringement of its rights under the MoS. This right
granted to the Defendant is in-line with the scheme of the Trademark
Act, 1999 for permitted users, and does not in any way derogate or
dilute the absolute ownership vested upon the Plaintiff as per the
plain language of the MoS. It is evident from the MoS and
Supplemental MoS that the Defendant's rights are restricted to the
extent of its permitted use and territories, and does not have the
broad swathe of rights as those vested with the Plaintiff and any
argument of the Defendant on parity of rights between the parties is
wholly perverse to the scheme of the MoS.
80. The IPAB in its Order dated 18th June, 2015 has restricted
the statutory right claimed by the Defendant geographically i.e. to
the five southern states and UTs. Thus any statutory rights claimed by
the Defendant is subject to the MoS and does not have any
standalone basis, establishing that the sole source of permitted use by
the Defendant is through the MoS.
ial-31555-2024.odt
81. The contention of the Defendant that it is not a permitted
user under the MoS and Supplemental MoS for want of agreed
royalty between the parties is misplaced. Clause 22 of the MoS read
with Clause 12 of the Supplemental MoS records sufficiency of
consideration paid by the Plaintiff to the Defendant in exchange of
permitting the Defendant to use its title "The New Indian Express" as
per the provisions of the MoS and the Supplemental MoS.
82. The Joint Advertising Agreement which was executed
between the parties does not in any way modify, expand or amend
any of the rights in the MoS and the Supplemental MoS. Under
Clause 18(i) and (ii) of the MoS, the title "Indian Express" belongs to
the Plaintiff absolutely and which include all rights in relation to any
use whatsoever. The Plaintiff's action of entering into the Joint
Advertising Agreement with the Defendant was part of its use as the
absolute owner of Indian Express and not in variation of, or a waiver
of any rights accrued under the MoS. The Joint Advertising
Agreement was nothing but a revenue splitting arrangement between
the parties which had no bearing on the rights that had accrued in
terms of the MoS / Consent Decree. The Plaintiff had also terminated
the said Agreement on 21st July, 2010 upon learning of its misuse by
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the Defendant.
83. The reliance placed by the Defendant upon the Delhi High
Court proceedings and the said Order passed by the Delhi High Court
is in my view misplaced. Further, the contention of the Defendant
that the Plaintiff had abandoned the said Suit before the Delhi High
Court which amounts to a purported positive act of acquiescence of
the Defendant's use of the New Indian Express, Madurai is also in my
view misconceived. This contention fails to take into account the
purport of the said Order dated 10th October, 2011 passed by the
Delhi High Court. This was merely an interim order which had
directed the Defendant to use the word "Madurai" with the
expression, "New Indian Express Group" for promotion of its
publications from outside the five Southern states and UTs. This was
permitted under the Joint Advertising Agreement between the
Plaintiff and Defendant whereby they agreed to a revenue splitting
arrangement.
84. It is pertinent to note that the said Suit before the Delhi
High Court had been stayed vide Order dated 3rd February, 2015,
awaiting the outcome of the Plaintiff's Application under Section 124
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of the Trade Marks Act, 1999 before the IPAB. Inspite of there being a
stay of the Suit, the Delhi High Court on the adjourned date i.e. 6th
May, 2015 dismissed the said Suit for non-prosecution in the
presence of the Defendants. Thereafter, by the IPAB Order dated 18th
June, 2015, restriction was placed on the use of the trademark 'New
Indian Express" only to the five southern states and UTs. This IPAB
Order has not been challenged by the Defendant and has attained
finality.
85. After the IPAB Order, the Defendant has stopped using New
Indian Express under the masthead of the Sunday Standard in Delhi
atleast after the December 2018. This fact has not been disclosed by
the Defendant. The contention of the Defendant that the Plaintiff had
abandoned the proceedings before the Delhi High Court and that this
amounts to a positive act of acquiescence is misconceived apart from
it being misleading.
86. The IPAB Order dated 18th June, 2015 which has clearly
restricted the use of the impugned trademark "The New Indian
Express" to the five southern states and UTs implies use of the
trademark for any purpose, including advertising, promotion, and
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events. The IPAB order is also in consonance with the terms of the
MoS / Consent Decree. Under Section 2(2) (b) of the Trademark Act,
1999, use of a mark shall be construed as a reference to the use of
printed or other visual representation of the mark. Further Section
2(2)(c) applies this in relation to goods and services. The wide and
expansive understanding of use of a mark as defined by the statute in
my prima facie view would include usage by the Defendant for
promotion and advertising, which stands restricted to the five
southern states and UTs by the IPAB Order.
87. I find much merit in the submission on behalf of the
Plaintiff that there has been no acquiescence by the Plaintiff of the
Defendant's use of the expression 'The New Indian Express, Madurai'
outside of the five southern states and UTs. In any event, it is well
settled that there cannot be an acquiescence or waiver of rights
accrued under a consent decree. The judgments of the Supreme
Court namely, Sanwarlal Agrawal (Supra), Lalchand (Supra) and
Shivshankar Gurar (Supra) are apposite. An attempt on the part of
the Defendant to distinguish these judgments on the ground that they
have been passed in the context of the executing Court interpreting a
decree and hence not applicable is misconceived. A Court seized of a
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subsequent dispute involving interpretation of a Consent Decree can
certainly not validate the breach of the Consent Decree on the
grounds of alleged acquiescence.
88. The Defendant has contended that even statutory rights are
also liable to be waived by persons who stand to benefit from such
rights. The judgments relied upon by the Defendants namely, Arce
Polymers Private Limited (Supra) and Jaswant Singh and Another
(Supra) are in the context of waiver of the benefit under a statute.
This can be contrasted with the present case where the lis has been
crystallized in the form of decree of a Court after the Plaintiff and
Defendant have consented to their rights being molded in terms of
the MoS and the Supplemental MoS.
89. 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.
90. The contention of the Defendant that the Plaintiff has 'stood
by' attributing acquiescence on the Plaintiff's part in the use of the
expression "The New Indian Express" outside of the five southern
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states and UTs is misconceived. The Defendant has not shown any
proof of delivery of its newspapers containing 'The New Indian
Express' mark being used by them outside the territorial limitations
under the MoS and the Supplemental MoS, to the Plaintiff's offices.
The Defendant's contention has been denied by the Plaintiff in its
Affidavit in Rejoinder dated 2nd December, 2024 at paragraph 16.
91. I also find merit in the submission of the Plaintiff that the
usage by the Defendant of the expression "The New Indian Express -
Madurai" does not confer any goodwill or proprietary rights on it
since the said usage by the Defendant outside the permitted five
southern states and UTs is dishonest. In Mysore Deep Perfumery
Household (Supra), it has been held that no benefit can be reaped by
a Defendant based on user with knowledge of the Plaintiff's right.
The usage by the Defendant is contrary to the terms, conditions,
obligations and restrictions contained in the MoS and the
Supplemental MoS which would amount to violating a Consent
Decree. This usage also amounts to infringement and passing of the
Plaintiff's registered trademark "Indian Express".
92. The expression "New Indian Express" / "The New Indian
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Express" is only a derivative of the mark "Indian Express" by adding
the word "New". The Plaintiff is the absolute proprietor of the mark
"Indian Express". The Defendant has been given limited, permitted
use of the derivative mark only for publication, in the five southern
states and UTs and nothing more. 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. In
my prima facie view "New Indian Express" is not a distinctive mark
but one which was created by virtue of the MoS. Mere addition of
'New' does not make the mark distinctive. The judgment relied upon
by the Plaintiff in this context namely M/s. Aviva Fiber (Supra) and
Ruston and Hornsby Ltd. (Supra) are apposite.
93. The Plaintiff being the absolute owner of the trademark
"Indian Express" along with goodwill and reputation that the mark
has generated since 1932 is entitled to restrain the Defendant from
the use of 'New Indian Express' outside of the permitted territories, to
promote its sponsored events. Such use is beyond the permissive user
granted by the Plaintiff, contrary to the consent decree between the
parties and amounts to infringement and passing off of the Plaintiff's
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registered trademark. The Defendant has no proprietary rights in the
use of "New Indian Express - Madurai" / "New Indian Express" and
any use by the Defendant beyond the express terms of the MoS and
Supplemental MoS is in violation of Consent Decree and actionable.
94. 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.
95. The Interim Application is accordingly made absolute in
terms of prayer Clauses (a) to (d). There shall be no order as to costs.
[ R.I. CHAGLA J. ]
