In a notable decision highlighting the importance of trademark integrity, the Bombay High Court, through Justice R. I. Chagla, barred Express Publications (Madurai) Pvt. Ltd. from using the title “The New Indian Express” in regions outside the southern states where it was expressly permitted to do so. The Court emphasized that the trademark “Indian Express” remains the exclusive property of The Indian Express (P) Ltd., thereby granting interim protection to the long-established media house.

The order was passed in an interim application filed by The Indian Express, which claimed that Express Publications had broken a long-standing territorial agreement by promoting its brand outside the permitted regions.

Facts:

The dispute goes back to a 1995 Memorandum of Settlement (MoS), which was later turned into a 1997 consent decree by the Madras High Court and further updated through a 2005 agreement. Under these terms, The Indian Express kept exclusive ownership of the “Indian Express” name, while Express Publications was allowed to use the title “The New Indian Express” only in five southern states and certain Union Territories.

The controversy  resurfaced after Express Publications organized an event titled, “The New Indian Express – Mumbai Dialogues” in September 2024. According to Indian Express, such usage outside the permitted territories — whether for commercial purposes, promotional activities, or events — amounted to a clear violation of the settlement terms, an infringement of its registered trademark, and passing off. 

The defendant, however, argued that the MoS did not explicitly restrict it from advertising or promoting the newspaper outside the agreed states.

Court’s Observation:

Rejecting that interpretation, the Court observed that the MoS and Supplemental MoS, recorded as a decree, must be read in their plain terms. It emphasized that the permission granted to Express Publications was strictly limited to publication and did not extend to promotion or other uses in regions beyond those specifically mentioned. The Court further noted that merely adding the term “New” to the registered mark did not create any independent right to use the title in other territories, reaffirming that “Indian Express” belongs exclusively to The Indian Express (P) Ltd.

After a preliminary look at the case, the Court noted that The New Indian Express exists only because of the settlement agreements between the two sides, and that these agreements did not give the defendant any wider rights to use or expand the brand.

“The Plaintiff [The Indian Express] 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 registered trademark.”, the Court said.

Final Ruling:

Conclusively, the Court held that Indian Express (P) Ltd. had shown a strong prima facie case and that the balance of convenience was in its favor. It found that Express Publications’ use of The New Indian Express outside the permitted southern regions violated the settlement and could dilute the value and goodwill of the Indian Express mark.

Accordingly, the court made the  interim order  absolute and granted  the requested restraint on the defendant’s activities.

Case Details:The Indian Express (P) Ltd v. Express Publications (Madurai) Pvt Ltd, IA(L) No. 31555/2024

Appearance: 

Advocate for Plaintiff: Senior Advocate Darius Khambata, Advocates Arun Mohan, Abhinav Chandrachud, Pranit Kulkarni, Chanan Parwani, Tejasvi Ghag and Shivam Singh instructed by Advocate Poorvi Kamani

Advocate for Defendant: Senior Advocate Zal Andhyarujina, Revati Desai instructed by Advocate Deepak Chitnis