Trade Mark “Indian Express” : Defendant can not use "New Indian Express" outside permitted territories

Bombay High Court Restrains 'New Indian Express' from Expanding Beyond Agreed Territories. Court Upholds Trademark Infringement Claim, Enforces Strict Territorial Limitations

In a significant ruling dated November 13, 2025, the Bombay High Court has enforced a consent decree, restraining Express Publications (Madurai) Pvt. Ltd. from using the trademark "New Indian Express" outside the specified territories of five southern states and certain Union Territories. The judgment, delivered by Justice R.I. Chagla, underscores the sanctity of agreements and decrees that delineate trademark rights and territorial use.

The dispute arose from a Memorandum of Settlement (MoS) and a Supplemental Agreement between The Indian Express (P) Ltd. and Express Publications (Madurai) Pvt. Ltd., stemming from historical family and corporate disputes. Under these agreements, the defendant was permitted a limited use of the "New Indian Express" mark exclusively for publication purposes within Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa, and Union Territories including Pondicherry and Lakshadweep.

The court found that the defendant's expansion efforts, such as organizing promotional events like "The New Indian Express - Mumbai Dialogues," contravened the terms of the MoS. Justice Chagla emphasized that the defendant's attempt to use the mark beyond the agreed territories constituted trademark infringement and passing off, as it violated negative covenants in the MoS restricting the use strictly to publication within specified regions.

The judgment reaffirmed the plaintiff's absolute ownership of the "Indian Express" trademark, with the "New Indian Express" being merely a derivative. Justice Chagla dismissed the defendant's claims of independent proprietary rights outside the agreed territories, noting that such usage was dishonest and actionable.

The court also rejected arguments from the defendant regarding acquiescence and waiver by the plaintiff, stating that consent decrees cannot be undermined by claims of implied consent. The ruling underscores that the sanctity of the consent decree holds paramount importance and must be adhered to strictly.

This decision reflects the court's commitment to upholding trademark laws and protecting the plaintiff's established rights and reputation. The interim relief granted to The Indian Express (P) Ltd. includes restraining the defendant from any promotional use of the "New Indian Express" mark outside the specified territories, ensuring strict adherence to the MoS terms.

The outcome is pivotal for trademark enforcement, especially concerning agreements that bind parties to specific territorial limits. The ruling serves as a reminder of the legal obligations under consent decrees and the potential consequences of breaching such agreements.

Bottom Line:

Trademark dispute arising from permitted use under a Memorandum of Settlement (MoS) and Supplemental MoS between parties, addressing territorial limitations and negative covenants on usage of the mark "New Indian Express."

Statutory provision(s): Trade Marks Act, 1999 Sections 28, 29

Indian Express (P) Ltd. v. Express Publications (Madurai) Pvt. Ltd., (Bombay) : Law Finder Doc Id # 2808345