Interim Injunction Granted Against Express Publications (Madurai) Pvt. Ltd. for Breach of Memorandum of Settlement and Trademark Rights of Indian Express (P) Ltd.
In a significant judgment delivered on June 15, 2026, the Bombay High Court (Division Bench) upheld the interim injunction granted by a Single Judge restraining Express Publications (Madurai) Private Limited from using the trademark "New Indian Express" beyond the specified five southern States and Union Territories as per a Memorandum of Settlement (MOS) dated February 5, 1995, and a supplemental agreement dated August 12, 2005. The case arose from a long-standing dispute between Indian Express (P) Limited, the absolute owner of the "Indian Express" trademark, and Express Publications (Madurai) Pvt. Ltd., which was permitted restricted use of the derivative mark "New Indian Express" limited to Karnataka, Kerala, Tamil Nadu, Andhra Pradesh, Orissa, and certain Union Territories.
The dispute centered on whether Express Publications could promote and advertise its newspaper and related events outside the agreed territories. The plaintiff contended that such use, including promotional events like "The New Indian Express - Mumbai Dialogue" held in Mumbai, constituted a breach of the MOS and supplemental agreement, which were recorded as a consent decree by the Madras High Court. The defendant argued that it held proprietary rights over the "New Indian Express" mark and claimed no restriction on promotional activities outside the five specified States.
The Court meticulously examined the terms of the MOS and supplemental agreement, highlighting Clause 18(iv), which explicitly restricted the defendant's use of the "New Indian Express" mark to publication of English language daily newspapers within the specified territories "and for no other purpose or any other area or territory for any use whatsoever." The Court emphasized that the term "use" as defined under Sections 2(2)(b) and 2(2)(c) of the Trade Marks Act, 1999, includes use in advertisements, promotions, and commercial events, thereby encompassing the promotional activities challenged by the plaintiff.
Further, the Court relied on the Intellectual Property Appellate Board (IPAB) order dated June 18, 2015, which restricted Express Publications' trademark registration and use to the five specified States and Union Territories, binding all civil courts under Section 124(4) of the Trade Marks Act. The IPAB's direction was clear that the defendant must scrupulously adhere to these territorial limits, including for promotional and advertising purposes.
The Court rejected the defendant's plea of acquiescence, observing that mere silence or inaction by the plaintiff does not amount to acquiescence, especially when the plaintiff continuously asserted its rights through litigation and administrative proceedings. The Court held that the consent decree and settlement agreements are binding and cannot be altered by conduct or implied waiver. Consequently, Express Publications' attempt to conduct commercial events and promote the newspaper outside the permitted territories was found to be a violation of the MOS and trademark rights of Indian Express (P) Ltd.
The judgment reinforces the sanctity of settlement agreements recorded as consent decrees and underscores the broad statutory interpretation of "use" of a trademark under Indian law, extending beyond publication to all forms of promotion and commercial exploitation. The Court dismissed the appeal, thereby upholding the interim injunction and confirming the territorial and usage restrictions on the "New Indian Express" trademark.
Bottom line:-
The expression "New Indian Express" is a permitted derivative mark with restricted territorial use and the use of the mark for promotion, advertisement, and commercial events outside the specified five southern States and Union Territories constitutes breach of the Memorandum of Settlement (MOS) and supplemental agreement, binding as a consent decree.
Statutory provision(s): Trade Marks Act, 1999 Sections 2(2)(b), 2(2)(c)(i), 28, 124(4)
This news report synthesizes the key aspects of the Bombay High Court's ruling in the trademark dispute between Express Publications (Madurai) Pvt. Ltd. and Indian Express (P) Ltd., explaining the Court's reasoning on contractual restrictions, trademark law interpretation, and enforcement of consent decrees.
