Express Publications Mudurai Pvt Ltd vs The Indian Express P Ltd

2026:BHC-OS:13694-DB
1 J COMAPL-41053-25 final.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
MANDIRA MILIND
SALGAONKAR
Digitally signed by MANDIRA
MILIND SALGAONKAR
Date: 2026.06.20 14:57:35 +0530
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL APPEAL (L) NO.41053 of 2025
WITH
INTERIM APPLICATION (L) NO.41851 OF 2025
Express Publications (Madurai) Pvt. Ltd. )
a company incorporated under the )
provisions of the Companies Act, 1956 and )
having its registered office at No.29, Second )
Main Road, Ambattur Industrial Estate )
Chennai ) ..Appellant
Versus
The Indian Express (P) Ltd. )
A company incorporated under the provisions)
of The Companies Act, 1956 and having its )
th
Registered office at 7 Floor, Mafatlal Centre, )
Ramnath Goenka Marg, Nariman Point, )
Mumbai – 400 021 ) .. Respondent
…..
Mr. Zal Andhyarujina, Senior Advocate with Ms.Revati Desai,
Mr.Pratyush Gupta and Mr.Deepak Y. Chitnis i/b Deepak
Chitnis-Chiparikar & Co. for the Appellant.
Mr. Darius Khambata, Senior Advocate with Mr.Arun Mohan,
Dr.Abhinav Chandrachud, Mr.Pranit Kulkarni, Ms.Nishita
Gupta and Ms.Tejasvi Ghag i/b Ms.Poorvi Kamani for the
Respondent.
…..
CORAM : BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ.
th
RESERVED ON : 17 APRIL, 2026
th
PRONOUNCED ON : 15 JUNE, 2026
JUDGMENT (Per Bharati Dangre, J.)
1.
This commercial appeal is filed by the appellant, Express
Publications (Madurai) Private Limited, being aggrieved by
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the order passed by the learned Single Judge (Justice R. I.
Chagla) dated 13.11.2025, thereby allowing the interim
application filed by the plaintiff, Indian Express (P) Limited,
seeking injunction against the defendant for acting in breach of
the terms and conditions of the Memorandum of Settlement
(MOS) dated 05.02.1995, recorded in the form of decree dated
16.04.1997 in Civil Suit Nos. 1246 and 1247 of 1992 by the
Madras High Court as well as supplemental agreement
executed between the parties.
The discord between the parties stem out of the MOS
dated 05.02.1995 as well as the supplemental agreement
dated 12.08.2005, entered between the plaintiff and the
defendant, which received approval from the Madras High
Court.
As per the plaintiff, the MOS conferred permitted user on
the defendant, being a derivative of Indian Express; whereas,
the defendant claimed its proprietary right over the mark and
has adopted a stand that the settlement between the parties
nowhere restrained it from promoting its publication outside
the Five States referred to in the MOS.
Thus, the bone of contentions between the parties is the
interpretation of MOS and the supplemental agreement and in
the civil suit instituted by the plaintiff, it claimed right based
upon the MOS and the defense adopted by the defendant also
arose on account of the interpretation of the MOS. Ultimately
the learned Single Judge in the impugned order, has agreed
with the plaintiff in construing the permitted user of the
defendant, by accepting that it was so conferred in the form of
derivative of the Indian Express.
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2. We have heard the learned Senior Counsel Mr. Zal
Andhyarujina for the appellant (original defendant in the
suit); whereas, the respondent before us (the original plaintiff
in the suit), is represented by the learned Senior Counsel Mr.
Darius Khambata.
In order to appreciate the findings rendered by the
learned Single Judge in the impugned order dated 13.11.2025,
we must briefly refer to the background facts in which the said
finding is rendered.
3. Indian Express (P) Ltd. instituted a suit for infringement
of trade mark and passing off claiming that it is a Company
incorporated under the provision of the Companies Act, 1956
(now Companies Act, 2013) and was formerly known as Indian
Express Ltd.. Indian Express Newspaper (Bombay) Ltd and
now ‘Indian Express Newspaper (Mumbai) Private Ltd,
claimed to be the proprietors, publishers of multi-editions of
newspapers including its flagship newspaper “The Indian
Express”. In the year 2008 a scheme of arrangement was filed
under the Companies Act, 1956 before the High Court which
was sanctioned by order dated 25.07.2008, by which the
“Print Media Undertaking” of Indian Express Newspaper
(Mumbai) Ltd. was demerged and transferred to and vested in
the Indian Express Ltd. i.e. the plaintiff, the effective date of
transfer being 05.01.2009.
On 05.01.2009 the Indian Express Newspapers
(Mumbai) Ltd. entered into a Deed of Assignment of Trade
Marks and its goodwill with the plaintiff, as a consequence all
trademarks, patents and domain names, copyrights, trade
secrets, industrial designs, product registrations and other
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intellectual property along with the goodwill stood transferred
to and vested in the plaintiff and this covered 62 trademarks.
Apart from this, in the year 2009 the plaintiff filed an
application under the Trade Marks Act, 1999, claiming
prestige and goodwill amongst its readers and the public in
general in India and abroad. As per the plaintiff, “The Indian
Express” has been on the forefront of press freedom in the
country and under the able leadership of Shri Ramnath
Goenka, and series of eminent editors, outstanding journalists,
it furthered the cause of freedom.
[
4. After the death of Shri Ramnath Goenka on 05.10.1991
in the wake of the discord between his heirs including his
grandson, Shri Manojkumar Sonthalia, and the adopted son of
Shri Ramnath Goenka, Shri Vivek Goenka, various
proceedings were instituted. Amidst its pendency, quietus was
brought out through a settlement drawn in the civil suit which
was pending before the Madras High Court, the suit being
instituted by Manojkumar Sonthalia in the capacity as plaintiff
with the impleadment of Indian Express Newspapers
(Bombay) Ltd. as well as “Indian Express (Madurai) Ltd.” and
Shri Vivek Goenka as defendants along with other individuals
being impleaded in their individual capacity. The settlement
was arrived between the two main contenders, viz. Shri Vivek
Goenka, who was subsequently adopted as a son, by Late Shri
Ramnath Goenka and the other contender being Shri
Manojkumar Sonthalia. The settlement reached also involved
the equity shares and preference shares as it was agreed by
way of settlement that Manojkumar Sonthalia shall pay to the
estate of Late Shri Ramnath Goenka the balance consideration
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owned by him originally for the purchase of shares from Shri
Ramnath Goenka as reduced by any amount owing from his
estate on the demise of Shri Ramnath Goenka. As an
understanding reached, 9280 equity shares and 4000
preference shares were agreed to be transferred to Vivek
Goenka from Manojkumar Sonthalia and on Vivek Goenka
paying to Manojkumar Sonthalia the latter’s cost of the shares,
equivalent to the consideration paid to the original transfers of
the shares from Shri Ramnath Goenka. Some other
understanding was also reached between the contenders about
the issuance of share certificates, but since we are not
concerned with the same, we need not delve deep in this
regard.
5. The present dispute, as unfurled before us, revolve
around Clause 17 onwards, in the MOS, as regards the rights
conferred on the respective parties and claimed by them. The
plaintiff staked its claim in the suit that it is absolute owner of
the registered title and the Indian Express (Madurai), APL,
NSL shall not at any time directly or indirectly use or adopt
any of the said titles, in any way whatsoever or any title
similar to or resembling thereto, save and except that was
permitted in Clause 19.
The plaintiff also claimed that such rights of ownership
is unlimited in point of time and Clause 18 permitted “The
Indian Express (Madurai) Limited” to restrict its activity in
five States and the specified Union Territories, as set out in
Clause 18. But, in addition, it also included various other
restrictions stipulated therein.
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6. Based on the consensus expressed in the settlement
terms which were accepted by the Madras High Court, the
plaintiffs claimed its ownership over the “Indian Express” and
adopted a specific stand that it permitted the defendant to
have restricted user by permitting it to publish any newspaper
or periodical in any Indian language in the five southern States
and Union Territories and it also granted permission to publish
an English language daily by using the name “New Indian
Express”.
The aforesaid agreement was followed by execution of
supplementary agreement entered between the parties and
even it received approval from the Madras High Court, by
accepting the terms therein.
However, the Indian Express (Pvt.) Limited was
aggrieved by the action of the defendant, allegedly in
contravention of the MOS and the supplemental agreement, as
it accused that though the parties had perfectly understood
the terms of settlement but when the defendant attempted to
promote its newspaper “The New Indian Express” by
conducting an event in Mumbai, styled as “The New Indian
Express - Mumbai Dialogue” on 20.09.2024 in the presence of
the Hon’ble the Deputy Chief Minister of the State along with
other dignitaries, the plaintiff perceived it as breach of the
MOS and supplemental agreement as, according to it, the
defendant was permitted to use the title “New Indian Express”
in a restrictive manner i.e. only in specified five States, viz.
Karnataka, Kerala, Andhra Pradesh, Tamil Nadu and Orissa
and specified Union Territories, Pondicherry, Andaman and
Nicobar Islands and Lakshadweep and the defendant had
clearly acknowledged its usage. According to the plaintiff it
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violated the MOS and this violation was specifically urged in
the wake of geographical limitation imposed upon the
defendant as per the terms of the MOS and supplemental
agreement and it was alleged to be in breach of Clauses 17, 18,
19 and 20 of the MOS and the essence of both, the MOS and the
supplemental agreement. According to the plaintiff, the
defendant was not permitted to conduct “services” such as
“Events” and in fact, it was subjected to omnibus restriction
that it shall not use the terms “The New Indian Express for no
other purpose or any other area or any use whatsoever”
This constrained the plaintiff to approach the Court by
filing a Civil Suit, since the posters released by the defendant
on social media to promote the event, ‘Mumbai Dialogues’ by
the use of title “New Indian Express”, were displayed in such a
manner that the expression “new” is not legible to the naked
eyes and the average consumer or reader who would peruse
the same, would be confused and there is a likelihood of being
deceived to believe that it is the plaintiff, who is hosting the
event “Mumbai Dialogue”.
Pleading that the plaintiff had already parted a hefty
sum as consideration for the forbearance to restrain an
obligation accepted by the defendant in respect of most parts
of India except the specified Five States and Union Territories
and on accepting the consideration, it was bound by the
restrictions imposed on it in the proceedings and therefore, the
defendant was sought to be restrained from promoting any
such event, which would have an impact on the plaintiff’s
interest and the plaint sought permanent order of injunction
restraining the defendant from violating or acting contrary to
the terms and conditions of the MOS dated 05.02.1995
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converted into a decree on 16.04.1997 by the Madras High
Court and the supplemental agreement dated 12.08.2005
executed between the plaintiff and the defendant.
7. In the pending suit an interim application is filed, which
has been adjudicated by the learned Single Judge and the said
application prayed for the following reliefs:
a. Pending the hearing and final disposal of the suit, the
Defendant, its agents, employees, representatives, or any
other persons acting on its behalf, be restrained by an order
and injunction of this Hon'ble Court from breaching, violating,
or acting contrary to the terms and conditions of the
Memorandum of Settlement dated 05.02.1995 recorded as a
decree on 16.04.1997 in C.S.No.1246 and 1247 of 1992 by
the Hon'ble Madras High Court and the Supplemental
Agreement dated 12.08.2005 executed between the Plaintiff
and the Defendant;
b. Pending the hearing and final disposal of the suit, the
Defendant, its. agents, employees, representatives, or any
other persons acting on its behalf to be directed by an order of
this Hon'ble Court to comply with its obligations under the
Memorandum of Settlement dated 05 .02.1995 recorded as a
decree on 16.04.1997 in C.S.No.1246 and 1247 of 1992 by
the Hon'ble Madras High Court and the Supplemental
Agreement dated 12.08.2005 executed between the Plaintiff
and the Defendant;
c. Pending the hearing and final disposal of the suit, the
Defendant by themselves, their directors, legal
representatives, successors in business, assigns, servants,
agents, transporters, distributors, printers, stockists,
wholesalers, dealers, retailers, advertisers or any one
claiming through or under them be restrained by an order
and injunction of this Hon'ble Court from infringing upon the
Plaintiffs registered trademarks by operating, advertising, or
conducting any event, program or business using the
Plaintiff's registered trademarks or the permitted title "The
New Indian Express" outside the specified states of
Kamataka, Kerala, Tamil Nadu, Andhra Pradesh, and Orissa
and the Union territories of Pondicherry, Enam, Andaman
Nicobar Islands and Lakshadweep islands as specified under
the Memorandum of Settlement dated 05.02.1995 recorded
as a decree on 16.04.1997 in C.S.No.1246 and 1247 of 1992
by the Hon'ble Madras High Court and the Supplemental
Agreement dated 12.08.2005 executed between the Plaintiff
and the Defendant;

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8. The learned Senior Counsel, Mr.Andhyarujina, by tracing
the history of the dispute, resulting into execution of the MOS
and the order of the Madras High Court dated 16.04.1997
would submit that on 18.04.1997, a Joint Advertisement
Agreement (hereinafter referred to as ‘JAA’) was executed
between the parties for the purpose of sharing all the revenue
generated from All India Advertisements. Based on the said
agreement, he would submit that the Indian Express (Pvt.)
Limited continued to publish advertisements in the appellant’s
publication i.e. Express Publications (Madurai) Private
Limited by clear use of the words, “Indian Express” with the
heading “New Indian Express” in circulation in southern
States and Union Territories and vice versa. It is his specific
contention that this continued to be an ongoing arrangement
between the parties as both issued advertisements in each
other’s newspapers/publications.
Mr. Andhyarujina has placed on record the Minutes of
Meeting, held on 18.04.1997 which resulted into execution of
JAA with the specific understanding arrived between the
parties and this arrangement between the parties, according
to him, proceeded on barter, with publication media sponsored
ads of publications other than Indian Express which, being
referred to as home ads and the rate was fixed as 25% card
rate; whereas ads on barter other than the media, fetched rate
of 50%. In addition, the arrangement also comprised of factors
like bulk incentives.
The understanding involved an all India billing and also
set out the manner of sharing of the all India billing by clearly
stipulating that two companies shall raise consolidated credit
note in favour of each other for share of revenue due to other
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company and the amount will be settled by payment not later
th
than 15 day of the following month with a specific clause of
levy of service charge of 12% by each company on the gross of
India billing, which would cover the credit period, bad debts
and administrative expenses. The understanding reached
between the parties, according to Mr. Andhyarjuna clearly
recorded that All India Ads rates will be revised by mutual
consultation and deviation to the arrangement shall also be
mutual and in the event of any difficulty in implementing the
terms, the same was to be referred to Shri Vivek Goenka and
Shri Manojkumar Sonthalia and their joint decision was
agreed to be final.
This agreement of 18.04.1997, received a further
extension on 20.03.2000 by clearly stipulating that there shall
be no change in existing system of sharing between all India
revenue between the two companies and this was signed by
Vivek Goenka on behalf of Indian Express Newspaper
(Bombay) Limited and Manojkumar Sonthalia, on behalf of
Express Publications (Madurai) Limited. A further deed of
agreement was entered into between the parties on
12.08.2005 with reference to the agreement of 18.04.1997, as
partially modified in the year 2000 and 2003 but a fresh
agreement was necessitated considering the changes in the
market, banking norms, etc. as well as the future trends. This
agreement having taken effect from 01.04.2005 was agreed to
remain in force until modified.
9. An assertive submission of the appellant is that on
24.09.2005 it obtained a trademark registration for the label
“New India Express”, though it is conceded that, pursuant to
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the rectification proceedings filed by the respondent before the
Intellectual Property Appellate Board (“IPAB”) the use of the
said trademark was limited to the specified southern States
and Union Territories.
Mr. Andhyarujina has placed on record documents in the
form of instances to establish that his client had published its
advertisement by use of expression “New India Express” in the
respondent newspaper (Indian Express having nation wide
circulation). Since this advertisement was published along
with its logo, it is contended by the learned Senior Counsel by
permitting publication of such advertisement the respondent
has acted in furtherance of the MOS by rightly interpreting its
terms.
Without prejudice to the aforesaid submissions, the
learned Senior Counsel would submit that since this
arrangement continued for considerable length of time, the
respondent has acquiesced to the use of the expression “New
India Express” outside the specified southern States and the
Union Territories. According to him, this acquiescence was
also taken note by the Delhi High Court in the suit filed by the
respondent, but it is his specific contention that for the first
time in the suit filed before the Bombay High Court, an
objection is being raised about the advertisements for
promoting the publications outside the five States.
10. The moot question which falls for consideration
according to Mr. Andhyarujina is whether or not the appellant
is entitled to hold events of ‘Promotion’ in the Territories
outside the five States and the Union Territories demarcating
its area of operation. According to him, Clause 20 of the MOS
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clearly contemplate a non-compete arrangement as the Indian
Express (Madurai) Limited agreed that it shall not start any
English language newspaper in any State of India other than
the specified five States and specified Union Territories in
Clause 18 for a period of 36 months from the date of the
agreement and that after expiry of this period, if the Indian
Express (Madurai) Limited, start an English language
newspaper in any State of India other than the excluded
Territories, it was subjected to further condition that it shall
not bear the name of “New Indian Express” or “Indian
Express” or any name including the word “Indian” or
“Express” or its derivatives and in no way it shall start any
Indian language newspaper which is in conflict or competition
with the language newspaper owned by Vivek Goenka, and
Indian Express Newspaper (Bombay) Limited in their
territories, but this prohibition was not made applicable to
periodicals, (magazines, weeklies, etc.).
According to Mr.Andhyarujina, in consideration of the
said restraint against competition, Clause 22 of the MOS,
Indian Express (Madurai) Limited was paid non-competing
and forbearance capital fee amounting to Rs.Fifty Six Crores,
with the bifurcation set out therein. According to
Mr.Andhyarujina, this Clause has been interpreted by the
learned Single Judge as ‘License’ and he would submit that if it
was license granted in favour of his client, the license fee
would have been due and payable by the licensee, and not to
the contrary.
11. Apart from this, according to the learned counsel, a
reciprocal obligation is imposed in Clause 21 upon Vivek
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Goenka, Indian Express Newspaper (Bombay) Limited, i.e. the
plaintiff that, they shall not start any English language
newspaper in any of the five States and the specified Union
Territories as contemplated in Clause 18 for a period of 36
months and if they start any English language newspaper
thereafter, it shall not bear the name of “Indian Express” or
any name including ‘Indian’ or ‘Express’ or its derivatives, but
this limitation was not applicable to the Daily. Another
reciprocal obligation included in the same Clause, imposed a
restriction that they shall not start any Indian language
newspaper which in any way is in conflict with the newspaper
owned by Manojkumar Sonthalia, Indian Express (Madurai)
Limited /Andhra Prabha Limited in five States, though this
prohibition was not made applicable to the periodical,
(magazines, weekly). According to Mr. Andhyarujina, none of
the clauses has used the word ‘license’, but reading of Clauses
17 to 22, concertedly would only indicate that it amount to a
“non-compete” arrangement without there being any reference
to a license fee being payable.
In the supplementary agreement executed between the
plaintiff- Indian Express Group (“IEG”) and the defendant-New
Indian Express Group (“NIEG”), he would submit that there is
a relaxation in the non-compete clause as it is agreed that
notwithstanding anything to the contrary contained in Clause
19(v) of the MOS dated 05.02.1995, NIEG shall be at liberty to
take such action as it deem necessary against any
infringement by any one of its title (New Indian Express) in
the five southern States and specified Territories without
calling upon the Indian Express Group to take action. In
paragraph 7, the dilution is further made to the effect
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notwithstanding any prohibition contained in Clauses 18(iv)
and 19 (iv) of the MOS, the NIEG shall be at liberty to publish
any newspaper or periodical in any Indian language in five
southern States and specified Union Territories using the word
‘Express’ without association with the word ‘Indian’ or any
derivative of the word ‘Indian’ in the title of the publication,
provided however that NIEG shall only use the word ‘Express’
to publish a newspaper or periodical in any Indian language
which is not in any manner whatsoever in competition with
the existing publication of Indian Express.
Not only this, as regards the right to use the title ‘New
Indian Express” for Television or Radio, the supplemental
agreement recorded a consensus that notwithstanding a
prohibition contained in Clause 18(iv) of the MOS, NIEG shall
be at liberty to use its title “New Indian Express” or any of its
derivatives/abbreviations on the internet for dissemination of
news. Clause 9 contained a further dilution of the MOS, when
it was agreed that the restrictions imposed under the MOS, on
the condition that the expression ‘new’ shall be in the same
line and of the same size as the word “Indian Express”
wherever the title appeared shall be dropped and NIEG shall
be entitled to use the expression ‘New’ along with the
expression “Indian Express” in the manner they deem fit
subject to the condition that the word ‘New’ shall be legible to
the naked eyes.
Thus, according to Mr.Andhyarujina, the supplemental
agreement diluted the restrictions imposed but neither the
MOS nor the supplemental agreement are indicative that NIEG
shall act as permissible user or licensee. According to him, the
appellant registered its mark as a label and it published
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advertisements by use of the label mark “New Indian Express”
in the respondent’s newspaper “Indian Express” for a
considerable length of time and along with the appeal memo,
the appellant has annexed the copies of the relevant pages of
Indian Express, Loksatta, Financial Express dated 15.07.2005
all reflecting the advertisement of the defendant newspaper
and invoices dated 15.07.2005 raised by the plaintiff in
respect thereof.
This being permitted to be done, according to Mr.
Andhyarujina would amount to acquiescence by the Indian
Express Group. He would submit in the wake of JAA entered
in the year 1997 and subsequently being renewed and even a
fresh agreement being executed, this arrangement continued
till 21.07.2010 when this agreement was terminated but there
is no challenge to the same.
12. Mr.Andhyarujina, has placed before us a compilation of
documents to establish his plea of acquiescence by the plaintiff
and this includes advertisement in regards to the events held
in various cities like, Mumbai, Delhi, Lucknow, Kolkata and it
being published in various publications of the respondent
including Delhi (Sunday Standard), Bangalore N.I., Chennai N.
I., Delhi (Morning Standard), Delhi (Sunday Standard) etc..
The events include the ‘Devi Awards’ held in different Cities
like Delhi, Lucknow, Indore right from 2014 upto 2020. Thus,
permitting such publications according to Mr. Andhyarujina, is
clear cut proof of acquiescence by the plaintiff. Apart from
above, he would submit that at PAN India level it was also
advertised on YouTube and it is his specific contention that
whenever such an advertisement appeared in the newspaper
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complimentary copies were forwarded to the plaintiff and this
he has specifically contended in the affidavit placed on record.
13. In addition to the aforesaid, Mr. Andhyarujina has
invited our attention to the order passed by the learned Single
Judge, on the notice of motion filed in Suit No.2502 of 2010
instituted by “Indian Express Limited”, seeking restraint
against the defendants, Express Publications (Madurai)
Limited from using in relation to any newspaper, magazines,
printed matter, publications, media publication and journals of
all goods covered by the registered trademark “i.e.” either by
itself or as a part of any word or exhibiting or displaying or its
used in any website or any other deceptively similar mark so
as to infringe its registered trademark.
By inviting our attention to a detailed order passed by
the learned Single Judge, he would submit that the relief is
refused in favour of the plaintiff by recording that the plaintiff
ought to have brought on record cogent and reliable material
to establish the infringement and the plaintiff has not
disclosed the usage by the defendant for considerable length of
time. Recording that the plaintiff who has asserted his right in
a registered trademark has gone beyond silence and his
conduct is consistent with the claim of exclusive right in a
trademark and by applying the said principle, it is concluded
by the learned Single Judge that it is not a case where the
plaintiffs have discovered that rival newspaper in the industry
have come forward and suddenly started using the words,
mark or logo allegedly, but it is a case where the plaintiffs
themselves described the publications from southern India as
publication by group within business house of Goenka’s and
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therefore, are held to be not entitled for injunction. According
to Mr.Andhyarujina the learned Single Judge has also
pronounced upon the aspect of acquiescence. He would
categorically submit that the order makes a reference to the
Joint Advertisement Agreement (“JAA”) executed before the
parties and even the learned Single Judge also had before him
the decree of 16.04.1997 passed on the
compromise/settlement arrived at and by considering the
whole background, the injunction was refused.
14. In addition to the above, Mr.Andhyarujina also make a
reference to the order passed by the Delhi High Court when
the plaintiff, Indian Express Limited had approached the Court
by filing a suit seeking injunction restraining the defendant
from using the word “Indian Express”, “New Indian Express”,
‘Indian’ , ‘Express’ or any associated aglet or cognate or
abbreviated terms or any logos covered by the plaintiff
registered trademark “Indian Express” or “Express News
Service” or “New Indian Express Group”.
The suit having been contested by the defendant before
the High Court by raising preliminary objection about its
maintainability by contending that it was an attempt to
execute the compromise decree passed by the Madras High
Court and no injunction would be granted as the defendant was
registered owner of the trademark “New India Express”. A
specific plea was also adopted to the effect that the plaintiff
has acquiesced in the use of the logo as well as expression
“New India Express” and failed to disclose the words “New
India Express” has been used only as a logo in the
advertisement published in the “Sunday Standard”. A specific
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stand was adopted that in the advertisement along with the
logo of “New India Express” were regularly published in the
newspaper of the plaintiff and the plaintiff also published the
supplemental title “Express International Aro India”, “New
India Express” Bangalore and “Financial Express” on the front
page and this clearly amounted to acquiescence.
By relying upon the said order, it is contended by
Mr.Andhyarujina that the Court considered the case of the
plaintiff based on the infringement of its trademark and
passing off and the breach the contractual obligations
including compromise decree passed by the Madras High
Court. Noting that no infringement of the trademark of Indian
Express is made out on account of the use of the trademark
“New Indian Express”, it was specifically noted by the Delhi
High Court that the expression “New India Express Group” is
not altogether prohibited to be used by the defendant under
the arrangement between the parties. Rather, the
supplemental agreement dated 12.08.2005 permitted the use
of the expression of “New Indian Express” or any of its
derivatives/abbreviations on the internet. It also specifically
recorded that the defendants were also permitted under the
first agreement itself to publish an English daily newspaper in
five southern States and the Union Territories specified in the
agreement and they were permitted to use the expression
“New Indian Express” for that purpose but with an embargo
that the words ‘Indian’ or ‘Express’ or the derivatives outside
the Southern Territories and the Union Territories was
prohibited.
Recording that there was no case is made out for grant of
any relief, the same is refused and Mr. Andhyarujina would
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19 J COMAPL-41053-25 final.doc
rely upon the observations of the Delhi High Court but submit
that the suit came to be abandoned by the plaintiff and was
dismissed for want of prosecution on 06.05.2015. He would
submit that suit sought almost identical reliefs as are sought in
the suit filed in Bombay. Since it is held by the Delhi High
Court that no case for infringement or passing off is made out,
he would submit that the plaintiff is not entitled for any relief
but the learned Single Judge has indulged it for non-existent
reasons and therefore at the appellate stage this Court shall
interfere.
15. Mr. Andhyarujina would also invite our attention to the
order passed by the Intellectual Property Appellate Board
(IPAB) and he would concede to the fact that the said order
restricted the impugned mark “New Indian Express” only to
the five States and the Union Territories. But, this order
according to Mr. Andhyarujina is not determinative of the
question that falls for consideration before this Court being
whether the appellant is entitled to advertise its business
outside the said Territories.
16. Focusing his attention on the impugned order dated
13.11.2025, it is the contention advanced that the learned
Single Judge has failed to take into consideration the most
important aspect being of the registration in favour of the
appellant for its mark. Inviting our attention to paragraph 86
of the impugned judgment, he would submit that the learned
Single Judge by referring to the IPAB order dated 18.06.2015
has construed that the order has also imposed restriction upon
promotion and advertisement and, according to him, the order
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20 J COMAPL-41053-25 final.doc
has been construed as blanket ban from usage of its mark but
according to him this finding is erroneous as IPAB itself had
granted liberty to approach the Delhi High Court by instituting
a suit. In addition, Mr.Andhyarujina is also extremely and
critical of the observation of the learned Single Judge in para
92 when it is held that the expression “New Indian
Express”/”The New Indian Express” is only derivative of the
mark “Indian Express” by adding “New” as the plaintiff is the
absolute proprietor of the mark “Indian Express”. According
to him, there is no concept of Territory in trademark and as
long as the appellant’s registration is intact, there is no
question of it being accused of using the mark as derivative.
According to him, the learned Single Judge has not at all
considered the gist of the submissions advanced in opposing
the interim relief.
In short, it is the contention advanced by Mr.
Andhyarujina that the impugned order suffers from gross
perversity as the learned Single Judge has filed to take into
consideration that the respondent had never taken any step to
register the trademark “New Indian Express” as an associate
trademark under Section 16 of the Trade Marks Act, 1999.
Apart from this, he would submit that there is no concept of
derivative trademark under the Trade Marks Act, 1999 and as
the appellant has been registered as registered proprietor of
the trademark “New Indian Express” since 17.01.2005 under
Section 28 of the Trade Marks Act, the case of the respondent
that the appellant is not the proprietor ought to have been
rejected. He would specifically submit that he is not the
permitted user as is held by the learned Single Judge, as on
account of registration, the appellant has acquired certain
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21 J COMAPL-41053-25 final.doc
rights and though IPAB order has restricted it its operation to
five States and specified Union Territories that do not wipe
away its case that it is a registered proprietor of the mark
“New Indian Express”. He would submit that if the appellant
was permitted user or licensee of the respondent then it would
have been registered as a registered user in respect of the
trademark “Indian Express” and/or “New Indian Express”
instead of registered proprietor of the trademark “New Indian
Express”.
According to the learned Senior Counsel, if the usage by
the appellant was to be construed as a ‘License’, then there
would have to be a connection maintained between the
appellant’s newspaper and the trademark Indian Express,
which was rather contrary to the result of separation which
was sought to be achieved by the MOS.
17. By inviting our attention to the salient features of the
MOS, it is also contended by the learned Senior Counsel that
the fact that the MOS/consent decree makes no statement with
regard to respondent’s ownership of the expression “The New
Indian Express” makes it clear that the appellant’s
proprietary trademark was recognized under the MOS as well
as the supplemental MOS. He would submit that in fact the
word “Indian Express and its derivatives” have been used in
contradistinction to “New Indian Express” and this term has
not been used, so as to be included in the sweep of the
expression “its derivative”. In any case it is the submission
advanced that MOS and consent decree are to be understood to
be overall of settlement of the dispute in the suit that was filed
before the Madras High Court by dividing the business on
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22 J COMAPL-41053-25 final.doc
terms as set out therein and the consent decree refers to a
‘corporate cum family settlement’ between the parties and it is
unconceivable that the appellant would agree for deviation of
the business of publication of newspaper based on a mere
permissive license. Apart from this, he would submit that
parties conduct bear relevance and as per their understanding
that New Indian Express belongs to the appellant, the
appellant has gained reputation associated with it having
secured registration of the trademark under Section 28 of the
Trade Marks Act, 1999.
18. Mr.Andhyarujina has placed reliance upon the decision
of the Apex Court in the case of S. Sayed Mohideen vs. P.
1
Sulochana Bai to submit that the registration only recognizes
the proprietary rights that are pre-existing in common law,
but does not create any specific right.
It is also his contention that the effect of the IPAB order
is limited to the benefits of Section 28 to the five southern
States and the Union Territories and it cannot otherwise
reflect the appellant’s rights accruing on account of
registration of the mark.
In support of his submission about acquiescence,
Mr. Andhyarujina would place reliance upon the decision in
2
the case of Union of India vs Murugesan to submit that the
acquiescence does not always require positive act and it can
also be implied passive acceptance of a particular act.
Reliance is also placed upon the decision in the case of
3
Kanchan Udyog Limited vs. United Spirits Limited to submit
(2016) 2 SCC 683
1
(2022) 2 SCC 25
2
3 (2017) 8 SCC 237
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23 J COMAPL-41053-25 final.doc
that waiver and acquiescence may be expressed or implied and
has to be found in the facts of each individual case.
Thus, according to the learned Senior Counsel, the order
passed by the learned Single Judge deserves to be set aside as
it has failed to consider the crucial aspect of the matter and
the learned Single Judge has committed patent error in
holding that Clause 22 of the MOS read with Clause 12 of the
supplemental MOS records sufficiency of consideration paid to
the appellant in exchange of permitting it to use its title “New
Indian Express”.
Further it is specifically contended that the learned
Single Judge has failed to interpret the MOS and in specifically
Clause 18(iv) where the appellant is entitled to use the
expression “New Indian Express” only for publication of an
English language daily newspaper in five southern States and
that Clause impose negative covenant on the appellant
whereby the appellant would not use the expression “New
Indian Express” for any other purpose or for any other area or
territory for any use whatsoever, but definitely by conduct of
the parties, it was evidently clear that there was no
prohibition on promotion of the appellant’s publication outside
the five southern States and the specified Union Territories.
Reliance has been placed upon the decision of the Apex
Court in the case of Godhara Electricity Company Limited &
4
Anr. vs. State of Gujrat & Anr. wherein it is held that the
intrinsic evidence of act of the parties done under the
instrument is a guide to the intention of the parties and it is
permissible to rely upon the same, where there remains a
doubt as to its true meaning. It is thus urged that the findings
of the learned Single Judge, which are perverse, deserve to be
4 (1975) 1 SCC 199
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24 J COMAPL-41053-25 final.doc
set aside and the injunction granted in favour of the plaintiff
be vacated by setting aside the impugned order.
19. Opposing the submissions advanced on behalf of the
appellant, Mr. Khambata, the learned Senior Counsel, has
taken us through the impugned order in the wake of the
pleadings in the plaint filed by the plaintiff Indian Express
(Pvt.) Limited and the interim application. The thrust of the
argument of Mr. Khambata is on the Clauses of the MOS, in
specific Clauses 17, 18 and 19 and Clause 6 of the supplemental
MOS executed between the parties. It is his submission that
Indian Express (Pvt.) Limited granted permission in favour of
the Express Publications (Madurai) i.e. the appellant and
Clause by Clause he has elaborated the permissive user
conferred upon it. According to Mr. Khambata, reading of the
Clauses of the MOS, disclose that it was consensually agreed
between the parties that his client continued to be the absolute
owner of the registered titles and what was conferred on the
Express Publications is the permitted use. According to him,
whatever is given is only to be used with express permission
and by no stretch of imagination it conferred any independent
right on the appellant. Apart from this, negative covenant
imposed is absolute in time, in use and in manner, as the
Clauses clearly stipulate that the appellant cannot at any point
of time whatsoever use or adopt any of the titles in any
manner whatsoever, clearly indicating that it cannot be done
directly or indirectly. Since the title “Indian Express”
belonged to Indian Express Newspaper (Bombay) Limited, this
was specifically recognized and Clause 18(ii) clarified that the
title included not only all rights in respect all the publications
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25 J COMAPL-41053-25 final.doc
of an English language newspaper under the name of “Indian
Express” but also in relation “to any use whatsoever” whether
in relation to “print media, electronic media or any other
medium whatsoever”. Thus, according to him the title was not
intended to be limited to the publication of an English language
newspaper but it extended to any use in all media and this was
clearly indicative on account of the omnibus language used in
the relevant Clause. Further its ownership is also perpetual
with no geographical or temporary limit is the specific
contention of Mr. Khambata.
Further Clause 19(v), has expressed the intention of the
parties clearly as Mr. Khambata would argue that the
appellant was required to act ‘on behalf of and in the name of
the respondent’, which would reaffirm the undisputed
ownership of Indian Express (Pvt.) Limited over “Indian
Express” including the “New Indian Express” as the ultimate
right vested in Indian Express (Pvt.) Limited to institute
action to protect the same. Thus, in short, the gist of the
submissions of Mr. Khambata is that Indian Express (Pvt.)
Limited continued to be the sole source of all rights and in
contrast, Express Publication is only granted permitted use.
20. Mr. Khambata has exhaustively taken us through the
clauses, which clearly reflected the limited and restricted use
of “New Indian Express” and according to him the permissions
which are implicit in the MOS, can be enumerated as below:
(i) No right, title or interest in “Indian Express” and “New
Indian Express” is only permitted to operate in five southern
States and the specified Union Territories to the print media
only.
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26 J COMAPL-41053-25 final.doc
(ii)Permitted use for the Indian Express was only for
publication of an English language daily in five States and
specified Union Territories and for no other purpose or area
whatsoever.
(iii) On account of the aforesaid permission, Indian
Express Publication was entitled to publish an English
language daily with the use of the name “New Indian
Express”, subject to the word ‘new’ being in the same line and
size as “Indian Express”.
(iv) Liberty is conferred on the appellant to publish only
a newspaper or periodical in any Indian language in the five
States and specified Union Territories using ‘express’(without
‘Indian’)-provided in no manner whatsoever it can compete
with the existing ‘IEG’ Publication.
(v)Liberty to use “The New Indian Express” or its derivatives
or abbreviations on the internet for dissemination of the news
only but no right granted for its use on the Television or Radio
since liberty to use the expression ‘new’ alongside ‘Indian
Express’ in any manner and subject to ‘new’ being legible to
the naked eyes.
21. Simultaneously Mr. Khambata also read the Clauses so
as to enlist the negative covenant on the appellant/Express
Publications and he has enlisted the same as under:
(i) The appellant cannot use or adopt its title or derivative or any
similar title except as specifically permitted under Clause 19 (ii).
(ii)The appellant shall not any right, title or interest in respect of
the title “Indian Express”.
(iii) Even within five southern States and specified Union
Territories the appellant is merely “permitted user” of the mark
“The New Indian Express” and that too strictly confine to
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27 J COMAPL-41053-25 final.doc
publications of an English language in daily; prohibited for any
other purpose or territory.
(iv) The appellant’s corporate name must not include the
word ‘Indian’.
(v)The appellant shall not be permitted to use respondent’s title
without any temporal or territorial limit.
(vi) “New” has to be in the same line and the same size as
Indian Express which Clause was subsequently diluted.
(vii) Derivatives / look alike titles are barred –
circumvention by variation is foreclosed even in appellant’s own
section of supplement “INDIAN” cannot be used alongside
“Express”.
(viii) The appellant has no right to use New Indian Express
on Television or Radio.
According to Mr.Khambata the supplemental MOS has
reaffirmed the rights and restrictions enumerated in Clause 18
as well as Clause 19 of the MOS and has specifically declared
that they shall remain in force in all time except the
modification in Clauses 18(iv), 19(iii), 19(iv) and 19(v).
22. In the light of MOS and supplemental agreement, the
senior counsel has asseverated that, together, the MOS and the
supplementary MOS constitute a consent decree of the Madras
High Court passed in Civil Suit Nos. 1246 and 1247 of 1992.
By relying on the decision in the case of Rama Narang vs.
5
Ramesh Narang he would submit that a compromise is as
much as a decree passed on adjudication and is composed of
both command and contract and the decree bind the parties to
it and must be construed strictly in accordance with its plain
5 (2006) 11 SCC 114
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28 J COMAPL-41053-25 final.doc
terms. He has specifically urged that “Indian Express” always
vested in “Indian Express Newspaper (Bombay) and was in
use since 1932 and registered as a trademark in its favour
since 23.06.1994 much prior to the execution of the MOS. That
is the specific reason why the MOS has a foundational
statement namely “Indian Express” meant to be owned and
vested in Indian Express Group and he would strongly contest
the statement of Mr. Andhyarujina that the MOS has granted
two separate titles. On the other hand, he would submit that
the MOS granted appellant a limited permitted user of a
derivative of the mark “Indian Express” in the form of “New
Indian Express” for a limited purpose, to be operated within
limited territory. Thus, according to Mr. Khambata when the
MOS, which was inked, the contesting parties agreed for a
settlement for which a total of Rs.Sixty One Crores was paid by
the Indian Express Group to the appellant for the forbearance,
sufficiency of which is mutually acknowledged.
He would strongly refute the contention of
Mr.Andhyarujina that the consideration under Clause 22 was
a “non-competing” and forbearance capital fee and according
to him the contention is wholly irrelevant as the nomenclature
of the payment would not alter its substance, when the fact
remains that the money was paid to the appellant to accept the
territorial restrictions on the use of its mark in most parts of
India and internationally. According to Mr. Khambata the MOS
is comprehensive family settlement in which money, assets
and rights moved in multiple direction and payment of Rs.
Sixty One Crores was only one component and it is the specific
contention of Mr. Khambata that various obligations under the
MOS are not severable from one another.
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29 J COMAPL-41053-25 final.doc
Apart from this, it is also urged by him that the Bombay
High Court in several orders has recognised “Indian Express”
as a Well-Known Mark of “Indian Express” and its significance
is unfolded before us by Mr. Khambata by stating that under
Section 11(2) read with Section Section 2(a)(z)(g) of the
Trade Marks Act, 1999 a well known mark is entitled to
protection across all classes of goods and services and across
the whole of India. In addition, under Section 29(4) of the
Trade Marks Act, 1999, use of a mark identical or similar to a
well-known registered mark, even in relation to dissimilar
goods or services, constitutes infringement if such use without
due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of a well-known mark.
By applying this principle it is the contention advanced
by Mr. Khambata that the appellant’s use of “New Indian
Express” to conduct sponsored commercial events in Mumbai
directly trends upon and is detrimental to the well-known
mark of “Indian Express”. Another consequence of a well-
known mark according to Mr. Khambata is, any goodwill
generated by permitted user using a mark under a limited
license from the proprietor of a well-known mark vests
exclusively to the proprietor and therefore, it is his submission
that the appellant being a limited permitted user within
restricted territory, cannot acquire any independent goodwill
or proprietary interest in the “New Indian Express”.
23. Taking his argument ahead Mr. Khambata has urged
that since the appellant was only permitted to use “The New
Indian Express” only for publication of English language daily
newspaper in five southern States and Union Territories and
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30 J COMAPL-41053-25 final.doc
“for no other purpose or any other territory for any use
whatsoever” every mode of commercial deployment of the
mark is prohibited. He would invite our attention to the
statutory definition of the term “use” in Trade Marks Act,
1999 under Section 2(2)(b) and Section 2(2)(c)(i) as the use
of a mark is to be construed as a reference to the use of printed
or other visual representation of the mark and in relation to
the goods it is construed as a reference to the use of the mark
upon, or in physical or any other relation whatsoever to such
goods.
He would invoke principles of law laid down by the Apex
Court in the case of Hardie Trading Limited vs. Addisons
6
Paints and Chemicals Limited , and in particular paragraphs
41 to 45 to buttress his submission that the statutory
definition of ‘use’, make it evidently clear that ‘use’ in relation
to a mark shall be broadly construed and the words ‘in any
relation whatsoever’ indicate that use may be other than
physical and bring within its sweep use in advertisements,
invoices, orders, etc. Thus, according to him, the restrictions
in Clause 18(iv) of the MOS encompass the promotion and
advertisement and this particular condition being read in the
light of the other clauses, it is the contention of Mr. Khambata
that the appellant’s permitted use was for a single defined
activity i.e. publication of an English daily within a defined
geography of five States and specified Union Territories which
expressly excluded all other modes, purposes and territories.
24. Mr. Khambata has also urged that on 16.04.2025 the
counsel for the appellant had clarified his submission to the
6 (2003) 11 SCC 92
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31 J COMAPL-41053-25 final.doc
effect that it independently has a right to promote its
publication outside five southern States and specified Union
Territories but he would submit that for that purpose the
appellant must establish an independent right but there is
none as neither of the words/phraseology “promotion”,
“business”, “events” find any place in Clause 18(iv) and
therefore, according to him, the appellant’s independent
promotional right which is sought to be pressed into service is
without any foundation.
Further dealing with the argument that the Mumbai
event was stand-alone activity for separate revenue stream, as
the event “The New Indian Express-Mumbai Dialogues” was
conducted on 20.09.2024 in Mumbai with the independent
sponsors like United Bank of India, MAHAGENCO, New India
Assurance Company Limited, and it is sought to be projected
as a stand-alone commercial event aimed at generating
sponsor revenue, Mr. Khambata would question as to under
what right this event is organized as this would fall entirely
outside any permitted use of MOS or supplementary MOS.
Though an attempt is made to conduct it as a promotional
event for newspaper, this according to Mr. Khambata is outside
the scope of the “permissive user” and amounts to gross
overreach of the explicit restrictions set forth in MOS.
25. Mr. Khambata has laid much emphasis on the IPAB order
dated 18.06.2015 which, according to him is definitive
determination of the enquiry into the appellant’s right.
Pointing out to us the provision in the Trade Marks Act in the
form of Section 124 which mandates a stay of civil proceedings
where a defense is raised by the defendant that the registered
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32 J COMAPL-41053-25 final.doc
trademark is liable to be rectified, he submit that the Delhi
High Court stayed CS (OS) No.1134 of 2011 on 03.02.2015 by
invoking Section 124, and it deferred the questions of
registrations, geographic, scope to IPAB. The IPAB passed an
order on 18.06.2015 restricting the appellant’s registration
and use to five southern States. In the interregnum, the Delhi
High Court suit which was adjourned awaiting the decision of
IPAB and was dismissed for want of prosecution on 06.05.2015
and no appeal is filed against the IPAB order.
According to Mr. Khambata, the said order holds the field
and is binding on all civil determination of issue thereunder.
According to him, the Delhi High Court order with the interim
arrangements which at the relevant time bear some relevance,
since the IPAB proceedings were pending but reliance upon the
said orders to pitch it against the IPAB order, according to Mr.
Khambata is wholly unjustified in the backdrop of the scheme
of Section 124. In any case, he would submit that under sub-
section (4) of Section 124, the IPAB orders circumscribing the
scope of trademark registration shall bind on all civil Courts
and the Delhi High Court and, therefore, if the suit at all was to
proceed on merits, the Delhi High Court would have been
bound by the IPAB order. According to him, IPAB order
restricted all modes of use and not mere publication but it
would include the promotion, advertisement, sponsorship and
even stand-alone events and no residual right can be carved
out therefrom for events or promotion by characterizing such
activity as something other than “use”.
26. With reference to the order dated 10.10.2011 passed by
the learned Single Judge of the Delhi High Court, according to
the learned Senior Counsel, since the suit was stayed on
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33 J COMAPL-41053-25 final.doc
03.02.2015 which was subsequently dismissed for non
prosecution, the interim order has merged into final disposal.
The argument of res judicata is wholly inapplicable as
according to Mr. Khambata the interim order which does not
finally and conclusively decided an issue cannot be a precedent
as the reasons assigned in such orders are only tentative,
being temporary arrangements to preserve the status quo
before final hearing. Mr. Khambata would rely on the decision
in the case of State of Assam vs. Barak Upatyaka D. U.
7
Karmachari Sanstha . According to him, the order of the Delhi
High Court cannot constitute res judicata it being an
interlocutory order and not finally determining the rights of
the parties.
It is also his contention that at that stage, the learned
Single Judge of the Delhi High Court do not have the benefit of
the JAA dated 18.04.1997 or its termination as all invoices
filed in support of advertisement fell between 1997 to 2009 -
entirely within subsistence of the JAA and constitute only a
limited permission under that irrevocable agreement.
According to Mr. Khambata, the learned Single Judge of Delhi
High Court did not consider the admitted position that the
“New Indian Express” is not available outside five southern
States and Union Territories for the very same reason, the
Division Bench which upheld the Singe Judge decision do not
bind today, as the opinion expressed is based upon prima facie
observation.
27. As regards the order of the learned Single Judge of this
Court (Justice S.C.Dharmadhikari) dated 18.10.2010 when the
ad-interim injunction was declined in favour of his client also
7 (2009) 5 SCC 694
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34 J COMAPL-41053-25 final.doc
do not create any binding effect as on today, as according to
him the suit was not taken for trial on the issue of title and
infringement but it was resolved by final consent order
recorded on 29.04.2012 before another Single Judge (Justice
G.S.Patel) and the suit was disposed of on those terms.
Therefore, the order has no independent legal existence.
It is the specific contention of Mr. Khambata that there is
no question of any res judicata as the orders relied upon, both
by the Delhi High Court and Bombay High Court has not
determined the rights of the parties finally.
28. Focusing his attention on the allegations of acquiescence,
Mr.Khambata has urged that consent decree can be varied or
extinguished by the private conduct of parties to it and the
only remedy available to a party to a consent decree to avoid
it, is to approach the Court which recorded the consent. He
would submit that if the consent decree cannot be varied even
by deliberate express act of the party definitely it cannot be
varied by the parties inaction, as the Court cannot go beyond
the decree and has no jurisdiction to modify it and it is
imperative for the Court to execute the decree as it is.
According to Mr. Khambata, JAA never varied consent
decree and even if assuming for a moment it did, the variation
was temporary and revocable and in fact the JAA itself stood
terminated in the year 2011. It is also urged that the appellant
being aware of the IPAB order subjecting its registration and
use to the territory jurisdiction as per MOS is not estopped
from arguing that its usage in some manner modified the
terms of MOS. Since there is no challenge to the IPAB order, it
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35 J COMAPL-41053-25 final.doc
has attained finality, the appellant has no right to advance
such a statement is the contention of Mr. Khambata.
29. Dealing with the contention of Mr.Andhyarujina that the
statutory right can be waived and therefore consent rights
also can be waived and the reliance in the case of ARCE
8
Polymers vs. Alpine Phamaceuticals Pvt. Ltd. & Ors. and in
the case of Jaswant Singh vs. Ahmedabad Municipal
9
Corporation , as according to Mr. Khambata, is not having
relevance to their case, as neither of it holds that the decreetal
obligation can be waived by inaction. It is urged that the
appellant accepted the consent decree, never appealed against
the IPAB order that restricted its registration to five southern
States and Union Territories and has conducted itself on
footing that these instructions are binding but at the same
time now it is an attempt to claim broader right rather than
what instrument permits and this is what are the
inconsistencies contemplated under the ARCE Polymers
(supra) and this is prohibited according to Mr. Khambata.
30. Another submission on behalf of the “Indian Express
Group” assertively stated is that acquiescence, waiver and
“
laches prevent a party from asserting its right”, if it has led
another to believe that it will not assert, but in no way it create
rights, which were non existent and it is contended that no
amount of inaction on part of Indian Express can result into a
decree or permission which the parties deliberately excluded,
the governing principle being that, what cannot be done
(2022) 2 SCC 221
8
9 1992 (Suppl)(1) SCC 1992
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36 J COMAPL-41053-25 final.doc
directly cannot be done indirectly. In addition, it is also
submitted that acquiescence implies positive acts and not
merely silence or inaction such as is involved in laches. A mere
failure to sue, without an affirmative act of encouragement
that cause infringer to change its position is not acquiescence
and for this proposition a reliance is placed upon the decision
in Encure Pharmaceuticals Limited vs. Corona Remedies Pvt.
10
Ltd. and also on the decision in the case of Union of India vs.
11
Divyangana Kumar .
It is urged that when a party continuously asserts its
rights, the very foundation of acquiescence and laches
collapses and this is so urged in the background that the
Indian Express contested the appellant’s registration before
various forums, including the IPAB and therefore, according to
Mr. Khambata there was never any stoic silence on its behalf
and rather at every stage and at an every opportunity
available it contested the assertion of rights by the appellant.
According to Mr. Khambata, the appellant has resorted to
dishonest use of the restricted/limited right conferred upon it
under the MOS and by relying upon the decision in the case of
Colgate Palmolive Company & Anr. vs. Anchor Health and
12
Beauty Care it is submitted if the use is found to be dishonest,
delay or acquiescence has no relevance and when an
infringer’s knowledge of proprietors right is pervasive,
acquiescence is not even remotely applicable. It is thus
submitted that the appellant which was a party to the MOS
and supplementary MOS and the consent decree cannot claim
ignorance of the respondent’s rights. In fact, the order of IPAB
2014 SCC Online(Bom) 1064
10
2005 SCC Online (Bom) 179
11
12 2003 SCC Online (Delhi) 1005
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37 J COMAPL-41053-25 final.doc
calling upon the appellant to scrupulously follow its order
without any slightest violation of the terms of the MOS having
been accepted as final and determinative, would lead to an
irresistible conclusion that the appellant has waived all its
claims to argue in any manner about waiver/modification of
MOS, as the said directions are wholly binding without any
exception.
31. As regards a contention to the effect that mutual
advertisements were published in each other’s newspapers in
the wake of the JAA and this being pressed into service as
evidence of PAN India acquiescence, it is contended that they
”
were “Home ads and did not relate to the promotion or sale of
“ ”
the newspaper of The New Indian Express . Every incident
relied upon dating from 1997 to 2009 precisely covering the
period of JAA, it is submitted that the JAA was terminated by
notice dated 21.07.2010 with effective from 20.01.2011 and
upon termination the limited permission under the JAA stood
revoked. It is also submitted by Mr. Khambata that if a
submission that every time whenever the publication of the
advertisements took place, a copy of newspaper was also
delivered is also a hallow submission as he would submit that
it is pleaded that from 1995 upto 15 years the newspapers
were supplied but the JAA itself came to be end in 2010 and it
also conveyed that it was not supplied after 15 years i.e. from
1995. Therefore. an issue is raised by Mr. Khambata as to if
accepting the submission that the newspapers were delivered
but it was delivered till when and definitely not beyond the 15
years. Ultimately in June 2015 when IPAB directed the
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38 J COMAPL-41053-25 final.doc
appellant to restrict its operation then there is no question of
any acquiescence as the IPAB order also makes a reference to
the consent decree order and that binds the parties equally.
32. In conclusion, Mr. Khambata has assertively submitted
that the learned Single Judge has committed no error in
granting interim injunction by precisely construing the
counter stand and by rightly interpreting the terms of the
MOS and supplementary MOS which translated into consent
decree passed by the Madras High Court which is binding and
has to be strictly construed and has rightly concluded that the
“
appellant enjoy no proprietary right in New Indian
”
Express and its use in Mumbai to conduct and sponsor
commercial event is violation of the consent decree.
For the sake of the argument it is submitted by the
learned Senior Counsel that even if any promotional right
existed, ‘Mumbai Dialogues’ is not a promotion of newspaper
but it is exploitation of the grant, to host an event as an
independent assets generating corporate sponsorship in a
contractually and legally forbidden territory. In any case,
according to Mr. Khambata the order passed by the learned
Single Judge will have to be tested in the light of the principles
laid down in the case of Wander Limited & Anr. vs. Antox India
13
P. Limited and the appellate Court shall interfere only if the
impugned order is vitiated by an error of law apparent on the
face of the record or if it is so arbitrary, capricious or perverse
that no reasonable person could have reached such a
conclusion.
13 1990 Supple (1) SCC 727
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39 J COMAPL-41053-25 final.doc
Submitting that the appellant has assailed the order
passed by the learned Single Judge on 18 grounds and
“ ” “ ”
categorizing them as patent errors and perverse but
none of the grounds, according to Mr. Khambata, identify a
wrong legal test or ignorance of a binding authority or make
out that the conclusion reached is not a conclusion which could
be reached by a reasonable man and therefore, according to
him, the scope for interference is very little and in his opinion
none as the learned Single Judge has rightly appreciated a
prima facie case, balance convenience and the irreparable
harm if the injunction is not granted, he would request the
Court to uphold the impugned order.
33. The contest between the two parties, Indian Express
Group (IEG) and New Indian Express Group (NIEG) arises in
the wake of consent terms executed in a dispute that finds its
way before the Madras High Court in the form of two Civil
Suits.
The historical background of the Indian Express Group
and its existence would establish that Indian Express
Newspaper (Private) Limited Nariman Point Buildings and
Holdings Private Limited (NPBHPL) was incorporated in 1959
to acquire, take over and carry on business as proprietors,
publishers of any newspapers, journals, magazines, books and
other literally work. In an about 1972 it took on long lease the
“ ”
land and buildings know as Express Towers . The name of
“
the Company was changed to Indian Express Newspapers
(Bombay) Limited and it continued over the years as it
involved itself in publication of multi editions of newspapers.
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40 J COMAPL-41053-25 final.doc
“ ”
Indian Express Limited was incorporated on
05.11.2003 and through a scheme of arrangement by way of
demerger entire print media undertaking, the Indian Express
“
Newspaper(Bombay) Limited stood transferred to Indian
Express Newspaper(Mumbai) Limited with effect from
05.01.2009. The Indian Express Group comprise of several
group of companies, shares of which were held by Nariman
Point Buildings Services and Trading Private Limited as the
ultimate holding company (NPBS).
The shares of NPBS were held by late Shri Ramnath
Goenka and his grandsons Shri Vivek Goenka and Shri Manoj
Kumar Sonthalia. Manojkumar had an elder brother Amit
Kumar Sonthalia, who was mentally challenged and in the
year 1989 it was proposed that the shares held by Shri
Ramnath Goenka for the benefit of Shri Amitkumar Sonthalia
to the extent of 24.32% of the shareholding of NPBS would be
divided equally and kept in the joint name of Manojkumar
Sonthalia and Vivek Goenka.
Mr.Manojkumar contended that in the year 1990,
24.94% shareholding as owned and held by him and 12.16%
shareholding held in Trust for his brother, had been
transferred fraudulently in favour of Ramnath Goenka as a
part of larger conspiracy by Vivek Goenka to take over the
entire management and ownership of NPBS and effectively the
entire Indian Express Group of Companies. He also alleged that
the management of Indian Express Group was sought to be
taken over by Vivek Goenka by manipulating Board
Resolutions and in the year 1992 he instituted two suits
impugning the transfer of shares that were held by him as well
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41 J COMAPL-41053-25 final.doc
as transfer of shares held for the benefit of elder brother, as
transfer of 49.28% of entire shareholding of NPBS resulted
into depriving him of the control of the Group and amounted to
handing over the entire control to Vivek Goenka and the suit
sought relief of cancelling the meeting in which the shares
were transferred and for the several other ancillary reliefs.
34. A civil suit filed by Manojkumar Sonthalia impleaded
NPBS along with Indian Express Newspaper (Bombay)
Limited, Indian Express (Madurai) Limited as well as Vivek
Goenka along with several other individuals as the defendants.
The suit claimed the relief of declaring the Board Meeting of
NPBS held on 05.01.1991 to be illegal, null and void and sought
injunction restraining some of the defendants from acting as
Director in the said Company.
During the pendency of the said proceedings, an
application was moved before the Court to record
Memorandum of Settlement arrived between the plaintiff Shri
Manojkumar Sonthalia and sixth defendant Shri Vivek Goenka
and defendant no.14 Radhadevi Sonthalia and consequently
for passing a decree in its terms and disposal of the civil suit.
This resulted in disposal of the civil suit and it was ordered
and decreed in terms of the settlement arrived between the
parties.
The settlement terms included a settlement in the form
of transfer of the shares equity and preference shares with an
understanding that the plaintiff shall withdraw all allegations
and an indemnify Shri Vivek Goenka against all over any
claims which may be made by Anilkumar Sonthalia. With
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42 J COMAPL-41053-25 final.doc
regard to the aforesaid allegations and he along with
Radhadevi Sonthalia shall jointly and severally indemnify and
keep Shri Vivek Goenka against all claims of whatsoever
nature that may arise from any member of Sonthalia family.
35. The clauses, which are relevant for our consideration in
the MOS, are Clause Nos. 17 to 21 which read thus:
“17) That Indian Express News papers (Bombay) Limited and
Traders Limited shall be the absolute owners of their registered
titles of the Newspapers and Magazines (including supplements)
whether current published by them or not in respect of the
whole of India and that Manoj kumar Sonthalia, Indian Express
(Madurai) Limited Andhra Prabha Limited and Sterling
Newspapers Limited shall have no claim of any kind in relation
thereto and that Manoj Kumar Sonthalia, Express (Madurai)
Limited, Andhra Prabha Limited, Sterling Newspapers Limited
shall not at any time the or adopt any way 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 in clause 19 infra.
18) That the title "Indian Express" shall vests absolutely in
Indian Express Newspapers (Bombay) Limited as clarified in
Sub Clauses (i) to (iv), infra and that Indian Express (Madurai)
Limited shall not have any right, title or interest in respect
thereof, subject to the condition only that in the states, of Tamil
Nadu, Kerala, Karnataka, Andhra Pradesh and Orissa
(hereinafter referred to as the five states) and the Union
territories of Pondicherry, Inam, Andaman and Nicobar Islands
and Lakshadweep islands (hereinafter referred to as the said
Union Territories), Vivek Goenka, Nariman Point Building
Services & Trading Private Limited Indian Express Newspapers
(Bombay) Limited and Traders Limited or any corporation
owned or controlled by them shall not directly or indirectly use
the title (in relation to the print media) "Indian Express" or any
name which includes the words "Indian" or "Express"" or any
derivative thereof save the Financial Express, the Weeklies,
Supplements or other periodicals,
i) That the title "Indian Express" belongs to Indian Express.
Newspapers (Bombay) Limited absolutely.
ii) That this 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.) That this title includes not only all right in
respect of all publications of an English language Newspaper
under the name "Indian Express"; but, also. in relation to any use
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43 J COMAPL-41053-25 final.doc
whatsoever whether in relation to print media, electronic media
or any other medium whatsoever:
iii) That such rights and ownership is unlimited in point of
territory or time.
iv) That Indian Express (Madurai) Limited is permitted use of
the expression "New Indian Express" only for the publication of
an English language daily Newspapers in the specified five states
and Union Territories and for no other purpose or any other area
or territory for any use whatsoever.
19) That Indian Express (Madurai) Limited, Andhra Prabha
Limited Sterling Newspapers Limited shall be the absolute
owners of all the titles of the News papers and magazines
including the Supplements) Indian Express News papers
(Bombay) limited published by them and that Vivek
Goenka/Traders Limited, Nariman Point Building Services &
Trading Private Limited shall have no claim of any kind in
relation thereto and that Vivek Goenka, Indian Express
Newspapers (Bombay) Limited Traders Limited, Nariman Point
Building Services & Trading Private Limited 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 of
resembling thereto and that Vivek Goenka, Indian Express
Newspapers (Bombay) Limited, Traders. Limited, Nariman Point
Building Services & Trading Private Limited have no claim of
any kind in relation thereto. In relation to the English language
publication “Indian Express" and that having regard to clause 18
supra the following further provisions be and are hereby made:-
i) "The name of Indian Express (Madurai) Limited. shall be
changed to any name which does not include the word "INDIAN",
it being clarified that the name can be 'IEM OF NIEM' or any
other abbreviation or name to the intent and purpose that, the
new name may contain the word 'Express' but shall not contain
the word "INDIAN'.
ii) Manoj Kumar Sonthalía, Indian Express (Madurai) Limited,
Andhra Prabha Limited & Sterling Newspapers Limited shall not
use the title Indian Express(IE) at any time, anywhere.
iii) Subject to Clause 20 infra Indian Express Madurai)
Limited /NIEM shall be entitled to publish an English language
Daily by the name of "New Indian Express" on the condition that
the expression "NEW" shall be in the same line and of the same
size as the words Indian Express wherever this title appears.
iv) Save and except what is, stated in clause19(iii)
hereinabove, neither Indian Express(Madurai) Limited/New
Indian Express (Madurai) Limited or Manoj Kumar Sonthalia or
Andhra Prabha Limited or Sterling Newspapers Limited or any
corporation owned or controlled by them shall directly or
indirectly use the title Indian Express or any of its derivatives or
any title similar on resembling thereto at any time whatsoever,
provided that the restrictions against use of the word "Express
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44 J COMAPL-41053-25 final.doc
(without association with the word "Indian") shall not apply to
the sections or supplements of New Indian Express, and in these
sections or supplements the word Indian" shall not be used
alongside or otherwise with the word "Express".
v) Manoj Kumar Sonthalia, Indian Express(Madurai)
Limited & New Indian Express(Madurai) Limited shall be
entitled to object to and prevent any other person from using the
title Indian Express or its derivatives in the said five states and
the said union territories and for this purpose shall be entitled to
require Indian Express News papers (Bombay) Limited to take
steps to prevent such publication, and if for a period of 15 days
after, receipt of notice from Manoj Kumar Sonthalia, Indian
Express(Madurai)limited (or New Indian Express Madurai
Limited) Indian Express News papers (Bombay) Limited fails to
institute appropriate proceedings, then Manoj Kumar Sonthalia
and/or Indian Express Madurai limited New Indian Express
Madurai Limited) are hereby irrevocably authorized to adopt
such proceedings on behalf and in the name of Indian Express
New papers (Bombay) Limited to restrain and stop such
publication or publications.
20) That Indian Express Madurai Limited, New Indian Express
(Madurai) Limited, Andhra Prabha Limited Sterling Newspapers
Limited' or Manoj Kumar Sonthalia or any corporation, firm or
concern, directly or indirectly owned or controlled by them or
associated with them shall not start any English language.
Newspapers in any state of India other than specified five states
and the specified union territories in clause 18 supra for a period
of 36 months from this date and that after the expiry of the said
period of 36 months, if Indian Express (Madurai) Limited, New
Indian Express (Madurai) Limited, Andhra Prabha Limited,
Sterling Newspapers Limited or Manoj Kumar Sonthalia, start
an English Language newspaper in any State of India other than
the said five States and the said Union Territories, it shall be
subject to the further condition that it shall not bear the name of
"New Indian Express" or "Indian Express" or any name including
the word Indian or Express or its derivatives, and that Squally,
none of them shall start any Indian Language Newspaper which
is in any way in conflict or competition with the language
newspapers presently owned by Vivek Goenka, Indian Express
Newspaper (Bombay) Limited, Traders Limited, Nariman Point
Building Services & Trading Limited, Bharat Katha Publication
Private Limited Bharat Katha Offset (Private) Limited in their
shall not apply to periodicals (magazines, weeklies etc).
21) That Vivak Goenka, Indian Express News Papers (Bombay)
Limited, Traders Limited, Nariman Point Building Services &
Trading Private Limited or Bharat Katha offset Private
Limited/Bharat katha Publication Private Limited or any
corporation, firm or concern owned 'or controlled by them or
associated with them shall not start any English language
Newspaper in any of the said five states and the said union
territories in clause 18 Supra for a period of 36 months from the
date and that, if they start any English language Newspaper
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45 J COMAPL-41053-25 final.doc
thereafter, it shall not bear the name of Indian Express or any
name including the word Indian or Express or its derivatives bút
this limitation shall not apply to the daily. The Financial Express
and the periodicals and again none of them shall start any
Indian Language Newspaper which is in any way in conflict with
the language newspapers presently owned by Manoj Kumar
Sonthalia, Indian Express (Madurai) Limited/Andhra Prabha
Limited or Sterling Newspapers Limited er any Kalayalam
Newspaper in the said five states and the said union Territories
mentioned in Clause 18 supra and that this prohibition shall not
apply to periodicals (magazines, weeklies etc).
36. One more Clause which is relevant is Clause No.22 which
pertained to the payment of non-competing forbearance
capital fee of Rs.Fifty Six Crores in favour of Indian Express
(Madurai) Limited, and the relevant portion of the said Clause
reads thus:
22) That in consideration of the restraint against competition
and obligations accepted herein-above in clause 21 supra
particularly in respect of most parts of India save the specified
five states and the specified Union Territories which are over
and above the counter obligations provided for hereinabove and
that Indian Express Newspaper(Bombay) Limited shall pay
Indian Express (Madurai) Limited a non-competing and
forbearance capital fee of Rs.55 Crores as under :
a) For the forbearance accepted by Indian Express (Madurai)
Limited not to start an English Newspaper within 36 months,
Rs.6(six) crores.
b) For the balance forbearances accepted Rs.50 (fifty)crores and
as determined by Mr.R.V.Pandit by valuing the restraints and
forbearances) on the dispute regarding payable and the the
amount of non-competitive free terms of such payment and the
security therefore being referred to him by Vivek Goenka and
Manoj kumar Sonthalia on behalf Indian Express Newspapers
(Bombay) Limited and Indian Express (Madurai) Limited Which
reference has been ratified by the Board of Directors of the
respective companies and This fees shall be paid as..”
37. Various other clauses in the MOS record understanding
between the parties but since the subject matter of the appeal
before us do not involve any of them, we refrain ourselves from
reproducing the same. The consent terms were accepted by
the Madras High Court and resulted into passing of a decree.
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38. A slight modification of the said consent terms on
30.03.1997 in the form of supplemental agreement modified
Clause 19 (i) of the MOS(limited to the company name) and it
reads thus “the name of Indian Express(Madurai) Limited
shall be changed any name which does not include the word
‘INDIAN’, it being clarified that the name can be 'IEM or NIEM'
or any other abbreviation or name to the intent and purpose
that, the new name may contain the word 'Express' but shall
not contain the word "INDIAN'.”
There was also substitution of Clause 22(ii) and some
other clauses relating to payment which are not relevant for
our purpose. This was followed by a supplemental agreement
entered between the IEG and NIEG in the backdrop of the
settlement dated 05.02.1995 creating reciprocal preemptive
rights with respect to publication and companies control by
IEG and NIEG.
The supplemental agreement clearly recorded that IEG
had concluded all payment obligations under the MOS and the
memorandum of satisfaction of the decree was duly recorded
by the High Court of Madras on 20.03.2003.
39. IEG and NIEG agreed to certain clauses in the MOS
which contain restrictions which were unlimited in point of
time and precluded both the groups from pursuing
restructuring option or effective strategies for growth and
expansion. In the mutual interest of both the groups it was
agreed to effect certain amendments to the MOS and the
decree in terms of MOS was passed by the Madras High Court
on 16.04.1997. The relevant clauses with which we are
concerned in the supplemental agreement which relaxed the
restrictions imposed in the MOS, reads thus :
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47 J COMAPL-41053-25 final.doc
“6. IEG and NIEG also agree that notwithstanding anything to
the contrary contained in Clause 19(v) of the Memorandum of
Settlement dated 05.02.1995, NIEG shall be at liberty to take
such action as NIEG might deem necessary against any
infringement by anyone of its title "The New Indian Express" in
the five Southern states and specified Union territories without
first calling upon IEG to take action. It is clarified however that
this is not in derogation of the right of IEG to take action
against any infringement of any of its rights under the
Memorandum of Settlement dated 05.02.1995 or any of its
titles anywhere.
7) IEG and NIEG agree that notwithstanding the prohibition
contained in Clause 18 (iv) and 19(iv) of the Mernorandum of
Settlement dated 05.02.1995, NIEG shall be at liberty to
publish any newspaper or periodical in any Indian language in
the five southern states and union territories mentioned in the
Memorandum of Settlement dated 05.02.1995 using the word
"Express" (without association with the word "Indian" or any
derivative of the word "Indian") in the title of the publication
provided, however that NIEG shall only use the word "Express"
to publish a newspaper or periodical in an Indian Language
which is not in any manner whatsoever in competition with an
existing publication of IEG.
8) IEG and NIEG agree that notwithstanding the prohibition
contained in Clause-18 (iv) of the Memorandum of Settlement
dated 05.02.1995, NIEG shall be at liberty to use its title "The
New Indian Express" or any of its derivatives/abbreviations on
the Internet for dissemination of news. For the removal of
doubts, it is clarified that NIEG shall not have the right to use
the title "The New Indian Express" for Television or Radio.”
40. The supplemental agreement presented before the
Madras High Court in execution petition filed in Civil Suit
No.1246 of 1992 received its approval as the Court recorded
the consensus that the execution petition may be closed by
recording supplementary agreement. Accordingly, the
execution petition was closed and it was recorded that the
supplementary agreement dated 12.08.2005 signed by the
parties shall form a part of the record.
[
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48 J COMAPL-41053-25 final.doc
41. After the agreement is executed, two groups being
represented by Manojkumar Sonthalia and Vivek Goenka
respectively entered into an arrangement for joint advertising
termed as “All India Advertisement Revenue Arrangement”
and it was a mutual understanding, that bills will be raised by
the two groups for the ads at discounted card rates of the
publication in which they are carried and debit notes will be
exchanged on monthly basis. The arrangement also
contemplated certain incentives and it was agreed that any
deviation to the terms therein shall be with the mutual
consent. The terms in the agreement were extended from time
to time and a new agreement was entered into on 12.08.2005.
However, on 21.07.2010, the said agreement was terminated
with effect from 20.01.2011 in the wake Clause 10 of the Deed
of Agreement permitting termination by giving six months
notice.
The notice of termination issued by Indian Express
categorically stated in the wake of demerger order dated
25.07.2008, the publication business of Indian Express
Newspaper (Mumbai) Limited was transferred to it. In any
case after 21.07.2010, there is no arrangement between the
two groups in the form of Joint Advertisement Agreement
(JAA).
42. In the year 2010, “Indian Express Limited” instituted a
suit to restrict Express Publication (Madurai) from using its
registered trademark ‘i.e.’ or any other deceptively similar
mark so as to infringe the plaintiff’s registered trademark. It
also brought an action of passing off and prayed for award of
damages.
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A Notice of Motion take out in the said suit was decided
by the learned Single Judge on 15/18.10.2018 and the
injunction was refused.
The order passed by the learned Single Judge
exhaustively referred to the arrangement between the two
groups surfacing through memorandum of settlement(MOS)
and supplemental MOS when the plaintiff brought a case of
infringement of its registered trademark. It rendered a
finding that there was complete silence by the plaintiff about
the usage by the defendants of the said mark and it was held
that both the parties were in the same business and
functioning as the same group for decades together and the
name and their publication is identical, but subsequently there
was division or separation in the group, to avoid the conflict
and clashes. Thus the relief was refused to the plaintiff for the
reason that it had failed to produce cogent and reliable
material to establish infringement of its mark.
However, this discord is resolved on 18.07.2014 in the
wake of understanding where the counsel for the defendants
made a statement that they have discontinued to use of the
mark “i.e” on the masthead and as a logo w.e.f. 18.04.2011 and
removed the same from the website. The defendants also
clarified that they had no intention of using the mark in future
and their application filed before the Registrar of Trademark
for registration of masthead, which was the subject matter of
the suit as an associate trademark will be withdrawn.
In the wake of the aforesaid understanding when the
defendants conceded that it will not use the mark/logo of
Indian Express group the proceedings are closed.
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50 J COMAPL-41053-25 final.doc
The insistence on behalf of the appellant to reply upon
the observations of the learned Single Judge in refusing the
interim relief, which was a prima facie view expressed,
therefore, looses its efficacy as the defendants willingly agreed
that it shall not use the logo ‘I.e.’. In any case the suit was
filed for action on infringement and passing off and that action
has come to an end.
43. The Indian Express Limited also instituted a suit before
the Delhi High Court in the form of CS (OS) No.1124 of 2011,
seeking injunction against the defendants for use of the words
“The Indian Express”, “New Indian Express” ‘Indian’ and
‘Express’ or any associated or cognate or abbreviated terms or
any logos covered by the plaintiff’s trademark, thereby
violating the rights under a decree dated 16.04.1997 and
supplementary agreement dated 12.08.2005.
By judgment dated 10.10.2011, the learned Single
Judge of the Delhi High Court with reference to the
compromise decree and by specifically reproducing its distinct
clauses, expressed that the plaintiff had based it’s case upon
(i) infringement of trademark (ii) passing off and (iii) breach
of contractual obligations including the compromise decree
passed by the Madras High Court.
Admitting that “Indian Express” is the registered
trademark of the plaintiff; whereas, “New Indian Express” is
the registered trademark of the defendant no.1, with reference
to Section 28 of the Trade Marks Act, 1999 it was held that
there is no infringement of the trademark Indian Express by
the defendants on account of use of the trademark “New
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Indian Express” as Section 28 clearly provided, that where
two or more persons are registered proprietors of trademark
which are identical or nearly resemble each other, exclusive
right to use any of those trademarks shall not deemed to have
been acquired by anyone of them as against any other of those
persons merely by its registration.
As far as action of passing off is concerned, the Court
considered likelihood of the defendants being able to pass off
its goods and services as those of the plaintiff and the Single
Judge of the Delhi High Court concluded that the plaintiff has
no right to object to the advertisement published in the
defendants own newspaper when they themselves had
published similar advertisement in their newspapers outside
the southern States / Union Territories specified in the
agreement between the parties.
It is further held that the plaintiff has been carrying out
advertisement of “Indian Express” in the inhouse newspaper
published from southern States/Union Territories though they
were precluded from doing so in the wake of the agreement
and, therefore, it is inferred that if the advertisement of New
Indian Express Group in the Sunday Standard is to be taken as
passing off of the newspaper, “Sunday Standard” as the
newspaper belongs to “Indian Express Group”, it was difficult
to dispute that publication of advertisement of Indian Express
would amount to passing off the newspaper “Indian Express”
as a newspaper belonging to New Indian Express in southern
States. It is also held that the plaintiff by its acts and deeds
has waived its right by permitting the use of the expression
“New Indian Express” by defendants and therefore are now
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estopped from objecting to the publication in Sunday
Standard.
The said order being challenged in appeal is upheld by
the Division Bench on 22.11.2011 by recording that there was
no reason to interfere with the discretion exercised by the
Court of first instance, since the finding rendered was neither
arbitrary, capricious or perverse nor had the Court ignored
the principle of law regulating grant or refusing interlocutory
injunction.
44. Both the orders in our view carry very little relevance as
the order dated 10.10.2011 was passed while adjudicating the
interim application in a Civil Suit and it pronounced upon the
‘ ’
application for exemption against the use of NIE logo in the
masthead of its newspaper ‘Sunday Standard’ in Delhi and for
certain advertising agency correspondence. The adjudication
resulted into a finding that the advertising NIE in third party
media in outside five States was permissible as it is ancillary to
publication and the learned Single Judge did not take into
consideration the effect of the consent decree of the Madras
High Court and rather refused to deal with the contention of
the defendants that the remedy against the contravention of
the consent decree passed by the Madras High Court lies
before that Court.
As on date it is worth to note that this suit was stayed on
03.02.2015 under Section 124 of the Trade Marks Act and
was ultimately dismissed for non-prosecution on 06.05.2015.
Thus, the interim order passed by the learned Single Judge
which is in turn upheld by the Division Bench of the Delhi High
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Court has merged into final order, when the suit itself is
dismissed.
Since there was no propriety in restoring the suit at
subsequent point of time, we do not find that it defeats the
contention and the grounds raised by the Indian Express
Group in the suit filed before the Bombay High Court and the
interim application seeking an injunction on which the
impugned order is passed. It is well settled principle that once
the final order is passed, all the earlier interim orders merge
into the final order and the interim order ceased to exist.
45. The contention advanced that the above findings
rendered by the learned Single Judge would operate as res
judicata and that Justice R.I.Chagla, while granting injunction
in favour of the plaintiff, has failed to consider its effect is
without any merit. Mr. Khambata has invoked the
observations of the Apex Court in the case of Hope Plantations
14
Ltd. vs Taluk Land Board, Peermade & Anr. and on its
perusal, it is noted that the principle of res judicata, prevent
the parties to a judicial determination from litigating the same
question and it is a doctrine based on public policy and justice.
The embargo exists in the parties continuing in litigating when
the proceedings had attained finality and the parties are bound
by the judgment and estopped from questioning it. The
doctrine prohibits a party to litigate again on the same cause of
action nor does it allow them to litigate on any issue which
was necessary for decision in the earlier litigation.
This distinguishing line is, however, drawn by the
Hon ’ ble Apex Court while pronouncing upon the law on the
14 (1999) 5 SCC 590
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issue of res judicata, by holding that if an issue has been
decided in an earlier litigation again arises for determination
between the same parties in a suit based on a fresh cause of
action or where there is continuing cause of action, the
principle of res judicata may not be strictly applicable.
However, there can be no dispute about the fact that the
interim application is decided, the findings recorded are
merely prima facie and do not conclusively determine the lis
between the parties.
In State of Assam vs. Barak Upatyaka D.U. Karmachari
Sanstha (supra), the Apex Court has clearly rule thus :-
“21. A precedent is judicial decision containing a principle, which
forms an authoritative element termed as ratio decidendi. An
interim order which does not finally and conclusively decide an
issue cannot be a precedent. For reasons assigned in support of
such non-final interim order containing prima facie findings, are
only tentative. Any interim directions issued on the basis of such
prima facie findings are temporary arrangements to preserve the
status-quo till the matter is finally decided, to ensure that the
matter does not become either infructuous or a fait accompli before
the final hearing.”
Thus, in order to constitute res judicata there must be
final determination of the rights of the parties and this benefit
is not available to an interlocutory order and in the present
case the same applies to the order passed by the Delhi High
Court, which was an order passed on the interlocutory
application, which did not final determine the rights between
the parties.
46. In EPUB Singapore (supra) the contours of the principle
of the res judicata as ingredient in Section 11 of the Civil
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Procedure Code, 1908 received attention of the Apex Court in
the light of the existing precedents on the said point.
Recording that principle of res judicata is based on the
need of giving finality to the judicial decisions and principle
specifically stated being; once res judicata , it shall not be
adjudged again.
In simple terms it is a principle laying down that where
question of fact or question of law has been decided between
two parties in one suit or proceeding and the decision is final,
either because no appeal is taken up to higher Court or appeal
was dismissed or no appeal lies, neither party will be allowed
in future to file a suit or proceedings between the same party
to canvass the matter again.
This principle further elaborated in Sheodhan Singh vs
15
Daryao Kunwar to the effect that the condition which must
be satisfied before doctrine of res judicata can apply in a given
case and this necessitated the five conditions laid down,
“
prominent among it was highlighted as the matter directly
and substantially in issue in a subsequent suit must have been
”
heard and finally decided by the Court in the first suit.
“
The term heard and finally decided”clearly indicate the
finality and conclusiveness on the issue between the parties
i.e. it involves conscious adjudication of the issue on merits
and it is well settled that a plea of res judicata cannot be taken
aid of unless there is expression and opinion on the merits.
Res judicata cannot apply solely because the issue
previously come up before the Court as the doctrine will only
15 AIR 1966 SC 1332
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“ ”
apply where the issue is heard and finally decided on
merits through a conscious adjudication by the Court.
Thus, the perusal of the order of the learned Single
Judge passed as early as in 2011, when the suit was instituted
by Indian Express and an application for interim injunction is
filed, did not take into consideration the conspectus of the
dispute, which is placed before the learned Single Judge of the
Bombay High Court in the present suit. In any case, it is to be
noted that the Delhi High Court had no benefit of the
consideration of JAA or its termination and invoices filed in
support of advertising which are relied in fact covered the
period of between 1997 and 2009 and the same invoices are
relied upon to establish the permissible advertisements which
were issued in each other’s newspapers. Apart from this, even
that order has lost its efficacy in the light of the IPAB order
which has glossed over the finding of the learned Single Judge
that Express Publications Madurai was having PAN India
registration as IPAB order has restricted the registration only
to five States. Therefore, in our view the order passed by the
Delhi High Court in the suit instituted by the plaintiff do not in
any way restrict the scope of determination in the present suit
instituted by the Indian Express Group in the year 2025.
47. Today, the IPAB order forms the cornerstone of the
reliefs sought by Indian Express Group in the suit as well as
the interim application. It is noted that the Delhi High Court
had stayed the proceedings in the suit, in the wake of the
provisions of Section 124 of the Trade Marks Act, which
mandate stay of civil proceedings pending IPAB determination
of validity of registration and as per sub-section (4) of Section
124, the findings rendered to bind the Civil Court.
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The IPAB order dated 18.06.2015, passed on an
application filed by the ‘Indian Express Limited’ for
rectification of the impugned trademark of ‘New Indian
Express’ in respect of the trademark application in Class 16.
The order passed make a reference to the civil
proceedings between the parties, which culminated into
passing of a Decree and Judgment dated 16.04.1997 by the
Madras High Court on the basis of the terms of compromise
dated 05.02.1995 and 30.03.1997. The understanding between
the parties as referred in the order of IPAB record as below :-
“It would be suffice for us to state clearly and categorically that it is
incumbent on both the parties i.e. the applicant and respondent
nos. 1 and 2 to follow the terms and conditions of MOU/MOS dated
05.02.1995, 30.03.1997 and supplemental agreement dated
12.08.2005 incorporated in the judgment and decree of the Hon’ble
High Court of Madras in Civil Suit Nos. 1146 and 1147 of 1992 dated
16.04.1997 and Execution Petition No. 153 as stated earlier and to
”
scrupulously follow without any slightest violation.
In the wake of the aforesaid IPAB directed as below:
“5. We are also constrained to state and direct the Registrar of
Trade Mark, Chennai to restrict the use of the impugned trade
mark The New Indian Express" under No. 856018 only to the
above sald States namely Tamlinadu, Kerala, Karnataka,
Andhra Pradesh, Telungana and Orissa and the Union
Territories of Pondicherry, Andaman Nicobar, Lakshadweep
and Enam. In respect of other points that are agitated before us,
it is open to the parties to agitate the same either in suit filled by
the applicant and pending on the file of the Hon'ble Delhi High
Court or by initiating any proceedings before the appropriate
”
forum. The OPA is disposed of with the above directions ..
48. In light of Section 124 of the Trade Marks Act, 1999 , a
provision intended to prevent conflicting decisions when the
matter is pending before the Registrar, it is deemed
appropriate to stay the Civil Suit till those proceedings are
concluded. In terms of sub-section (4) of Section 124, the final
order made in any rectification proceedings referred to in sub-
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section (1) and (2) shall be binding upon the parties and the
Court shall dispose of the suit in conformity to such order,
insofar as it relates to the issue as to the validity of the
registration of the trademark.
49. The fate of the suit before the Delhi High Court even if it
was not dismissed for want of prosecution, would have been
sealed by the IPAB order as the declaration issued by it on
18.06.2015 would be binding on the parties and also on the
Court itself, particularly when the IPAB order is also based
upon the Memorandum of Understanding reached between the
parties and it would have bound the Court also.
Thus, we find merit in the submission of Mr. Khambata
that the IPAB order being passed, the scope of the arguments
advanced on behalf of the appellant is definitely constricted as
the order declared, that the appellant shall restrict its
operations only to five States and Union Territories.
50. The learned Single Judge, in impugned order, has rightly
positioned his emphasis on the IPAB order, by observing that
this order has clearly restricted the use of the impugned
trademark “ The New Indian Express ” to five southern States
and specified Union Territories and also restricted the use of
the trademark for ‘any purpose, including advertising,
promotion and events’ as this order is, according to the
learned Single Judge, was in consonance with the terms of the
MOS/ the consent decree.
51. The learned Single Judge has also applied the analogy
“ use of the mark ” by placing reliance upon Section 2(2)(b) and
2(2)(c) of the Trade Marks Act, 1999 to render a finding that
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the wide expansive understanding of use of a mark as defined
by the statute would include usage for promotion and
advertisement, which stands restricted to the five southern
States and specified Union Territories by the IPAB order.
At this juncture we would rely refer to the statutory
definition of “ use ” under the Trade Marks Act under Sections
2(2)(b) and 2(2)(c)(i), which read thus:
“Section 2 (2): In this Act unless the context otherwise
…
requires, any reference –( )
(b) to the use of a mark shall be construed as a
reference to the use of printed or other visual
representation of the mark;
(c) to the use of a mark, -
(i) In relation to goods, shall be construed as a
reference to the use of the mark upon, or in any physical
or in any relation whatsoever, to such goods;”
52. In Hardie Tradings (supra), what is the scope of the word
“use” in Section 46(1) was posed in the background that an
application for removal of a registered trademark is permitted
to be allowed under Section 46(1)(b), only if a continuous
period of five years or longer has elapsed upto the date of one
month prior to the date of application during which there was
no bona fide use by proprietor of the trademark. It was
contended by the appellant Hardie, that there was no non-use
of registered trade mark during said period and Addisons had
failed to plead or establish this.
It was urged on behalf of the respondent that the word
“use” means “actually putting the mark in the business and
utilizing the same for selling of the goods” and since there was
no use of trademark by Hardie and no efforts were taken to
manufacture the goods using the trademark since 1971, it
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must be therefore accepted that Hardie had abandoned the
trademark.
With reference to Section 2(2)(b), it is held by the Apex
Court that the use “may be other than physical; it may be in
any other relation to the goods” and observed, “We see no
reason to limit the user to use of the goods or to sell of goods
bearing trademark”.
The following observations of the Apex Court deserve
reproduction, being aptly applicable here :-
“43. In Hermes Trade Mark 1872 RPC 425, the registered
proprietor had inserted advertisements in which the
trademark appeared in relation to the watches it manufactured
in the annual trade publication. It was also in evidence that the
registered proprietor placed an order for parts of the watches
during the period of alleged non-use although the actual sale of
the watches took place subsequently. In this factual
background, the words, 'other relation' in an identical statutory
provision in the United Kingdom were construed to mean
"something other than actually being upon the goods or in
physical relation to them - that would cover the use of the
mark, ................, for example, in advertisements, in invoices, in
orders and so on".
“It was also said, the phrase 'in the course of trade' must be
wide enough to embrace the steps necessary for the production
of the goods as well as the actual placing of them on the market.
It was held that even though there was no use of the mark upon
or in physical relation to the "goods, but it was used in "other
relation", i.e. to say in non physical use.”

53. With the aforesaid precedent before us throwing light on
the ambit of word “use” and same phraseology being found in
the form of restrictions in Clause 18(iv) of the MOS “by any
use whatsoever” therefore deserve a broadest possible
meaning to be assigned and we have no hesitancy in holding
that it encompassed ‘Promotion and Advertising’. The rights
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61 J COMAPL-41053-25 final.doc
granted to the appellant were restricted to the territory, as
against the rights retained with “Indian Express” was clearly
set out in Clause 18(ii) by use of the following words:-
“In relation to any use whatsoever… unlimited in point of territory
or time”.
54. A comparison of the rights conferred on the two parties, as
per their own understanding being placed before the Madras
High Court, make the distinction very clear.
When the terms of MOS and supplemental MOS are
unambiguous and the parties understood it to be so, it is not
open for the Court to assign a meaning contrary to their
intention and understanding as we find that it is not
permissible to be done in a contract executed between the
parties and here we have a decree passed by the Competent
Court based on an understanding arrived at between the
parties, which according to us, bind them.
On clear reading of the Clauses of the MOS and the
supplemental MOS, one thing which emerges with prominence,
is the right retained by the “Express Group” when Clause 17
categorically provided “that Indian Express Newspaper
(Bombay) Limited and Traders Limited” shall be absolute
owners of their titles of newspapers and magazines (including
supplement) currently published or not i.e. even for its future
publications, with the emphasis on this right being available
for “whole of India”. In contrast the very said clause clearly
stipulating that the rivals, Manojkumar Sonthalia, Indian
Express (Madurai) shall have no claim in relation to what is
granted in favour of Indian Express Newspapers (Bombay)
Limited and Trading Limited with negative covenant being
imposed that they shall not any time “use” or “adopt” any of
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the said titles in any way or any titles similar or resembling
thereto” save and accept what is permitted to them in Clause
19. The understanding recorded in para 17, with the clear
choice of words, being unambiguous, conferring the permission
on Express Publication as set out in Clause 19 but at the same
time recognizing the ownership of Express Group is clearly
indicative of the restrictive user of the Madurai Group.
Clause 18 has again reinforced the intention of the
parties that the title “Indian Express” absolutely vests in
‘Indian Express Newspaper (Bombay) Limited’, however, in
respect of the five States and the Union Territories, Vivek
Goenka, NPBS, Indian Express Newspaper (Bombay) Limited
and Trading Limited or any corporation owned or controlled
by them was also restricted from using the title, directly or
indirectly (in relation to the print media) except the Financial
Express, the weekly supplements, or other periodicals. With
lot of clarity, Clause 18 conferred the title “Indian Express” on
Indian Express Newspapers (Bombay) Limited absolutely.
It is also clarified that the title included not only rights in
respect of publications of English language newspaper under
the name “Indian Express” but also in relation to any ‘use’
whatsoever, in relation to print media, electronic media or any
other medium whatsoever. The right conferred on “Indian
Express” was specifically made unlimited in point of territory
or time.
On the contrary, the right granted to Indian Express
Madurai, on account of the permission granted was restricted
only for publication of an English language daily newspaper in
the specified five States and Union Territories and “for no
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other purpose or any other area or territory in any use
whatsoever”.
Further Clause 19 of the MOS imposed additional
embargo by stating that Manojkumar Sonthalia, Indian
Express Madurai, Andhra Prabha Limited and Sterling
Newspaper shall not use the title Indian Express (i.e), at any
time anywhere but subject to Clause 20 Indian Express
Madurai Limited/NIEM was held entitled to publish an English
language daily by the name “New Indian Express”, but again
with condition attached with the expression “new” shall be in
the same line and same size as the words “Indian Express”
wherever the title appeared.
Another embargo is imposed by sub-clause (iv) of Clause
19, by providing that they shall not directly or indirectly used
the title “Indian Express” or any of its derivatives or any title
similar or resembling thereto at any time whatsoever provided
the restrictions against the use of the word ‘Express’ shall not
apply to the sections or supplements of “New Indian Express”,
and in this section or supplements the word ‘Indian’ shall not
be used alongside or otherwise with the word ‘Express’.
[
55. Reading of the MOS with the supplemental MOS make it
evidently clear that the rights and ownership of the title
conferred in Indian Express Group is unlimited both, on the
point of territory and time and the title included not only the
rights in respect of all publications of English Newspaper, but
also in relation to any use whatsoever, whether it is in relation
to print media or electronic media or any other medium
whatsoever.
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56. One striking feature is the incorporation of the condition
in sub-clause (v) of Clause 19 when New Indian Express
Madurai was permitted to request the Indian Express
Newspaper to take steps to restrain any publication or
publications which would infringe the title ‘Indian Express or
its derivatives’ but if within period of 15 days no cognizance
thereof is taken by the Indian Express Newspaper (Bombay)
Limited then it is authorized to adopt such proceedings, ‘on
behalf and in the name of Indian Express Newspaper
(Bombay) Limited’ to restrain and stop such publication.
The condition that the appellant shall to act in the name
of Express Group affirmed the ownership of Indian Express
Group on all variants of “Indian Express” including “New
Indian Express” as the right is conferred on it to institute any
proceedings to protect its title.
Even after the execution of the supplemental agreement,
this right is restricted in five southern States and specified
Union Territories if there is any infringement of the title “New
India Express” in the area of its operations but this right is
also concurrently retained by the Indian Express Group and if
any infringement occur outside the five southern States and
the Union Territories i.e. anywhere in India, the right vests
only in “Indian Express Group”.
The above is a clear indication of the absolute right and
ownership of “Indian Express” being subsisting in “Indian
Express (P) Limited”.
Thus, it can be seen that the source of right conferred on
the appellant flows from the MOS and supplemental MOS and
definitely it can not permitted to travel beyond its source.
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57. With the wide phrased terminology being applied in the
MOS as well as the supplemental MOS and in the background
that the Indian Express is accepted as a well-known mark of
the Indian Express Group, and with indication that at any
point of time the Indian Express Group traded with its well-
known mark but rather reading of the MOS and supplemental
MOS, based upon the understanding between the parties make
it adequately clear that it always intended to protect its “well-
known mark” across of classes of goods and services and
across the whole of India.
The use of the word “New Indian Express” by the
appellant to conduct some sponsored commercial events
though claimed to be stand-alone events in Mumbai from
which it definitely generated revenue, thus runs contrary to
the understanding arrived between the parties and with the
Indian Express Group continuing to exercise its hold over the
well-known mark. The appellant is permitted to use the “The
New Indian Express” only for publication of English language
daily newspaper in five southern States and Union Territories
and for no other purpose or for any other area or territory for
any other use whatsoever.
The wide use of the terms “any use whatsoever” is
intended to cover every mode of exploitation of the mark and
therefore, the event “New Indian Express Mumbai Dialogue”
conducted by the appellant with independent sponsors is
revenue generation event and offer sufficient justification for
being objected by the owner of the title ‘Indian Express’ who
has permitted to use of the mark “New Indian Express” by the
appellant on specific understanding being reached and purely
as business arrangement.
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Though it is the stand of Mr. Andhyarujina that even his
client has understood the terms of the MOS and supplemental
MOS and has lived upto it and that there is no embargo in
promoting/advertising its publications outside the five States
and Union Territories, this argument failed to appeal to us.
The terminology used in the MOS clearly restricting the
“use” of the title “New Indian Express” which was restricted
only for publications, in our view do not admit ‘advertisement
or promotion’ outside the five southern States and the Union
Territories. Even the IPAB order dated 18.06.2015 had made
it evidently clear that the appellant shall restrict itself only to
five southern States for its area of operation including the use
of the mark “New India Express”.
58. The registration of the mark by the Registrar of Trade
Marks do not confer any right on the appellant as while
obtaining the registration, the restriction imposed upon its use
by the MOS and the supplemental MOS which received an
imprimatur from the Madras High Court was not brought to
the notice of Registrar. Now, when IPAB order has attained
finality, as it is not challenged by appeal, it binds the appellant
and though it is attempted to canvas before us that this order
is only limited to Section 128, the statutory benefit and the
common law rights accruing from the registration survives
PAN India, we do not find merit in this submission. The Apex
Court in S. Syed Mohideen (supra) in para 33 has held thus:
“33. Fourthly, it is also a well-settled principle of law in the
field of the trade marks that the registration merely recognises
the rights which are already pre-existing in common law and
does not create any rights. This has been explained by the
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Division Bench of the Delhi High Court in Century Traders v.
Roshan Val Duggar & Co. in the following words:
"10. 16…. First is the question of use of the trade mark. Use
plays an all – important part. A trader acquires a right of
property in a distinctive mark merely by using it upon or in
connection with his goods irrespective of the length of such
user and the extent of his trade. The trader who adopts such a
mark is entitled to protection directly the article having
assumed a vendible character is launched upon the market.
Registration under the statute does not confer any new right to
the mark claimed or any greater rights than what already
existed at common law and at equity without registration. It
does, however, facilitate a remedy which may be enforced and
obtained throughout 'the State and it established the record of
facts affecting the right to the mark. Registration itself does
not create a trade mark. The trade mark exists independently
of the registration which merely affords further protection
under the statute. Common law rights are left wholly
unaffected. (emphasis supplied)
33.1. The same view is expressed by the Bombay High Court in
Sunder Parmanand Lalwani v. Caltex (India) Ltd. in which it
has been held vide AIR para 32 as follows:
"1. A proprietary right in a mark can be ['Iruttukadai Halwa'l
obtained in a number of ways. The mark can be originated by a
person, or it can be subsequently acquired by him from
somebody else. Our Trade Marks law is based on the English
Trade Marks law and the English Acts. The first Trade Marks
Act in England was passed in 1875. Even prior thereto, it was
firmly established in England that a trader acquired a right of
property in a distinctive mark merely by using it upon or in
connection with goods irrespective of the length of such user
and the extent of his trade, and that he was entitled to protect
such right of property by appropriate proceedings by way of
injunction in a court of law. Then came the English Trade
Marks Act of 1875, which was substituted later by later Acts.
The English Acts enabled registration of a new mark not till
then used with the like consequences which a distinctive mark
had prior to the passing of the Acts. The effect of the relevant
provision of the English Acts was that registration of a trade
mark would be deemed to be equivalent to public user of such
mark. Prior to the Acts, one could become a proprietor of a
trade mark only by user, but after the passing of the Act of
1875, one could become a proprietor either by user or by
registering the mark even prior to its user. He could do the
latter after complying with the other requirements of the Act,
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68 J COMAPL-41053-25 final.doc
including the filing of a declaration of his intention to use such
mark. See observations of Llyod Jacob, J. in Vitamins Ltd.'s
Application, In re at RPC p. 12, and particularly the following:
….A proprietary right in a mark sought to be registered can be
obtained in a number of ways. The mark can be originated by a
person or can be acquired, but in all cases it is necessary that
the person putting forward the application should be in
possession of some proprietary right which, if questioned, can
be substantiated.
2. Law in India under our present Act is similar."
(emphasis supplied)
33.2. We uphold the said view which has been followed and
relied upon by the courts in India over a long time. The said
views emanating from the courts in India clearly speak in one
voice, which is, that the rights in common law can be acquired
by way of use and the registration rights were introduced later
which made the rights granted under the law equivalent to the
public user of such mark. Thus, we hold that registration is
merely a recognition of the rights pre-existing in common law
and in case of conflict between the two registered proprietors,
the evaluation of the better rights in common law is essential
as the common law rights would enable the court to determine
whose rights between the two registered proprietors are better
and superior in common law which have been recognised in
the form of the registration by the Act.”
59. The registration is thus merely a recognition of the pre-
existing rights in common law. In the facts of the case it was
held that in case of conflict between the two registered
proprietors, the evaluation of better rights in common law is
essential as common law rights would enable the Court to
determine whose rights between two registered proprietor is
better and superior in common law which have been
recognised in the form of registration by the Act.
The registration only recognizes pre-existing common
law use and it do not confer the right. Appellant had never
used the mark independently and its use flow from MOS and
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69 J COMAPL-41053-25 final.doc
therefore, its rights cannot control beyond nor operate in
derogation of its terms.
60. The submissions of Mr. Andhyarujina that all the while
Indian Express Group had maintained a stoic silence, when
advertisements were issued by each of the party in each
other’s publications and therefore it amounts to acquiescence,
we must note that the right of the appellant flow from a
consent decree and if it desired to have any variation or
modification of the said decree, it ought to have approached
the Court which recorded the compromise. A consent decree
cannot be varied by conduct of the parties and acquiescence
definitely implies a positive act and mere inaction would not
amount to acquiescence.
In Power Control Appliances vs. Sumeet Machines
16
Pvt. Limited , acquiescence is described thus:
“26. Acquiescence is sitting by, when another is invading the
rights and spending money on it. It is a course of conduct
inconsistent with the claim for exclusive rights in a trade mark,
trade name etc. It implies positive acts; not merely silence or
inaction such as is involved in laches. In Harcourt v. White Sr.
John Romilly said: "It is important to distinguish mere
negligence and acquiescence." Therefore, acquiescence is one
facet of delay. If the plaintiff stood by knowingly and let the
defendants build up an important trade until it had become
necessary to crush it, then the plaintiffs would be stopped by
their acquiescence. If the acquiescence in the infringement
amounts to consent, it will be a complete defence as was laid
down in Mouson (J.G.) & Co. v. Boehm. The acquiescence must
be such as to lead to the inference of a licence sufficient to
create a new right in the defendant as was laid down in Rodgers
v. Nowill.”
16 (1994) 2 SCC 448
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61. In the facts before us, we do find that the above
observations fit into the facts at all, as the while the Indian
Express Group contested the appellant’s registration as it
approached the IPAB; it filed the proceedings before the
Bombay High Court and Delhi High Court and we can safely
infer that it continue to assert its rights and for this reason the
foundation of acquiescence and latches definitely collapses.
There is no voluntary relinquishment on the part of the Indian
Express Group and in fact what we find is if the use is found to
be dishonest, then delay or acquiescence is of no relevance.
The appellant being party to the MOS and supplemental MOS
and the same being based on consent, definitely cannot claim
ignorance of the rights that are conveyed on it and the rights
that are continued by the Indian Express Group. We therefore,
do not find a plea of acquiescence or delay to be sustainable
and rather we have noted that when IPAB called the appellant
to scrupulously follow the restrictions without slightest
violation, it still continued with its ventures, on an assumption
that it was entitled to do so.
Indian Express Group never acknowledged the conduct
of the events for promotion though as far as advertisements
are concerned, since there was a JAA which was executed by
the parties recording consensual terms but even it was
terminated with effect from 20.01.2011 and therefore, it
cannot be definitely construed as open ended or permanent
consent conferred on the appellant for PAN India use. After
2011, since no such arrangement continued and particularly
with the IPAB order, it is imperative for the appellant to
restrict itself to the territories assigned to it and strictly abide
by the MOS and supplemental MOS.
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62. Applying the test of Wander Ltd. & Anr. vs Antox India
P. Ltd. (supra) we do not find any perversity or patent error or
in the order passed by the learned Single Judge and therefore,
by upholding the order we dismiss the present appeal.
The Interim Application stands disposed of.
(MANJUSHA DESHPANDE, J) ( BHARATI DANGRE, J.)
Andurkar

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