A consent decree defining territorial trademark usage cannot be varied by party conduct or implied acquiescence.

In brief

The question

1. Whether the Defendant's use of the trademark "The New Indian Express" for commercial events outside the five southern states constitutes a breach of the consent decree and trademark infringement

The court held

The Court dismissed the appeal and upheld the interim injunction granted by the Single Judge. It held that the Defendant enjoyed no proprietary right in "The New Indian Express" beyond the permitted territorial scope of the consent decree

It also directed

The specific holding affirmed that conducting commercial events like "Mumbai Dialogues" outside the five southern states violated the terms of the MOS and Supplemental MOS. The appellate court found no perversity or error of law in the Single Judge’s interpretation of "use" or the binding nature of the IPAB order

01Facts

The dispute arises from a family settlement (Memorandum of Settlement “MOS” dated 05.02.1995 and Supplemental Agreement dated 12.08.2005) between branches of the Goenka family

p. 2, 4

These agreements, recorded as a decree by the Madras High Court, divided the "Indian Express" business geographically. The Plaintiff (Respondent) retained absolute ownership of the "Indian Express" trademark for all of India, while the Defendant (Appellant) was granted restricted "permitted user" of the title "The New Indian Express" only for publishing an English daily within five southern states and specific Union Territories

¶ 5, 19, 54

In September 2024, the Defendant organized a commercial event titled "The New Indian Express - Mumbai Dialogue" in Mumbai

p. 6

The Plaintiff filed a suit for infringement and passing off, alleging breach of the MOS geographical restrictions

p. 7

The Single Judge granted an interim injunction against the Defendant, which was challenged in this appeal

p. 21, 38

02Issues

i.1. Whether the Defendant's use of the trademark "The New Indian Express" for commercial events outside the five southern states constitutes a breach of the consent decree and trademark infringement

p. 11, 23

ii.2. Whether the Plaintiff had acquiesced to the Defendant’s PAN-India use of the mark due to previous advertisements and shared history

p. 15, 69

iii.3. Whether the IPAB order dated 18.06.2015, which restricted the Defendant’s trademark registration to specified territories, is binding on the Civil Court

p. 31, 57

03Law Applied

The court applied Section 2(2)(b) and 2(2)(c)(i) of the Trade Marks Act, 1999, defining "use" broadly to include non-physical use in advertisements and promotion

p. 59

It relied on Hardie Trading Ltd. v. Addisons Paints & Chemicals Ltd., establishing that "use" encompasses steps prior to marketing, such as advertisements

pp. 59-60

Regarding consent decrees, it applied Rama Narang v. Ramesh Narang, holding that a compromise decree is a command and contract and must be strictly construed

¶ 22

Section 124(4) of the Trade Marks Act was applied regarding the binding nature of Intellectual Property Appellate Board (IPAB) orders on civil courts

¶ 25, 48

On acquiescence, the court followed Power Control Appliances v. Sumeet Machines Pvt. Ltd., stating it requires positive acts inconsistent with exclusive rights, not mere silence

¶ 60

Provisions in the judgment · 8 · Linked ones open on LawLens

Trade Marks Act, 1999 Section 2 Section 11 Section 16 Section 28 Section 29 Section 46 Section 124

Code of Civil Procedure, 1908 Section 11

04Reasoning

The court reasoned that the MOS and Supplemental Agreement clearly partitioned proprietary rights, vesting absolute ownership of "Indian Express" in the Plaintiff while granting only a "permitted user" to the Defendant for a "single defined activity" (English daily) within a "defined geography"

p. 30, 62

The court rejected the Defendant’s argument that "promotion" was separate from "publication," holding that the statutory definition of "use" and the negative covenants in Clause 18(iv) of the MOS—"for no other purpose... or any use whatsoever"—explicitly prohibited commercial events in Mumbai

p. 65

The court noted that the IPAB’s 2015 order had already restricted the Defendant’s registration to southern states, and under Section 124(4), this determination was binding

p. 57, 58

The plea of acquiescence failed because the Plaintiff had consistently litigated to protect the mark, and previous joint advertisements were governed by a "Joint Advertisement Agreement" (JAA) that was terminated in 2011, revoking any temporary permission for extra-territorial presence

p. 37, 70