The Bombay High Court has asserted that under the Memorandum of Settlement (MOS) dated February 05, 1995 and the supplemental agreement dated August 12, 2005, “Indian Express” and its rights in relation to “any use whatsoever” vested absolutely in the Indian Express Group for the whole of India and without limitation of time, whereas the appellant was only a restricted permitted user of “New Indian Express” for publication of an English language daily newspaper within the specified five States and Union Territories and for no other purpose, area or territory.
The Court explained that the expression “for any use whatsoever” must be given its broad meaning and includes advertisement, promotion and sponsored events. The appellant’s conduct of the “New Indian Express – Mumbai Dialogue” event in Mumbai was therefore outside the scope of its permitted use and prima facie in breach of the MOS, supplemental agreement and the binding IPAB order restricting use of the mark.
The Court asserted that Registration of the mark did not confer independent rights beyond the settlement framework, and the plea of acquiescence could not override either the consent decree or the continued assertion of rights by the plaintiff. Accordingly, applying the appellate standard in Wander Ltd. v. Antox India P. Ltd. [1990 Supple (1) SCC 727], the Court held that no perversity, patent error, arbitrariness or capriciousness was shown in the order of the learned Single Judge granting interim injunction.
The Division Bench comprising Justice Bharati Dangre and Justice Manjusha Deshpande observed that the MOS and the supplemental agreement, having been accepted by the Madras High Court, were binding and had to be construed according to their plain terms. On a clear reading of Clauses 17, 18 and 19, the Bench found that the “Indian Express” group retained absolute ownership in the title “Indian Express” for the whole of India, in relation not only to publication of newspapers but also to “any use whatsoever” in print media, electronic media or any other medium whatsoever, without limitation of territory or time. In contrast, the appellant’s right was only a restricted and permitted use of “New Indian Express” for publication of an English language daily newspaper in the specified five States and Union Territories and for no other purpose or any other area or territory for any use whatsoever.
The Bench rejected the appellant’s contention that promotion or advertisement outside the five States and Union Territories was permissible. Relying upon Sections 2(2)(b) and 2(2)(c)(i) of the Trade Marks Act, 1999 and the decision in Hardie Trading Ltd. v. Addisons Paints and Chemicals Ltd. [(2003) 11 SCC 92], the Bench held that the word “use” must receive a broad construction and includes use in advertisements, invoices, orders and other non-physical relation to goods. Therefore, the phrase “for any use whatsoever” in Clause 18(iv) of the MOS was held to encompass promotion and advertising. The event “New Indian Express Mumbai Dialogue”, conducted with independent sponsors in Mumbai, was treated as a revenue generating event outside the contractually permitted territory and beyond the source of the appellant’s rights.
The Bench further held that the IPAB order dated June 18, 2015 formed the cornerstone of the relief sought and was binding in view of Section 124(4) of the Trade Marks Act, 1999. The IPAB had categorically directed restriction of the use of “The New Indian Express” to the specified States and Union Territories and required adherence to the MOS and supplemental agreement. The Bench accepted the finding of the Single Judge that this restriction covered use for any purpose, including advertising, promotion and events. It also rejected the appellant’s argument based on registration, holding that registration merely recognises pre-existing common law rights and does not create rights beyond the MOS, especially where the appellant’s use itself flowed from the settlement arrangement.
On acquiescence, waiver and prior interim orders of the Bombay and Delhi High Courts, the Bench held that no benefit accrued to the appellant. Interim orders do not finally determine rights and cannot operate as res judicata. The Bench observed that the earlier Delhi proceedings were stayed under Section 124 and later dismissed for non-prosecution, and therefore the interim order lost efficacy. As to acquiescence, the Bench held that a consent decree cannot be varied by conduct of parties; if any variation was sought, the proper course was to approach the Court which recorded the compromise. Mere inaction does not amount to acquiescence, and in any event the plaintiff had continuously asserted its rights by contesting registration and initiating proceedings. The Joint Advertisement Agreement was temporary, revocable, and terminated in 2011, and could not be construed as permanent consent for pan-India use.
Briefly, the appeal arose from the order dated November 13, 2025 passed by the Single Judge allowing the plaintiff’s interim application and granting injunction against the defendant from acting in breach of the Memorandum of Settlement dated February 05, 1995, recorded as a decree dated April 16, 1997 by the Madras High Court, and the supplemental agreement dated August 12, 2005. The dispute centred on the interpretation of the MOS and supplemental agreement, under which the plaintiff contended that the defendant was only a permitted user of “New Indian Express” in the specified five States and Union Territories, whereas the defendant claimed proprietary rights in the mark and asserted that it was not restrained from promoting its publication outside those territories. The immediate trigger was the defendant’s promotion of an event in Mumbai styled as “The New Indian Express – Mumbai Dialogue” on September 20, 2024, which the plaintiff alleged was in breach of Clauses 17, 18, 19 and 20 of the MOS and the essence of both agreements.
The background canvases the settlement between the branches of the Ramnath Goenka family, resulting in the MOS before the Madras High Court. Clauses 17 to 21 of the MOS formed the core of the controversy. Clause 17 declared Indian Express Newspapers (Bombay) Limited and Traders Limited to be the absolute owners of their registered titles for the whole of India. Clause 18 provided that the title “Indian Express” vested absolutely in Indian Express Newspapers (Bombay) Limited and that Indian Express (Madurai) Limited was permitted use of the expression “New Indian Express” only for publication of an English language daily newspaper in the specified five States and Union Territories and for no other purpose or any other area or territory for any use whatsoever. Clause 19 imposed further restrictions while permitting publication of an English language daily by the name “New Indian Express”, and Clause 22 recorded payment of non-competing and forbearance capital fee. The supplemental agreement relaxed certain restrictions, including use of “The New Indian Express” on the internet for dissemination of news, but clarified that there was no right to use the title for Television or Radio.
The parties had also entered into a Joint Advertisement Agreement after the settlement, but that arrangement was terminated with effect from January 20, 2011. Further, in rectification proceedings, the IPAB by order dated June 18, 2015 directed that the use of the impugned trademark “The New Indian Express” be restricted only to the specified southern States and Union Territories and required the parties to scrupulously follow the terms of the MOS, the 1997 modification, and the supplemental agreement without any slightest violation.
