The Territoriality of Truth: Bombay High Court Restrains "New Indian Express" from Promotional Events Outside Permitted States, Defining the Broad Scope of Trademark "Use" and the Finality of Family Settlement Decrees.

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Case: Express Publications Mudurai Pvt Ltd v. The Indian Express P Ltd
Court: Bombay High Court
Date: 15-06-2026
Law: Trade Marks Act, Companies Act, Code of Civil Procedure.

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In the high-stakes world of Indian media, few names carry as much historical weight as the "Indian Express". Beyond the headlines, however, lies a complex legal architecture born from a family schism following the death of the legendary Shri Ramnath Goenka. A recent judgment by the Bombay High Court in the dispute between the Mumbai-based Indian Express (P) Ltd. and the Madurai-based Express Publications (Madurai) Pvt. Ltd. offers a masterclass in trademark law, the sanctity of consent decrees, and the expansive definition of commercial "use".

The conflict centered on whether the Madurai group, permitted to use the title "New Indian Express" in specific Southern states, could host promotional events like the "Mumbai Dialogues" in territories reserved for the Mumbai group. The court’s refusal to allow this expansion provides several critical insights for legal practitioners and corporate strategists alike.

1. The Absolute Sanctity of a Consent Decree

One of the most impactful takeaways is the court's treatment of the 1995 Memorandum of Settlement (MOS). Because this settlement was recorded as a decree by the Madras High Court, it transitioned from a mere private contract to a judicial command. The court emphasized that a consent decree must be construed strictly according to its plain terms. The appellant’s attempt to argue that their conduct over the years had "modified" the agreement was met with a firm judicial rebuff.

"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."

This reinforces the idea that in family-cum-corporate settlements, the written word of a decree is final. If a party desires a variation, they must approach the court that recorded the compromise rather than relying on the other party's "stoic silence".

2. The Expansive Definition of Trademark "Use"

The judgment delves deep into what constitutes the "use" of a trademark. The appellant argued that hosting a promotional event or an awards ceremony was not the same as "publishing a newspaper" and thus did not violate the territorial restrictions of the MOS. The court, however, applied a broad statutory interpretation of Section 2(2) of the Trade Marks Act, 1999.

The court held that "use" is not limited to the physical sale of goods. It encompasses any visual representation of the mark in any relation whatsoever to the goods, including advertisements, invoices, and promotional events. By hosting the "Mumbai Dialogues", the Madurai group was effectively "using" the mark in a forbidden territory, regardless of whether a newspaper was physically sold there.

3. Registration is a Recognition, Not a Creation of Rights

In a counter-intuitive twist for those who view trademark registration as the ultimate shield, the court clarified that registration does not grant a "new" right that overrides common law or prior contracts. The appellant pointed to their registration of the "New Indian Express" label as proof of their independent right. The court, citing the Supreme Court in S. Syed Mohideen, reminded us that registration merely recognizes pre-existing common law rights.

"Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute."

In this case, the appellant's right to use the mark flowed entirely from the "permissive user" status granted in the MOS. They could not use the statute to "travel beyond the source" of their original right.

4. The High Bar for Acquiescence and Waiver

The appellant argued that because the Mumbai group had published their advertisements for years and accepted "complimentary copies", they had acquiesced to the Madurai group's pan-India presence. The court rejected this, noting that the Mumbai group had been actively litigating the issue in various forums, including the Intellectual Property Appellate Board (IPAB).

For acquiescence to be a valid defense, there must be a "positive act of encouragement" that leads the infringer to change their position. Mere failure to sue immediately, or maintaining a business relationship under a separate Joint Advertisement Agreement, does not constitute a waiver of fundamental proprietary rights, especially when the use is deemed "dishonest" or in knowing violation of a decree.

5. The Binding Power of Rectification Proceedings

Finally, the judgment highlights the procedural teeth of Section 124 of the Trade Marks Act. The IPAB had previously restricted the appellant’s trademark registration to the five Southern states. The High Court held that under Section 124(4), such findings by the IPAB (or now the High Court in its original jurisdiction) are binding on the Civil Court. This creates a streamlined hierarchy where the specialized determination of a mark's validity and scope dictates the outcome of broader civil suits for infringement.

This judgment serves as a stern reminder that in the realm of intellectual property, legacy is protected not just by the strength of a brand, but by the rigorous enforcement of the legal boundaries drawn during corporate divorces. For the "Indian Express" groups, the map remains divided, and the "use" of a name remains a strictly territorial privilege.