Summary
In the case of The Indian Express P Ltd vs Express Publications (Madurai) Pvt Ltd, the Bombay High Court passed an interim order after interpreting a consent decree recorded in 1997 and a supplemental agreement of 2005. The Court held that Express Publications’ use of the title “The New Indian Express” was contractually limited to specific territories and purposes, and restrained its use beyond those limits.
Indian Express Trademark Ownership and Permitted Use
In 1995, a family and business dispute over control of the Indian Express Group led to a settlement between the two branches of the family. The terms of the Memorandum of Settlement were recorded as a consent decree by the Madras High Court in 1997. A Supplemental Agreement was recorded in 2005.
Under the settlement:
- The Plaintiff, Indian Express (P) Ltd, retained ownership of the title and trademark “Indian Express”.
- The Defendant, Express Publications (Madurai) Pvt Ltd, was permitted to use the derivative title “The New Indian Express” to publish an English-language daily newspaper in Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa, and the Union Territories of Pondicherry, Enam, Andaman and Nicobar Islands, and Lakshadweep.
The Defendant was not permitted to use the title for any other purpose or in any other territory.
In 2024, the Defendant organised an event in Mumbai under the banner “The New Indian Express” and used the title in related promotional material. The Plaintiff filed a suit for trademark infringement and sought interim relief.
Questions Before the Court
- Whether the Defendant’s use of “The New Indian Express” for events outside the permitted territory breached the consent decree.
- Whether the Defendant, as a permitted user, could assert rights beyond those agreed under the settlement.
- Whether the Plaintiff was entitled to an interim injunction based on unauthorised use of its trademark.
Arguments Presented By the Parties
Plaintiff:
The Plaintiff said that it owned the trademark “Indian Express” and had only permitted limited use of the derivative title “The New Indian Express”. It submitted that the Defendant’s use was restricted to publishing a daily newspaper in the five southern states and specified Union Territories. It stated that the Defendant was not allowed to use the title for any other purpose or in any other region. It referred to Clauses 17, 18, and 19 of the Memorandum of Settlement and Clause 8 of the Supplemental Agreement. The Plaintiff said that the Defendant could not claim ownership, goodwill, or rights in the permitted title beyond what was agreed.
Defendant:
The Defendant said that the agreements did not stop it from promoting its publication outside the five states and Union Territories. It submitted that both parties had advertised across India using their respective titles and logos. It claimed that the Plaintiff had allowed such use over time and had given up its right to object. The Defendant relied on past conduct and previous court orders to support its position.
Court’s Analysis
Interpretation of the Consent Decree and Scope of Use
The court said that the consent decree and the supplemental agreement were binding and governed the relationship between the parties. It held that the Plaintiff owned the trademark “Indian Express” and that the Defendant was only permitted to use “The New Indian Express” under specific conditions. It referred to Clause 18(iv) of the Memorandum of Settlement and said that the permitted use was limited to publishing a daily newspaper in Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa, and certain Union Territories. It said that Clause 8 of the Supplemental Agreement allowed the Defendant to use the title for online dissemination of news but not for use on television or radio.
Additionally, the court said that a person using a trademark with permission under an agreement could not use it outside the terms agreed. It said that the Defendant could not claim any proprietary right or goodwill in the permitted title. It rejected the Defendant’s claim that the Plaintiff had allowed broader use through conduct. It further said that rights under a consent decree could not be changed without formal modification.
Findings
The court held that the Defendant’s use of “The New Indian Express” in Mumbai for an event breached the terms of the consent decree. It said that the Plaintiff had made out a prima facie case and that interim protection was required to prevent further unauthorised use. It restrained the Defendant from using the title outside the permitted territory and for any purpose not allowed under the agreements.
Case Citation
The Indian Express P Ltd vs Express Publications (Madurai) Pvt Ltd, IAL No. 31555 of 2024 in COMM IPR Suit (L) No. 31230 of 2024, Bombay High Court, decided on 13 November 2025.
Indian Kanoon Link: http://indiankanoon.org/doc/72934444/ (Visited on 22 December 2025)
Disclaimer
This case blog is based on the author’s understanding of the judgment. Understandings and opinions of others may differ. An AI application was used to generate parts of this case blog. Views are personal.