<\/p>\n
In October this year, the Bombay High Court passed its decision in the\u00a0case between The Indian Express Limited and\u00a0Chandran Prakash Shivhare, the publisher and distributor of a journal called “Indian Express” filed before the Bombay High Court in the year 2010, to seek an injunction against the Defendant, and to restrain them from using \u00a0the title \u2018Indian Express\u2019. The crux of this case was whether a registered trademark could be infringed by the use of the identical mark which had been registered by the Registrar of Newspapers for India (RNI) under the Press and Registration of Books Act, 1867 (the \u2018Press Act\u2019). The judge passed a decision in favour of Plaintiff, declaring that the Defendants had infringed the registered trademark of the Plaintiff and thus restricting the defendant from using the title, ‘Indian Express’.<\/p>\n
The Plaintiff in this case was the \u2018Indian Express\u2019 newspaper which is published in English as well as regional languages. The name of the newspaper has been registered under Class 16 of the Trademarks Act in both English and Devnagari, as well as with the RNI. The Plaintiff’s newspaper enjoys widespread publication across most cities in Madhya Pradesh, except<\/p>\n
Morena. While the Defendant was publishing a journal under the name ‘Indian Express’\u00a0which was circulated in Morena, Madhya Pradesh. The journal was written in Devnagari script and had a title registration of \u2018Indian Express\u2019 in Devnagari script with the RNI, only and not under the Trademark Act.<\/p>\n
The case focused mainly on three issues:<\/p>\n
Firstly, whether the registration under the Trademark Act prevails over the Press Act or should the two be read together to ascertain the bonafide prior user. The Court decided the first issue in favour of the Plaintiff, citing the registration date of 26th<\/sup> May 2009, which was a year before the Defendant’s registration. According to the Court, the mark fulfilled the requirements to be deemed a well-known trademark which provides protection against marks or titles which are considered a reproduction, imitation or translation of that mark. The Court observed that the Defendant\u2019s use of the mark \u201cIndian Express” would necessarily amount to trademark infringement, irrespective of the Plaintiffs\u2019 failure to get registration of the newspaper\u2019s Devnagari title.<\/p>\n Secondly, the Defendant claimed that they were not infringing the mark as the \u201cIndian Express” newspapers were not being published in Morena, Madhya Pradesh which is where the Defendant published their journal. The Court held that even though the newspaper was not being printed there, the reputation of the mark could be associated with use of the paper, irrespective of geographical limitations, as its online news articles could be accessed anywhere.<\/p>\n Thirdly, the Defendant claimed that they used the mark \u201cIndian Express\u201d in a different language and the Plaintiff did not have registration under the Press Act at the time, when the case was instituted. However the Plaintiff\u2019s use of the words “Indian Express” was not in another language from what was used, the Court said that the Defendant was not using the Hindi script for the words \u2018Indian\u2019 and \u2018Express\u2019. The Plaintiff claimed that the Defendant\u2019s argument was not valid as the use of the mark came under the scope of \u2018transliteration’, which is when a word is re-written using a different script. The Court decided against the Defendants on this argument also and decided that the use of the title “Indian Express” in the Devnagari script is an infringement of the Plaintiff’s registered trademarks.<\/p>\n This judgment ascertains the fact that there is a trademark infringement even if, the impugned mark that is used is not exactly the same as that of the trademark owner, but uses the same mark written in another script, if not in another language. Moreover, the Plaintiff\u2019s mark had acquired a well-known status and enjoyed a high level of trademark protection. The Defendant failed badly, trying to cash in from the hard earned and long standing reputation of Plaintiff\u2019s mark \u2013\u201cIndian Express\u201d.<\/p>\n <\/p>\n Authored by Ryan Mendonca<\/p>\n Contributed by\u00a0Trade mark<\/a>\u00a0Attorneys of BananaIP in India<\/p>\n For information on\u00a0Trade mark<\/a>\u00a0law in India, write to\u00a0contact@bananaip.com<\/a><\/p>\n