In October this year, the Bombay High Court passed its decision in the case between The Indian Express Limited and Chandran 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  the title ‘Indian Express’. 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 ‘Press Act’). 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’.

The Plaintiff in this case was the ‘Indian Express’ 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

Morena. While the Defendant was publishing a journal under the name ‘Indian Express’ which was circulated in Morena, Madhya Pradesh. The journal was written in Devnagari script and had a title registration of ‘Indian Express’ in Devnagari script with the RNI, only and not under the Trademark Act.

The case focused mainly on three issues:

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 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’s use of the mark “Indian Express” would necessarily amount to trademark infringement, irrespective of the Plaintiffs’ failure to get registration of the newspaper’s Devnagari title.

Secondly, the Defendant claimed that they were not infringing the mark as the “Indian 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.

Thirdly, the Defendant claimed that they used the mark “Indian Express” 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’s 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 ‘Indian’ and ‘Express’. The Plaintiff claimed that the Defendant’s argument was not valid as the use of the mark came under the scope of ‘transliteration’, 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.

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’s 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’s mark –“Indian Express”.

 

Authored by Ryan Mendonca

Contributed by Trade mark Attorneys of BananaIP in India

For information on Trade mark law in India, write to contact@bananaip.com

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