INDIAN EXPRESS LIMITED Vs. EXPRESS PUBLICATIONS MADURAI LIMITED

JUDGEMENT

(1.) Indian Express Newspapers (Bombay) Limited, which later came to be named as Indian Express Newspapers (Mumbai) Limited, founded by late Shri Ramnath Goenka, was publishing a number of newspapers, including its flagship newspaper "Indian Express". After death of Shri Ramnath Goenka on 05th October, 1991, there were numerous litigations amongst his heirs, including Shri Viveck Goenka, Manoj Kumar Sonthalia and Smt Saroj Goenka. A settlement dated 05th February, 1995 was reached between (a) group of Shri Viveck Goenka, (b) group of Shri Manoj Kumar Sonthalia and (c) group of Smt Saroj Goenka. A decree dated 16th April, 1997 was passed by Madras High Court in terms of the settlement. This settlement was modified by a supplementary agreement dated 12th August, 2005. Under clause 17 of the compromise decree, the plaintiff became the absolute owner of the registered titles of the newspapers and magazines which it was publishing and defendant No. 1 was not to use or adopt any of those titles, except to the extent provided in clause 19 of the decree. Under clause 18 of the decree, the title "Indian Express" came to be vested solely in the plaintiff, but, it was not to use this aforesaid title in five southern States, i.e., Tamil Nadu, Kerala, Karnataka, Andhra Pradesh and Orissa and the Union Territories of Pondicherry, Enam, Andaman and Nicobar and Lakshadweep islands. The plaintiff was not to use the words "Indian" or "Express" or any derivative of these words in the above-referred States and Union Territories. Financial Express, however, was excluded from this embargo placed on the plaintiffcompany. The right to use the name "Indian Express" in relation to electronic media as well as other medium also came to the share of the plaintiff-company. Defendant No. 1 was permitted to use the expression "New Indian Express" for publication of an English daily newspaper in the above-referred southern States and Union Territories. Under clause 19 of the decree, defendant No. 1 became absolute owner of all the titles of the newspapers and magazines which it was publishing and the plaintiff did not have any claim of any nature to use or adopt those titles. Under the first agreement, the name "New Indian Express" could have been used by defendant No. 1 to publish an English language daily subject to the condition that the expression "New" was on the same line and of the same size, wherever the title "New Indian Express" appeared. The plaintiff paid a sum of Rs 56 crore to defendant No. 1 as non-compete and forbearance capital fee, which comprised Rs 6 crore for the forbearance accepted by defendant No. 1 not to start an English newspaper within 36 months and Rs 50 crore for the balance forbearances. Under the supplementary agreement dated 12th August, 2005, defendant No. 1 was permitted to use the title "New Indian Express" or any of its derivatives/abbreviations on the Internet though no such right was given to it in respect of television and radio. It was also agreed between the parties to the agreement that the expression "New" need not be of the same size and in the same line as "Indian Express" provided the expression "New" was legible to the naked eye. In consideration of the aforesaid amendments, the plaintiff paid an additional sum of Rs 5 crore to defendant No. 1. Thus, according to the plaintiff, defendants were permitted to use the expression "New Indian Express" only for publication of an English language daily newspaper in the specified five southern States and specified Union Territories and for no other purpose or any other area or territory.

(2.) The plaintiff is the owner of several registered trademarks, including "Indian Express". The defendants have started publishing a newspaper called "The Sunday Standard" from New Delhi. In an e-mail sent on 02nd April, 2011 to its customers and advertising agencies, the defendants used the words/expressions "The New Indian Express Group". On examining the issue of "The Sunday Standard", the plaintiff noticed that under the masthead the expression "newindiaexpress" appears twice with facebook and twitter, whereas the term expressbuzz appears twice. In the introductory note on page 1, defendant No. 2 described himself as the 'Chairman, The New Indian Express Group'. In the Editorial, the Editor describes himself as the Executive Editor of The New Indian Express. The columnist T.J.S. George was described as Editorial Advisor of The New Indian Express and the other columnist Mr V Sudarshan was described as Executive Editor of The New Indian Express and in the Caution Notice, there are three references to "The New Indian Express". On page 15, the defendants published an advertisement with the expression/logo "The New Indian Express Group". The plea taken by the plaintiff is that the defendants are barred from using the expression "The New Indian Express" outside the specified five southern States and specified Union Territories and, therefore, use of the logo with the words "The New Indian Express Group", outside these five southern States and specified Union Territories, is an illegal use of plaintiffs' trademark besides being violative of the forbearance and non-compete conditions accepted by the defendants for consideration.

(3.) This is also alleged that use of the above-referred logo and words/expressions by the defendants in the newspaper "The Sunday Standard" is identical and/or deceptively similar to plaintiff's registered trademark and, therefore, amounts to infringement and passing off the plaintiff's trademark as that of defendant No. 1's own mark. It is claimed that the use of the words/expression "Indian Express" and/or "The New Indian Express" is likely to be taken as a connection /trade nexus of the defendants with the plaintiff and that besides, causing confusion amongst advertising agencies, readers and general public, it also amounts to taking plaintiff's undue advantage, reputation and goodwill. It is also alleged that the defendants are trying to pass off their newspaper "The Sunday Standard" as connected with or related to plaintiff's newspaper and publications. The plaintiff has alleged similar use of the expression "New Indian Express" by the defendants in various other issues of "The Sunday Standard". The plaintiff has sought an injunction restraining the defendants from using the words "The Indian Express", "New Indian Express", "Indian" "Express" or any associated, agnate and cognate or abbreviated terms or any logos covered by plaintiff's registered trademark "Indian Express" "Express News Service" "ENS" and or "The New Indian Express Group" either by themselves or as a part of any word so as to infringe the plaintiff's registered trademark and/or violate the rights granted under the decree dated 16th April, 1997 and supplementary agreement dated 12th August, 2005.