The Plaintiff- Indian Express Ltd. and the Defendant – Express Publications Madurai through settlements in 1997 and 2005 agreed that the Plaintiff would own the trademark “Indian Express” and the Defendant would own the trademark “New Indian Express”. The Defendant would publish an English Daily titled “New Indian Express” only in the five southern states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, Orissa and Union Territories of Pondicherry, Enam, Andaman and Nicobar and Lakshadweep. The Defendant was also allowed to use the trademark on the internet for dissemination of news.
The case commenced after the Defendant started publishing the newspaper titled ‘Sunday Standard’ from New Delhi. Beneath the logo, it carried a plea to follow them on Facebook and Twitter at www.newindianexpress.com. It also carried information that the Chairman, Executive Editors and Advertisement also belonged to the ‘New Indian Express Group.’
The Plaintiff then filed an interim application before the Delhi High Court seeking an injunction against the Defendants to restrain them from using the trademarks “New Indian Express”, “Indian”, “Express” and “New Indian Express Group” and other such combinations.
The two main issues before the learned judge were:
1. Whether the Defendant had infringed the Plaintiff’s trademark?
2. Whether the Defendant was passing off its goods as Plaintiff’s?
1. The Hon’ble Court dismissed the argument of the Plaintiff, on the basis of Section 28(3) of the Trade Marks Act, 1999 and said that since Indian Express and New Indian Express are similar, so merely having registration of these marks does not give them the exclusive right against each other but only against others who have similar but unregistered marks.
2. On the issue of passing off the Court looked at whether Sunday Standard was cashing in on the reputation by using the mark ‘newindianexpress’ under the Sunday Standard logo. The Court felt that this advertisement was permissible by the agreement between the parties and it was small in comparison with the masthead and it wouldn’t mislead customers.
The Hon’ble Court providing its views on the Agreements between the parties stated “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 and this use does not have and cannot have any geographical limitations. By inviting the readers to join to the website www.expressbuzz.com / www.mexpressbuzz.com or to join them on Facebook or Twitter, the defendants are only promoting their Internet business in exercise of the Internet rights given to them under the supplementary agreement. To my mind, no exception can be taken to such promotion of the Internet business of the defendant under the name "New Indian Express" by the plaintiff. I fail to appreciate the contention of the learned Counsel for the plaintiff that the agreements between the parties prohibits the defendants from promoting/advertising their business outside the five southern States/Union Territories specified in the agreement, if it involves use of the express "New Indian Express". Admittedly, the defendants are entitled to publish an English daily under the name "New Indian Express" in the southern States and Union Territories specified in the agreements. There was no prohibition, in the agreements between the parties, against promotion/advertisements even of the newspaper "New Indian Express" outside the southern States and Union Territories specified therein. Hence, if the defendants want to advertise those newspapers outside the specified southern States/Union Territories specified in the agreement, by giving advertisements in other newspapers or on television or radio, that, to my mind, would not constitute a violation of the agreements dated 05th February, 1995 and supplementary agreement dated 12th August, 2005 and in any case would not amount to passing off the newspaper of the defendant as that of the plaintiff.” The Court further stated “In my view, if the defendants advertise the newspaper published by them from any of the five southern State/Union Territories specified in the agreements in any newspaper whether it is Times of India or Hindustan Times or The Sunday Standards that would neither amount to passing off nor would that be in violation of the agreements between the parties. Same would be the position if the advertisements of other newspapers are published in "The Sunday Standard" irrespective of whether it is advertisement of "Hindustan Times" or "Times of India" or "New Indian Express". If tomorrow, the plaintiff advertises its newspaper "Indian Express" in any of the five southern States/Union Territories specified in the agreements, in a newspaper published from these southern States/Union Territories, can it be said that by doing so the plaintiff was trying to pass off its newspaper as that of "New Indian Express Group". The answer again would be in negative. Therefore, to my mind, such advertisements or use of the expression "New Indian Express" or "New Indian Express Group", the way they have been used so far do not amount to passing off and also do not constitute the violation of the agreements between the parties.”
On the aspect of the authors of the editorials/articles referring to themselves by name and as Executive Directors of the New Indian Express, the Court ruled that they were not passing off their paper as Plaintiff’s.
The Hon’ble High Court also looked into the aspect of the Defendants using these marks to mislead the public into believing that the Plaintiff and Defendant were one group. Defendant informed the Court with evidence that the Plaintiff had acquiesced to the use of the ‘New Indian Express Group’ which was visible in the Publications and the Joint Letters sent by them.
The Hon’ble High Court thus, refused to grant an injunction to the Defendant but asked them to mention ‘Madurai’ with the ‘New Indian Express Group’.