The Bombay High Court upheld restrictions on The New Indian Express using the brand name beyond agreed territorial limits under a family settlement. The Court dismissed EPM’s appeal and reaffirmed The Indian Express’s trademark and brand rights.
The Bombay High Court has upheld an earlier order restraining The New Indian Express from using its brand name beyond the territorial limits permitted under a family settlement agreement, thereby reaffirming the rights claimed by The Indian Express.
A Division Bench comprising Justice Bharati Dangre and Justice Manjusha Deshpande dismissed an appeal filed by Express Publications Madurai (EPM) and confirmed the findings of a single-judge Bench, which had earlier granted injunctive relief in favour of The Indian Express.
The dispute arose from a long-running disagreement over the use of the Indian Express brand following a family settlement within the Indian Express Group after the death of its founder, Ramnath Goenka, in 1991.
Following Goenka’s death, the ownership and management structure of the Indian Express Group underwent a restructuring process. The parties entered into a Memorandum of Settlement in 1995, which was subsequently supplemented by another agreement in 2005. Under these arrangements, The Indian Express, controlled by Vivek Goenka, retained exclusive ownership rights over the trademark “Indian Express”.
At the same time, Express Publications Madurai, controlled by Manoj Kumar Sonthalia, was granted limited permission to use the name “The New Indian Express”. However, this permission was restricted to publishing newspapers in certain specified southern states and Union Territories.
The settlement, according to The Indian Express, did not transfer ownership of the trademark to EPM but only created a limited and conditional right of use within the agreed geographical boundaries.
The present litigation was initiated after EPM organised an event titled ‘The New Indian Express – Mumbai Dialogues’ in September 2024. The Indian Express objected to the event, arguing that the use of the brand name outside the permitted territories violated the terms of the settlement and the binding consent decree governing the relationship between the parties.
The matter reached the Bombay High Court, where the single judge held that EPM’s use of the brand in Mumbai was contrary to the agreed arrangement.
The Court found that the name “New Indian Express” was derived from the original Indian Express trademark and that the right granted to EPM could not be expanded beyond the limits specifically agreed upon.
The single judge rejected EPM’s contention that it possessed independent proprietary rights over the mark The New Indian Express. The Court observed that the settlement only granted EPM a restricted licence and did not create an unrestricted ownership interest in the brand.
It held that any use of the name outside the agreed territories would amount to a breach of the settlement terms and the consent decree binding both parties. As a result, an injunction was issued preventing EPM from using the brand beyond the permitted areas.
Challenging the single judge’s decision, EPM approached the Division Bench. After examining the matter, the Bench agreed with the reasoning of the single judge and found no reason to interfere with the earlier order.
The Division Bench effectively continued the restriction against EPM using the brand name for events, programmes or other activities outside the southern region covered by the settlement. The ruling reinforces the principle that contractual arrangements concerning trademark rights must be respected and that a party granted limited permission to use a brand cannot claim broader rights beyond the scope of the agreement.
The decision highlights the importance of territorial limitations in trademark licensing arrangements and confirms that contractual permissions cannot be expanded through usage beyond agreed terms.
Case Title: Express Publications Madurai v. The Indian Express
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