Succession (The Goenka Family Version): Bombay High Court Affirms Indian Express’s Primacy in Trademark Dispute
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In its recent judgment, the Bombay High Court settled the long-running conflict over the New Indian Express mark by examining the parties’ 1995 and 2005 settlement agreements. The Court ultimately granted an injunction against Express Publications (Madurai) Pvt. Ltd., limiting its use of the mark to specified territories. Explaining the family feud and the Court’s decision, Vasundra Koul explains how the Court might have failed in its interpretation of trademark principles vis-à-vis a contractual agreement. Vasundra is a fourth-year student at Rajiv Gandhi National University of Law, Punjab, with a keen interest in Intellectual Property and Commercial Law. She enjoys writing on the evolving intersections of law, media, and technology.
Poster of the web series Succession. Image from hereSuccession (The Goenka Family Version): Bombay High Court Affirms Indian Express’s Primacy in Trademark Dispute
By Vasundra Koul
There was once a time when families feuded over the throne. In contemporary times, however, the battles have shifted to boardrooms and trademark registries. That is essentially what went down in the recent Bombay High Court judgment of The Indian Express (P) Ltd. vs. Express Publications (Madurai) Pvt. Ltd., in which the High Court settled a thirty-year-old conflict within the Goenka family concerning the New Indian Express mark, by interpreting the rights of the parties under their 1995 and 2005 settlement agreements. The High Court granted an injunction to Viveck Goenka’s Indian Express Newspapers (Bombay) Ltd. against Manoj Sonthalia’s Indian Express (Madurai) Ltd., restraining the latter from using “The New Indian Express” outside certain territories as agreed by the parties earlier in the 1995 and 2005 agreements.
In this post, I will examine the Court’s reasoning to grant an injunction against Express Publications (Madurai) Pvt. Ltd. and discuss how the Court failed in its interpretation of trademark principles vis-à-vis a contractual agreement.
History of the Familial Dispute
The conflict arose after Ramnath Goenka, founder of the Indian Express, divided the shares of its holding company between his grandsons, Viveck Goenka and Manoj Sonthalia. After many familial disagreements, Manoj Sonthalia’s shares were transferred back, leading to a suit before the Madras High Court.
In 1995, the brothers entered into a Memorandum of Settlement (MoS), followed by a consent decree in 1997 and a supplemental MoS in 2005. These agreements provided that Manoj Sonthalia would own Indian Express (Madurai) Ltd. (IEM), a subsidiary of Viveck Goenka’s Indian Express Newspapers (Bombay) Ltd. IEM published The New Indian Express, which it registered as a trademark in 2005. In 2015, on Indian Express’s rectification petition, the Intellectual Property Appellate Board (IPAB) limited the impugned mark’s use to 5 states including Karnataka, Kerala, Tamil Nadu, Andhra Pradesh and Orissa and the UTs of Pondicherry, Andaman and Nicobar Islands and Lakshadweep.
Present Controversy
In 2024, IEM organised an event in Mumbai titled ‘The New Indian Express – Mumbai Dialogues’. Indian Express objected, holding that IEM’s use of its derivative mark outside the 5 states and UTs breached the MoS. On the other hand, IEM argued that organising events didn’t amount to publication, that Indian Express had acquiesced to such promotions since 2011, and that if the mark ‘The New Indian Express’ were only a derivative, Indian Express should have sought its registration as an associated mark under Section 16 of the Trade Marks Act, 1999, which they had failed to do.
Novel Findings of the Court
The Bombay High Court held that the MoS, Supplemental MoS and the 2015 order of the IPAB clearly put a restriction on IEM’s right to use, which included promotion. The Court observed that the mark ‘The New Indian Express’ was only a derivative mark of Indian Express and that IEM was only a permitted user of the mark ‘The New Indian Express’. Relying on Sanwarlal Agrawal v. Ashok Kumar Kothari, Lalchand v. Pialyare Lal and Shivshankar Gurar v. Dilip, the Court noted that there cannot be any waiver of rights or acquiescence under a consent decree, without expressly explaining the reason for this finding. Accordingly, the Court held that IEM had violated the MoS and the Supplemental MoS and thus granted interim relief in favour of Indian Express.
Whereof it is born, I am to learn – Conceptual Inconsistencies in the Court’s Reasoning
A closer examination of the Bombay High Court’s reasoning reveals several conceptual inconsistencies that merit scrutiny. Firstly, the Court, agreeing with the contentions of Indian Express, held that the mark ‘The New Indian Express’ was only a ‘derivative mark’ and that mere addition of ‘New’ did not make it a distinct mark. While I believe the Court was right in observing that the addition of ‘New’ does not, by itself, confer distinctiveness, its reliance on the notion of a ‘derivative mark’ is legally unfounded as the Trade Marks Act, 1999, contains no such concept. If one were to find the closest statutory analogue to what the Court describes, it would be the concept of an associated trademark under Section 16 of the Act, which refers to related marks owned by the same proprietor, whose registrations are linked to prevent confusion regarding the source of the goods/services. However, an associated trademark would presuppose that the proprietor of the marks is the same, which was not the case here, as IEM held the proprietary rights over ‘The New Indian Express’ restricted to the five states and UTs. Although IEM argued that Indian Express never applied for the associated trademark under Section 16, the Court did not make any observation to that end. Even the cases relied on by the Court (namely Ruston and Hornsby Ltd. v Zamindara Engineering Co. and M/s. Aviva Fiber v. M/s. Aviva Fibertech Pvt. Ltd.) were cited to support the proposition that adding a minor element to a mark does not render it distinctive. However, both these cases involved a detailed examination of deceptive similarity between the trademarks, which is notably missing in this judgment as well as the 2015 IPAB order. Thus, the Court relied on precedents that involved an analysis of similarity without conducting that analysis itself.
Secondly, the Court’s finding that IEM was only a ‘permissive user’ of ‘The New Indian Express’ mark has also highlighted another statutory inconsistency, as this finding cannot be reconciled with the fact that IEM is a registered proprietor of the mark within those five states and UTs. Under the Trade Marks Act, 1999, a ‘permitted user’ as defined under Section 2(1)(r)(i) of the Act, talks about a registered user, which, according to Section 48, is expressly held to be a person other than the registered proprietor of the trademark. When the IPAB had itself recognised IEM as a proprietor, how can they also be a permitted user then? When this inconsistency was pointed out by IEM, the Court drew support from the clauses of the MoS and held that IEM had only a right to use the trademark within a limited territorial area. The Court has thus treated this right as a contractual licensing, even though no royalty was paid by IEM for the same. The Court seems to have equated the clause for ‘sufficiency of consideration’ paid by Indian Express to IEM within the MoS (which I presume referred to the family settlement at large) to trademark licensing, for which ideally ‘consideration’ or royalty should have been paid by IEM instead. Thus, even the mechanism mentioned under Section 49 of the Act for registration as a registered user is not followed in the present case, which inter alia, makes it mandatory to file such an application with the Registrar of Trademarks.
Finally, while the Court was correct in holding that the rights under a consent decree cannot ordinarily be waived as doing so would contradict the express terms of the agreement to which the parties had consented, its analysis does not meaningfully engage with the evidence offered by IEM. According to IEM, they had been holding such promotional events beyond the permitted territorial area since 2011, which were widely publicised, attended by Chief Ministers of those states, reported in newspapers and even uploaded on YouTube. However, the Court analysed only whether the Joint Advertising Agreement between the parties amounted to an acquiescence by Indian Express, without making any observations on the above facts stated by IEM. Thus, it seems that the Court selectively relied on those aspects that did not support a finding of acquiescence and failed to undertake a thorough analysis.
These observations made by the Court highlight two broader structural concerns that I believe should be discussed. First, when interpreting the MoS vis-à-vis the provisions of the Trade Mark Act, the Court should have adopted an approach that remained consistent with the statutory framework, without permitting the contractual agreement to override or distort settled statutory principles. Upholding the primacy of such a contractual agreement cannot come at the cost of frustrating the scheme of the Act itself, which is precisely what occurred in the present case. Second, this case has also underscored the need for the Trademark Registry to be more thorough in examining trademark applications and scrutinising their statutory viability in light of pre-existing agreements. Had IEM never been granted a trademark registration for ‘The New Indian Express’ in the first instance, the present conceptual inconsistency, where a registered proprietor is simultaneously characterised as a permitted user, would not have arisen.
A Perspective Beyond the Judgment
In my opinion, the Court’s reliance on extra-statutory provisions raises more questions than this judgment seeks to resolve. The gaps in the Court’s reasoning do not necessarily undermine the outcome itself, but they do cast doubt on the coherence of the legal principles used to arrive at it. Among all the things inconclusive about this judgment, an aspect that was not discussed, but I believe deserves at least some thought, is the extent of territorial restrictions that can be imposed in the age of e-newspapers, a service also provided by IEM. Limiting the publication of the newspaper to only a handful of states and UTs was workable perhaps back in 1995. However, in this digital age, where news dissemination transcends geographical boundaries, the rigidity of such territorial constraints appears increasingly incongruent with the realities of online circulation.