Introduction:
In a significant ruling concerning trademark rights, contractual obligations, and territorial limitations on brand usage, the Bombay High Court has upheld an interim injunction restraining the use of the newspaper title “The New Indian Express” beyond the geographical areas specifically permitted under longstanding settlement agreements between two prominent newspaper groups. The decision reaffirms the principle that rights granted under a trademark settlement must be exercised strictly within the scope contemplated by the parties and that courts will protect proprietary rights against unauthorized expansion of use.
The dispute arose in Express Publications (Madurai) Pvt. Ltd. v. The Indian Express (P) Ltd., bearing Commercial Appeal (L) No. 41053 of 2025. The matter came before a Division Bench comprising Justice Bharati Dangre and Justice Manjusha Deshpande, which declined to interfere with an earlier order passed by a Single Judge of the Bombay High Court. The Division Bench observed that there was no perversity in the findings recorded by the Single Judge and consequently upheld the interim protection granted in favour of The Indian Express.
The controversy has its origins in a corporate and trademark arrangement dating back several decades. Following a division of business interests connected with the historic “Indian Express” newspaper group, the parties entered into a Memorandum of Settlement (MoS) in 1995. The settlement was subsequently incorporated into a consent decree passed by the Madras High Court in 1997. A Supplemental Memorandum of Settlement was later executed in 2005 to further regulate the relationship between the parties and clarify their respective rights concerning the use of newspaper titles and trademarks.
Under the settlement framework, The Indian Express retained absolute ownership and proprietary rights over the trademark “Indian Express.” However, Express Publications was granted a limited and geographically restricted licence to use the title “The New Indian Express” for publication and circulation of its newspaper in specified southern states and certain Union Territories. The arrangement represented a carefully negotiated balance between ownership rights and limited user rights.
The dispute resurfaced in September 2024 when Express Publications organized an event in Mumbai under the title “The New Indian Express – Mumbai Dialogues.” The Indian Express contended that the use of the title in Mumbai fell outside the territories expressly permitted under the settlement agreements and amounted to trademark infringement, passing off, and violation of the contractual arrangement governing the parties.
The controversy raised important legal questions regarding the interpretation of settlement agreements, the territorial scope of trademark licences, the extent of promotional rights attached to a newspaper brand, and the protection available to registered trademark proprietors against unauthorized commercial exploitation of their marks outside agreed geographical limits.
The case therefore presented the Court with the task of balancing contractual freedom, trademark protection, and commercial realities while determining whether the impugned use of the title constituted a breach of the parties’ carefully structured settlement framework.
Arguments of the Parties:
Express Publications, the appellant before the Division Bench, challenged the interim injunction granted by the Single Judge and sought permission to continue using the title “The New Indian Express” outside the southern territories for promotional and commercial purposes.
The appellant argued that the Memorandum of Settlement and the Supplemental Memorandum of Settlement did not contain any express prohibition against advertising, marketing, branding, or promotional activities beyond the specified territories. According to Express Publications, the restrictions contained in the agreements were primarily directed towards publication and circulation of newspapers rather than incidental promotional activities.
It was submitted that the event conducted in Mumbai was not equivalent to publishing or circulating a newspaper within a prohibited territory. The appellant maintained that organizing a dialogue, conference, or public event under the newspaper’s title was a legitimate promotional activity that did not infringe the rights reserved to The Indian Express.
Express Publications further contended that modern media businesses operate in an environment where brand promotion extends beyond the physical circulation of newspapers. Newspaper organizations frequently engage in conferences, debates, public discussions, and branded events to enhance visibility and goodwill. Therefore, the use of the title in connection with such events should not be interpreted as a violation of the settlement agreements.
The appellant also emphasized that the title “The New Indian Express” had acquired an independent reputation and goodwill over several decades. It was argued that the newspaper had established its own identity among readers and that promotional activities conducted under that title were merely extensions of an existing and legitimate business.
Another important aspect of the appellant’s case was that the settlement agreements should be interpreted narrowly when imposing restrictions. According to Express Publications, limitations on commercial activity cannot be inferred unless clearly and expressly stated. Since the agreements did not specifically prohibit promotional events outside the southern states, the Court should not read such restrictions into the contractual framework.
On the other hand, The Indian Express strongly opposed the appeal and defended the injunction granted by the Single Judge.
The respondent argued that the settlement agreements were carefully negotiated documents intended to preserve its exclusive ownership over the trademark “Indian Express” while granting only a limited and conditional right of use to Express Publications. The right granted was neither absolute nor unrestricted. Rather, it was confined to specific territories expressly identified in the agreements.
The Indian Express submitted that any use of the title “The New Indian Express” outside the designated southern states and Union Territories would necessarily encroach upon its exclusive trademark rights. According to the respondent, the purpose of the settlement was to avoid confusion, preserve territorial exclusivity, and ensure peaceful coexistence between the two newspaper entities.
The respondent further contended that trademark law protects not only the physical sale of goods or services but also promotional, advertising, and branding activities. Therefore, use of the title at a commercial event in Mumbai constituted trademark use in a territory where Express Publications had no legal entitlement to exploit the mark.
The Indian Express argued that permitting such use would effectively allow the appellant to expand its rights beyond what had been contractually agreed. This would undermine the entire purpose of the Memorandum of Settlement and dilute the respondent’s proprietary rights over the trademark.
It was also submitted that the event conducted under the title “The New Indian Express – Mumbai Dialogues” was capable of creating confusion among members of the public regarding the relationship between the parties and the territorial extent of the appellant’s rights. Such use, according to the respondent, amounted to infringement as well as passing off.
The respondent therefore urged the Court to preserve the contractual and trademark rights recognized under the settlement agreements and prevent any unauthorized territorial expansion of the appellant’s activities.
Court’s Judgment:
The Division Bench of the Bombay High Court declined to interfere with the interim order passed by the Single Judge and upheld the injunction restraining Express Publications from using the title “The New Indian Express” beyond the territories specified in the settlement agreements.
While a detailed copy of the appellate order was awaited, the Bench observed that there was no perversity in the findings recorded by the Single Judge. This observation is legally significant because appellate courts ordinarily exercise limited jurisdiction while examining discretionary interim orders. Unless the findings are arbitrary, irrational, contrary to law, or unsupported by evidence, appellate interference is generally unwarranted.
The Court effectively endorsed the reasoning adopted by Justice Riyaz Chagla in the detailed order passed on November 13, 2025. The Single Judge had undertaken a comprehensive examination of the Memorandum of Settlement of 1995, the consent decree of 1997, and the Supplemental Memorandum of Settlement executed in 2005.
A central finding of the Single Judge was that The Indian Express remained the exclusive owner of the trademark “Indian Express.” Any rights enjoyed by Express Publications were derivative, limited, and strictly governed by the settlement framework. The agreements did not create co-equal ownership rights. Rather, they conferred a restricted licence subject to territorial limitations.
The Court emphasized the importance of giving effect to the plain meaning of settlement agreements. When parties consciously negotiate territorial boundaries and allocate trademark rights accordingly, courts must respect and enforce those arrangements. To permit use beyond the agreed territories would amount to rewriting the contract rather than interpreting it.
A crucial aspect of the reasoning concerned the nature of trademark rights. Trademark protection is not confined merely to the sale or distribution of products. Modern trademark jurisprudence recognizes that brands derive value from advertising, promotional campaigns, sponsorship activities, public events, and commercial engagement with consumers.
Consequently, the Court rejected the notion that territorial restrictions applied only to newspaper circulation while leaving promotional activities unrestricted. Such an interpretation would create a substantial loophole capable of defeating the very purpose of the settlement.
The Court appears to have accepted the argument that promotional use of a trademark is itself a form of trademark exploitation. Therefore, organizing an event under the title “The New Indian Express” in Mumbai constituted commercial use of the mark outside the territories authorized under the settlement agreements.
Another important principle underlying the judgment is the sanctity of consent decrees. The Memorandum of Settlement was not merely a private arrangement between commercial entities. It had been incorporated into a consent decree passed by the Madras High Court. Such decrees possess binding legal force and are enforceable in the same manner as judicial orders.
The Court therefore treated compliance with the settlement framework as a matter of legal obligation rather than mere commercial convenience. Any attempt to expand rights beyond those expressly granted would undermine both contractual certainty and judicial authority.
The judgment also reflects established principles governing trademark licensing. A licensee cannot claim rights exceeding those granted by the proprietor. Where a trademark owner authorizes use subject to specific conditions, the licensee remains bound by those limitations. Unauthorized use beyond the scope of the licence may constitute infringement even if the user originally derived authority from the trademark owner.
The Court appears to have found that the respondent established a strong prima facie case regarding ownership and territorial exclusivity. It also likely considered the balance of convenience to be in favour of protecting established trademark rights until final adjudication of the dispute.
In trademark matters, courts frequently grant interim relief where unauthorized use threatens to dilute brand identity, create consumer confusion, or erode proprietary rights. The possibility of irreparable injury becomes particularly significant where a mark enjoys longstanding reputation and commercial goodwill.
By refusing to interfere with the injunction, the Division Bench signaled that the respondent’s proprietary rights deserved interim protection pending final determination of the suit. The Court recognized that permitting continued use outside authorized territories could potentially weaken the carefully structured arrangements established under the settlement agreements.
The decision also reinforces the doctrine that commercial entities must adhere strictly to negotiated territorial arrangements. Businesses frequently divide markets, territories, and brand rights through settlements and licensing agreements. Such arrangements promote certainty, reduce disputes, and facilitate coexistence between competing interests. Courts therefore play an essential role in ensuring that parties do not exceed the limits of rights they have agreed to accept.
Ultimately, the Bombay High Court upheld the interim order restraining Express Publications from using the title “The New Indian Express” outside the southern states and specified Union Territories. The ruling confirms that territorial restrictions embedded in trademark settlements are enforceable not only in relation to publication and circulation but also in connection with promotional and commercial activities.
The judgment serves as a significant precedent in trademark law by emphasizing that ownership rights, contractual restrictions, and territorial limitations must be respected in accordance with the terms agreed between the parties. It also underscores the judiciary’s commitment to protecting registered trademark proprietors against unauthorized expansion of licensed rights and preserving the integrity of negotiated settlements that govern valuable commercial assets.