Contractual Partition of Trademark Rights and Territorial Injunctions: Analysing the Bombay High Court’s Interim Order in Indian Express v. The New Indian Express
By Guru Legal
Keywords
trademark; territorial restriction; Memorandum of Settlement; Supplemental Agreement; Indian Express; New Indian Express; Bombay High Court; trademark licensing; geographic limitation; interim injunction; Trade Marks Act 1999; passing off; brand partitioning
Abstract
The Bombay High Court’s interim order restraining The New Indian Express from using the ‘Express’ trade mark outside the territories specified in a 1995 Memorandum of Settlement and a 2005 Supplemental Agreement raises important questions at the intersection of trademark law and contractual brand partitioning. The dispute between the two branches of the Indian Express Group separated following the death of the founder and the consequent division of the media conglomerate’s assets illustrates the enduring legal complexities of family business partitions involving shared trade marks and the enforceability of territorial restrictions on trademark use. This article examines the legal framework for contractual trademark partitioning under the Trade Marks Act, 1999, the circumstances giving rise to the dispute, the court’s reasoning in granting the interim order, and the broader implications for trademark co-ownership and territorial licensing in India.
I. Introduction
Trade marks are territorial rights, conferring exclusivity within a defined geographical jurisdiction. However, the partitioning of trade mark rights between related entities particularly in the context of business divisions, family settlements, and corporate reorganisations introduces a further layer of territorial complexity: the contractual allocation of trade mark use rights within a single national jurisdiction. Where two parties share historical rights in a mark and agree to divide their usage on a territorial basis, the legal enforceability of that division becomes critical to the integrity of each party’s brand identity and market position.
The Indian Express dispute exemplifies this challenge. The Indian Express, one of India’s oldest and most respected English-language newspapers, was founded by Ramnath Goenka. Following his death, a family settlement in 1995 divided the media assets between two branches of the Goenka family, with one branch operating The Indian Express distributed primarily in northern and western India and the other operating The New Indian Express distributed primarily in southern India. The Memorandum of Settlement executed in 1995 and the Supplemental Agreement of 2005, both approved by the Madras High Court, explicitly delineated the territories within which each publication could use the ‘Express’ name and derivatives thereof. When The New Indian Express sought to expand its brand presence to Mumbai outside the contractually demarcated territory The Indian Express invoked both contractual and trademark law remedies before the Bombay High Court.
II. The Legal Framework: Trademark Partitioning and Territorial Licensing
The Trade Marks Act, 1999 (TMA 1999) provides the primary legislative framework for the registration, protection, and transfer of trade marks in India. Section 37 of the Act provides for the assignment of trade marks with or without the goodwill of the business, while Section 42 specifically addresses the assignment of trade marks that are associated with other marks. Sections 48 to 56 govern the registration and conditions of permitted use agreements (licences), imposing obligations of quality control on the licensor to prevent the mark from becoming deceptive.
The Act does not contain an express provision for the partitioning of a trade mark that is, the division of a single mark into two or more separately owned rights in respect of distinct goods, services, or territories. However, such partitioning is widely recognised in trade mark law and practice as a mechanism for resolving co-ownership disputes. A contractual partition of trade mark rights is governed primarily by the terms of the agreement between the parties, enforceable as a contract, and courts will generally give effect to such agreements as between the parties, though the rights of third parties and the public interest in avoiding deception must also be considered.
The passing off cause of action which protects unregistered trade mark rights based on goodwill, misrepresentation, and damage is equally relevant where one party uses a mark in a territory where the other party has established goodwill. In the present case, The Indian Express’s goodwill in the ‘Express’ name in Maharashtra and western India, built over decades of publication in that region, constituted a powerful foundation for injunctive relief against unauthorised use by The New Indian Express in Mumbai.
III. The Facts of the Dispute
The 1995 Memorandum of Settlement, executed following Ramnath Goenka’s death and approved by the Madras High Court, divided the Indian Express Group’s media assets and clearly delineated the territories within which each successor entity could use the ‘Express’ name. The New Indian Express was authorised to publish and use the mark within the states of Tamil Nadu, Kerala, Karnataka, Andhra Pradesh, and Telangana, and the union territories of Puducherry, Lakshadweep, and the Andaman and Nicobar Islands. The Indian Express retained the right to use the mark in all other states and territories of India, including Maharashtra and the city of Mumbai.
The 2005 Supplemental Agreement reinforced these territorial divisions and provided for additional restrictions on the cross-territorial use of associated marks, brands, and titles. For a period of approximately two decades, both entities largely observed the territorial limitations established by the Settlement and the Supplemental Agreement.
The dispute was precipitated when The New Indian Express organised an event in Mumbai styled ‘The New Indian Express Mumbai Dialogues,’ using its masthead and branding in a city falling exclusively within The Indian Express’s contractual territory. The Indian Express contended that this constituted a deliberate breach of the territorial restrictions and an infringement of its trade mark rights in Maharashtra, causing confusion among readers and advertisers and diluting the distinctiveness of the ‘Express’ brand in the Mumbai market.
IV. The Court’s Reasoning: Interim Injunction and Contractual Enforceability
The Bombay High Court, in granting the interim restraining order, applied the well-established three-part test for interim injunctions: prima facie case, balance of convenience, and irreparable harm. The court found a strong prima facie case on the basis of the clear territorial restrictions in the Settlement and Supplemental Agreement, the longstanding observance of those restrictions by both parties, and the admitted organisation of an event under The New Indian Express brand in Mumbai.
On the balance of convenience, the court found that The Indian Express which has published in Mumbai for decades and built substantial goodwill in the ‘Express’ name in the Maharashtra market would suffer disproportionate harm if the injunction were refused, compared to the limited inconvenience to The New Indian Express of being required to restrict its events and promotional activities to its contractually demarcated territories. The court also found that the potential for consumer confusion and damage to The Indian Express’s goodwill constituted irreparable harm that could not be adequately compensated in damages.
The court’s willingness to enforce the contractual territorial restriction underscores the importance of settlement agreements and consent orders in resolving trade mark co-ownership disputes, and the courts’ general disposition to hold parties to the terms of freely negotiated agreements.
V. Broader Implications
The Indian Express case has significant implications for media companies, family businesses, and other entities with shared trade mark histories. It demonstrates that contractual partitioning of trade mark rights whether arising from business separations, licensing agreements, or settlement decrees will be enforced by Indian courts, and that parties who step outside their contractually demarcated territories face the full range of trade mark and passing off remedies. The case also illustrates the importance of carefully drafting territorial restriction clauses to cover not only print publication but also digital presence, events, and brand extensions, which have become increasingly important channels for media entities in the digital era.
VI. Conclusion
The Bombay High Court’s interim order in the Indian Express v. The New Indian Express dispute reaffirms the enforceability of contractual territorial restrictions on trade mark use and underscores the importance of meticulous brand management within the bounds of settlement agreements. The decision has relevance not only for media entities navigating shared brand histories but for any business operating under a contractually partitioned trade mark regime. As media companies increasingly seek to leverage their brands across digital platforms and live events beyond their traditional geographic markets, disputes of this nature are likely to become more frequent, making clarity in territorial restriction clauses and proactive monitoring of compliance all the more essential.
Bibliography
Trade Marks Act, 1999 (India).
Berne Convention for the Protection of Literary and Artistic Works (Paris Act, 1971).
Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement, 1994).
Reckitt & Colman Products Ltd v. Borden Inc. [1990] 1 All ER 873 (HL) (on passing off).
Laxmikant V. Patel v. Chetanbhai Shah (2002) 3 SCC 65 (Supreme Court of India, on passing off).
Wander Ltd. v. Antox India Pvt. Ltd. (1990) Supp SCC 727 (on interim injunctions in trade mark matters).
Memorandum of Settlement (1995), Indian Express Group (as approved by the Madras High Court).
