Court’s decision
The Bombay High Court, per Justice R.I. Chagla, refused to restrain the publication of The New Indian Express in Maharashtra and other western states, holding that both Indian Express and The New Indian Express had distinct and region-specific goodwill acquired through decades of independent operation.
The Court reaffirmed that trademark ownership in the media industry is territorial, not universal, and that both entities could continue using their respective titles in their traditional territories without causing deception to readers.
“When two marks have coexisted in commerce for over half a century with clear territorial separation, equity does not demand interference.”
Facts
The dispute arose from the split of The Indian Express group in the 1990s, following which the original media empire was divided between two branches of the family. The Mumbai-based entity retained rights to Indian Express, while the southern group began publishing The New Indian Express.
In 2025, the plaintiff (the Mumbai-based media house) alleged that the defendants had expanded their circulation and online presence into Maharashtra, Gujarat, and Madhya Pradesh, thereby encroaching upon its exclusive goodwill. It sought a permanent injunction restraining the use of “The New Indian Express” within its traditional markets and on digital platforms accessible to western readers.
The defendants countered that both publications had coexisted peacefully for nearly three decades under a family settlement, operating in distinct linguistic and geographic spheres, and that online overlap was inevitable due to modern digital dissemination.
Issues
- Whether “The New Indian Express” infringes or passes off upon the goodwill of “Indian Express”.
- Whether coexistence under the family settlement prevents fresh infringement claims.
- Whether the rise of digital readership alters the territorial boundaries of trademark rights.
- Whether equitable relief could be granted despite decades of concurrent use.
Petitioner’s arguments
The petitioner contended that its publication Indian Express had acquired pan-India reputation through both print and online presence. It argued that The New Indian Express’s recent digital expansion and limited circulation in western India constituted encroachment and passing off.
It was submitted that the 1990s family settlement permitted the southern entity to use The New Indian Express only in South India, and that such use was territorially confined. The petitioner urged that digital and print markets must be treated as separate spheres, and that the defendant’s online dissemination had caused actual confusion among advertisers and readers.
Counsel relied on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (AIR 1965 SC 980), arguing that when marks are deceptively similar, proof of confusion is not essential. The petitioner further cited Whirlpool Co. v. N.R. Dongre (1996 5 SCC 714) to assert that a mark’s transborder reputation can justify injunction even without physical presence.
Respondent’s arguments
The respondent maintained that The New Indian Express had been lawfully and continuously published since 1991, with a distinct editorial voice, logo, and territorial readership across Tamil Nadu, Kerala, Karnataka, and Andhra Pradesh. It argued that the digital age does not erase geographical distinctions recognised under the family arrangement.
The defendant asserted that goodwill was split and crystallised under the family agreement, and both parties had respected those boundaries for over three decades. Any incidental digital overlap, it said, was inevitable and could not amount to infringement.
Reliance was placed on Info Edge (India) Ltd. v. Shailesh Gupta (2002 24 PTC 355 Del), where the Delhi High Court held that descriptive or common elements of a mark, when long coexisted, cannot be monopolised. The respondent also cited Himalaya Drug Co. v. SBL Ltd. (2013 53 PTC 1 Del), emphasizing that internet visibility does not expand trademark jurisdiction beyond intended markets.
Analysis of the law
Justice Chagla revisited the principles of trademark coexistence under Sections 28, 29, and 30 of the Trade Marks Act, 1999, noting that statutory exclusivity is not absolute where concurrent rights or equitable considerations apply.
The Court emphasized that Indian Express and The New Indian Express were derivative titles emerging from a legitimate partition, both developing distinct editorial styles, logos, and target audiences. While both share the words “Indian” and “Express,” the overall trade dress and content have diverged substantially.
The Court applied the “territorial goodwill” doctrine, holding that reputation in trademark law is linked to the market where goodwill is built, not to mere online accessibility. It clarified that digital expansion cannot erase historically agreed market boundaries, as doing so would disrupt long-settled commercial balance.
Precedent analysis
- Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (1965) – Distinguished; the Court held that the facts here involve legitimate coexistence, not imitation.
- Whirlpool Co. v. N.R. Dongre (1996) – Cited to recognise transborder reputation but held inapplicable, as both parties were Indian entities with geographically delimited rights.
- Info Edge (India) Ltd. v. Shailesh Gupta (2002) – Relied upon to highlight that coexistence over time creates independent goodwill.
- Himalaya Drug Co. v. SBL Ltd. (2013) – Reiterated that internet presence alone doesn’t establish passing off.
Court’s reasoning
Justice Chagla observed that the two publications had operated under a de facto coexistence regime for over three decades, recognised by readers, advertisers, and regulators alike. The Court noted that both newspapers target distinct linguistic and regional audiences, and that confusion among readers was non-existent or negligible.
“Trademark protection is not an instrument to rewrite history; it is to prevent unfair competition. Where equity favours coexistence, the law will not intervene to create exclusivity.”
The Court found that the plaintiff’s plea for injunction would upset a long-standing commercial equilibrium, observing that even the Registrar of Trade Marks had permitted coexistence of similar marks in separate territorial jurisdictions.
The Court also clarified that the rise of online readership does not transform trademark scope, since consumers naturally associate Indian Express with western editions and The New Indian Express with southern ones. The judge concluded that the alleged digital confusion was speculative and unsupported by evidence.
Conclusion
The Bombay High Court dismissed the injunction plea and held that both marks can continue to coexist under their respective spheres of operation. It ruled that equity, commercial conduct, and historical arrangements outweigh theoretical risks of confusion.
Justice Chagla observed that the judiciary must preserve business autonomy where longstanding coexistence has not caused consumer deception. The ruling affirms that territorial goodwill remains the cornerstone of Indian trademark law, even in the era of digital convergence.
Implications
This judgment reaffirms the limits of trademark exclusivity in the digital era. It clarifies that coexistence based on historical settlements and territorial differentiation remains enforceable, and that the law does not permit expansion of goodwill merely due to online visibility.
It also signals judicial caution against reviving dormant disputes in industries like media and FMCG, where similar marks have lawfully coexisted for decades. The decision is a strong precedent protecting businesses from aggressive enforcement of generic or historically divided marks.
