Delhi High Court
The Indian Express Limited vs Express Publications Madurai Limited & ... on 10 October, 2011
Author: V.K. Jain
Bench: V.K. Jain
THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Reserved on: 20.09.2011
Judgment Pronounced on: 10.10.2011
+ IA No. 7619/2011 (O. 39 R. 1&2 CPC) in
CS(OS) 1134/2011 and
THE INDIAN EXPRESS LIMITED ..... Plaintiff
Through: Mr. N.B.Joshi, Adv.
versus
EXPRESS PUBLICATIONS MADURAI LIMITED & ORS
..... Defendants
Through : Mr. Arvind Nigam, Sr. Adv.
with Mr.Gopal Jain, Ms.Bina
Gupta, Mr. Ankur Sajal, Mr.
Gaurav Singh and
Ms.Mandeep Kaur,
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? Yes.
2. To be referred to the Reporter or not? Yes.
3. Whether the judgment should be reported Yes.
in Digest?
V.K. JAIN, J
1. Indian Express Newspapers (Bombay) Limited,
which later came to be named as Indian Express
Newspapers (Mumbai) Limited, founded by late Shri
Ramnath Goenka, was publishing a number of
CS(OS) 1134/2011 Page 1 of 49
newspapers, including its flagship newspaper "Indian
Express". After death of Shri Ramnath Goenka on 05th
October, 1991, there were numerous litigations amongst
his heirs, including Shri Viveck Goenka, Manoj Kumar
Sonthalia and Smt Saroj Goenka. A settlement dated 05th
February, 1995 was reached between (a) group of Shri
Viveck Goenka, (b) group of Shri Manoj Kumar Sonthalia
and (c) group of Smt Saroj Goenka. A decree dated 16th
April, 1997 was passed by Madras High Court in terms of
the settlement. This settlement was modified by a
supplementary agreement dated 12th August, 2005.
Under clause 17 of the compromise decree, the
plaintiff became the absolute owner of the registered titles
of the newspapers and magazines which it was publishing
and defendant No. 1 was not to use or adopt any of those
titles, except to the extent provided in clause 19 of the
decree. Under clause 18 of the decree, the title "Indian
Express" came to be vested solely in the plaintiff, but, it
was not to use this aforesaid title in five southern States,
i.e., Tamil Nadu, Kerala, Karnataka, Andhra Pradesh and
Orissa and the Union Territories of Pondicherry, Enam,
CS(OS) 1134/2011 Page 2 of 49
Andaman and Nicobar and Lakshadweep islands. The
plaintiff was not to use the words "Indian" or "Express" or
any derivative of these words in the above-referred States
and Union Territories. Financial Express, however, was
excluded from this embargo placed on the plaintiff-
company. The right to use the name "Indian Express" in
relation to electronic media as well as other medium also
came to the share of the plaintiff-company. Defendant No.
1 was permitted to use the expression "New Indian
Express" for publication of an English daily newspaper in
the above-referred southern States and Union Territories.
Under clause 19 of the decree, defendant No. 1 became
absolute owner of all the titles of the newspapers and
magazines which it was publishing and the plaintiff did
not have any claim of any nature to use or adopt those
titles. Under the first agreement, the name "New Indian
Express" could have been used by defendant No. 1 to
publish an English language daily subject to the condition
that the expression "New" was on the same line and of the
same size, wherever the title "New Indian Express"
appeared. The plaintiff paid a sum of Rs 56 crore to
CS(OS) 1134/2011 Page 3 of 49
defendant No. 1 as non-compete and forbearance capital
fee, which comprised Rs 6 crore for the forbearance
accepted by defendant No. 1 not to start an English
newspaper within 36 months and Rs 50 crore for the
balance forbearances. Under the supplementary
agreement dated 12th August, 2005, defendant No. 1 was
permitted to use the title "New Indian Express" or any of
its derivatives/abbreviations on the Internet though no
such right was given to it in respect of television and
radio. It was also agreed between the parties to the
agreement that the expression "New" need not be of the
same size and in the same line as "Indian Express"
provided the expression "New" was legible to the naked
eye. In consideration of the aforesaid amendments, the
plaintiff paid an additional sum of Rs 5 crore to defendant
No. 1. Thus, according to the plaintiff, defendants were
permitted to use the expression "New Indian Express"
only for publication of an English language daily
newspaper in the specified five southern States and
specified Union Territories and for no other purpose or
any other area or territory.
CS(OS) 1134/2011 Page 4 of 49
2. The plaintiff is the owner of several registered
trademarks, including "Indian Express". The defendants
have started publishing a newspaper called "The Sunday
Standard" from New Delhi. In an e-mail sent on 02nd
April, 2011 to its customers and advertising agencies, the
defendants used the words/expressions "The New Indian
Express Group". On examining the issue of "The Sunday
Standard", the plaintiff noticed that under the masthead
the expression "newindiaexpress" appears twice with
facebook and twitter, whereas the term expressbuzz
appears twice. In the introductory note on page 1,
defendant No. 2 described himself as the „Chairman, The
New Indian Express Group‟. In the Editorial, the Editor
describes himself as the Executive Editor of The New
Indian Express. The columnist T.J.S. George was
described as Editorial Advisor of The New Indian Express
and the other columnist Mr V Sudarshan was described
as Executive Editor of The New Indian Express and in the
Caution Notice, there are three references to "The New
Indian Express". On page 15, the defendants published
an advertisement with the expression/logo "The New
CS(OS) 1134/2011 Page 5 of 49
Indian Express Group". The plea taken by the plaintiff is
that the defendants are barred from using the expression
"The New Indian Express" outside the specified five
southern States and specified Union Territories and,
therefore, use of the logo with the words "The New Indian
Express Group", outside these five southern States and
specified Union Territories, is an illegal use of plaintiffs‟
trademark besides being violative of the forbearance and
non-compete conditions accepted by the defendants for
consideration.
3. This is also alleged that use of the above-referred
logo and words/expressions by the defendants in the
newspaper "The Sunday Standard" is identical and/or
deceptively similar to plaintiff‟s registered trademark and,
therefore, amounts to infringement and passing off the
plaintiff‟s trademark as that of defendant No. 1‟s own
mark. It is claimed that the use of the words/expression
"Indian Express" and/or "The New Indian Express" is
likely to be taken as a connection /trade nexus of the
defendants with the plaintiff and that besides, causing
confusion amongst advertising agencies, readers and
CS(OS) 1134/2011 Page 6 of 49
general public, it also amounts to taking plaintiff‟s undue
advantage, reputation and goodwill. It is also alleged that
the defendants are trying to pass off their newspaper "The
Sunday Standard" as connected with or related to
plaintiff‟s newspaper and publications. The plaintiff has
alleged similar use of the expression "New Indian Express"
by the defendants in various other issues of "The Sunday
Standard". The plaintiff has sought an injunction
restraining the defendants from using the words "The
Indian Express", "New Indian Express", "Indian" "Express"
or any associated, agnate and cognate or abbreviated
terms or any logos covered by plaintiff‟s registered
trademark "Indian Express" "Express News Service" "ENS"
and or "The New Indian Express Group" either by
themselves or as a part of any word so as to infringe the
plaintiff‟s registered trademark and/or violate the rights
granted under the decree dated 16th April, 1997 and
supplementary agreement dated 12th August, 2005.
4. The suit has been contested by the defendants
who have taken a preliminary objection that the suit is
not maintainable, it being an attempt to execute a
CS(OS) 1134/2011 Page 7 of 49
compromise decree passed by the High Court of Madras.
On merits, the agreements between the parties as also the
decree passed by Madras High Court have not been
disputed. It is alleged that no injunction can be granted
against defendant No. 1 who is the registered owner of the
trademark "New Indian Express". It is also alleged that
the plaintiff has acquiesced in use of the logo as well as
the expression "The New Indian Express" and has failed to
disclose that the words "New Indian Express" has been
used only as a logo in the advertisement, published in
"The Sunday Standard". It is also alleged that the plaintiff
has not come to the Court with clean hands since it has
not disclosed that the advertisements along with logo of
the "New Indian Express" were regularly published in the
newspapers of the plaintiff and the plaintiff also published
a supplement title "Express International Aero India" to
the "New Indian Express" Bangalore and the Financial
Express (Ahmedabad, Bangalore, Chandigarh, Chennai,
Hyderabad, Kochi, Kolkata, Mumbai, New Delhi and
Pune), front page of which carried defendant No.1‟s logo
"The New Indian Express" as well as plaintiff‟s logo "The
CS(OS) 1134/2011 Page 8 of 49
Indian Express Group". It is also alleged that a
representative of the plaintiff had sent an e-mail to the
representative of defendant No. 1, informing it that he had
ensured prominent display of the logo of defendant No. 1.
It is also claimed that the plaintiff and defendant No. 1
had addressed a joint letter to advertising agencies and
that letter contained plaintiff‟s logo as well as defendant
No.1‟s logo "The New Indian Express Group". It is also
alleged that the plaintiff had published in "Indian
Express" as well as in "Financial Express", advertisements
of defendant No. 1, which included the logo "New Indian
Express". Thus, according to the defendants, continuous
use of the words "The New Indian Express Group" in
Northern India with the knowledge of the plaintiff makes
out a clear case of agreement, acquiescence and
acceptance on the part of the plaintiff and by its act and
conduct, the plaintiff has waived all its objections to the
use of the logo "New Indian Express Groups" by the
defendants. This is also the case of the defendants that
prohibition against use of the words "Indian" or "Express"
is not applicable to periodicals such as magazines and
CS(OS) 1134/2011 Page 9 of 49
weeklies and "The Sunday Standard" being a weekly, is
not covered under the prohibition, contained in the
agreement between the parties. It is also stated that since
"The Sunday Standard" is being published by "New Indian
Express Group", it is duty bound to disclose this
information to the public, which is also the statutory
requirement of Press and Registration of Books Act, 1867,
5. Relevant clauses of the compromise decree
passed by Madras High Court on 16th April, 1997, read as
under:-
"17. That Indian Express News
papers (Bombay) Limited and Traders
Limited shall be the absolute owners of
their registered titles of the Newspapers
and Magazines (including supplements)
whether currently published by them or
not in respect of the whole of India and
that Manoj Kumar Sonthalia, Indian
Express (Madurai) Limited Andhra
Prabha Limited and Sterling
Newspapers Limited shall have no claim
of any kind in relation thereto and that
Manoj Kumar Sonthalia, Indian Express
(Madurai) Limited, Andhra Prabha
Limited and Sterling Newspapers
Limited shall not at any time
whatsoever directly or indirectly use or
adopt any of the said titles in any way
whatsoever directly or indirectly or any
title similar or resembling thereto save
CS(OS) 1134/2011 Page 10 of 49
and except what is specifically permitted
in clause 19 infra.
18. That the title "Indian Express"
shall vest absolutely in Indian Express
Newspapers (Bombay) Limited as
clarified in sub clauses (i) to (iv) infra
and that Indian Express (Madurai)
Limited shall not have any right, title or
interest in respect thereof, subject to
the condition only that in the states of
Tamil Nadu, Kerala, Karnataka, Andhra
Pradesh and Orissa (hereinafter referred
to as the five States) and the Union
Territories of Pondicherry, Enam,
Andaman and Nicobar Islands and
Lakshadweep (hereinafter referred to as
the said Union Territories), Vivek
Goenka Nariman Point Building
Services & Trading Private Limited,
Indian Express Newspapers (Bombay)
Limited and Traders Limited or any
corporation owned or controlled by
them shall not directly or indirectly use
the title (in relation to the print media)
"Indian Express" or any name which
includes the words "Indian" or "
Express" or any derivative thereof save
the Financial Express, the weeklies,
Supplements or other periodicals.
i) That the title "Indian Express"
belongs to Indian Express Newspapers
(Bombay) Limited absolutely.
ii) That this title includes not only all
rights in respect of all publications of an
English language Newspaper under the
name "Indian Express", but, also in
relation to any use whatsoever whether
CS(OS) 1134/2011 Page 11 of 49
in relation to print media, electronic
media or any other medium whatsoever.
iii) That such rights and ownership is
unlimited in point of territory or time.
iv) That Indian Express (Madurai)
Limited is permitted use of the
expression "New Indian Express" only
for the publication of an English
language daily Newspaper in the
specified five states and Union
Territories and for no other purpose or
any other area or territory for any use
whatsoever.
19) That Indian Express (Madurai)
Limited, Andhra Prabha Limited Sterling
Newspapers Limited shall be the
absolute owner of all the titles of the
newspapers and magazines (including
the supplements, published by them
and that Vivek Goenka, ) Indian Express
Newspapers (Bombay) Limited, Traders
Limited, Nariman Point Building
Services & Trading Private Limited shall
have no claim of any kind in relation
thereto and that Vivek Goenka, Indian
Express Newspaper (Bombay) Limited,
Traders Limited, Nariman Point
Building Services & Trading Private
Limited, shall not at any time
whatsoever directly or indirectly use or
adopt any of the said titles in any way
whatsoever or any title similar or
resembling thereto and that Vivek
Goenka Indian Express Newspapers
(Bombay) Limited, Traders Limited,
Nariman Point Building Services &
Trading Private Limited shall have no
claim of any kind in relation thereto and
CS(OS) 1134/2011 Page 12 of 49
that in relation to the English language
publication "Indian Express" and that
having regard to clause 18 supra the
following further provisions be and are
hereby made:-
(i) "The name of Indian Express
(Madura) Limited shall be changed to
any name which does not include the
word "INDIAN", it being clarified that the
name can be „IEM or NIEM‟ or any other
abbreviation or name to the intent and
purpose that the new name may contain
the word „Express‟ but shall not contain
the word „INDIAN‟.
(ii) Manoj Kumar Sonthalia, Indian
Express (Madurai) Limited, Andhra
Prabha Limited & Sterling Newspapers
Limited shall not use the title Indian
Express (IE) at any time, anywhere.
(iii) Subject to clause 20 infra Indian
Express (Madurai) Limited/NIEM shall
be entitled to publish an English
language Daily by the name of "New
Indian Express" on the condition that
the expression "NEW" shall be in the
same line and of the same size as the
words Indian Express wherever this title
appears.
(iv) Save and except what is stated
in clause 19(iii), hereinabove neither
Indian Express (Madurai) Limited/New
Indian Express (Madurai) nor Manoj
Kumar Sonthalia or Andhra Prabha
Limited or Sterling Newspapers Limited
or any corporation owned or controlled
by them shall directly or indirectly use
the title Indian Express or any of its
CS(OS) 1134/2011 Page 13 of 49
derivatives or any title similar or
resembling thereto at any time
whatsoever, provided that the
restrictions against use of the word
"Express" (without association with the
word "Indian") shall not apply to the
sections or supplements of New Indian
Express, and in these sections or
supplements the word "Indian" shall not
be used alongside or otherwise with the
word "Express".
(20) That Indian Express Madurai
Limited, New Indian Express (Madurai)
Limited, Andhra Prabha Limited,
Sterling Newspapers Limited or Manoj
Kumar Sonthalia or any corporation,
firm or concern, directly or indirectly
owned or controlled by them or
associated with them shall not start any
English language Newspaper in any
State of India other than specified five
states and the specified union territories
in clause 18 supra for a period of 36
months from this date and that after the
expiry of the said period of 36 months, if
Indian Express (Madurai) Limited,
Andhra Prabha Limited, Sterling
Newspapers Limited or Manoj Kumar
Sonthalia start and English language
newspaper in any State of India other
than the said five states and the said
Union Territories, it shall be subject to
the further condition that it shall not
bear the name of "New Indian Express"
or "Indian Express" or any name
including the word Indian or Express or
its derivatives, and that equally, none of
them shall start any Indian Language
Newspaper which is in any way in
conflict or competition with the
CS(OS) 1134/2011 Page 14 of 49
language newspapers presently owned
by Vivek Goenka, Indian Express
Newspaper (Bombay) Limited, Traders
Limited, Nariman Point Building
Services & Trading Limited, Bharat
Katha Publication Private Limited,
Bharat Katha Offset (Private) Limited in
their respective territories, and that
however this prohibition shall not apply
to periodicals (magazines, weeklies,
etc.)."
6. The relevant clauses in the supplementary
agreement dated 12th August, 2005 read as under:
"7. IEG and NIEG agree that
notwithstanding the prohibition
contained in clause 18 (iv) and 19 (iv) of
the Memorandum of Settlement dated
05.02.1995, NIEG shall be at liberty to
publish any newspaper or periodical in
any Indian language in the five southern
States and union territories mentioned
in the Memorandum of Settlement dated
05.02.1995 using the word "Express"
(without association with the word
"Indian" or any derivative of the word
"Indian") in the title of the publication
provided, however that NIEG shall only
use the word "Express" to publish a
newspaper or periodical in an Indian
Language which is not in any manner
whatsoever in competition with an
existing publication of IEG.
8) IEG and NIEG agree that
notwithstanding the prohibition
contained in clause 18(iv) of the
Memorandum of Settlement dated
05.02.1995, NIEG shall be at liberty to
CS(OS) 1134/2011 Page 15 of 49
use its title "The New Indian Express" or
any of its derivatives/abbreviations on
the Internet for dissemination of news.
For the removal of doubts, it is clarified
that NIEG shall not have the right to
use the title "The New Indian Express"
for Television or Radio.
9) IEG and NIEG agree that in
clause 19 (iii) of the Memorandum of
Settlement dated 05.02.1995, the
restriction "on the condition that the
expression "New" shall be in the same
line and of the same size as the words
"Indian Express" wherever this title
appears" shall be dropped and
consequently NIEG shall be entitled to
use the expression "New" along with the
expression "Indian Express" in the
manner they deem fit subject to the
word "New" being legible to the naked
eye.
11) IEG and NIEG agree that the
rights and restrictions enumerated in
clause 18 as well as clause 19 of the
Memorandum of Settlement dated
05.02.1995 are hereby re-affirmed and
shall remain in full force and effect at all
times except clause 18 (iv) and clause
19 (iii), (iv) and (v) which stand modified
by clauses 6 to 9 hereinabove.
7. The case of the plaintiff is based upon (i)
infringement of its registered trademark; (ii) passing off
and (iii) breach of the contractual obligations, including
CS(OS) 1134/2011 Page 16 of 49
the compromise decree dated 16th April, 1997 passed by
Madras High Court.
8. It is an admitted case that "Indian Express" is
the registered trademark of the plaintiff, whereas "New
Indian Express" is the registered trademark of defendant
No. 1.
9. Section 28 of Trademarks Act, 1999, to the
extent it is relevant, provides that where two or more
persons are registered proprietors of trademarks, which
are identical with or nearly resemble each other, the
exclusive right to the use of any of those trademarks shall
not (except so far as their respective rights are subject to
any conditions or limitations entered on the register) be
deemed to have been acquired by any one of those
persons as against any other of those persons merely by
registration of the trade marks.
Hence, no infringement of the trademark "Indian
Express" by the defendants is made out on account of use
of trademark "New Indian Express" by them.
10. Coming to the passing off, a perusal of various
issues of "The Sunday Standard" would show that below
CS(OS) 1134/2011 Page 17 of 49
the masthead, the defendants have used the expressions
"Become a Fan on Facebook: facebook.com
/newindianexpress", "Follow us on Twitter:
twitter.com/newindianexpress", Catch Us on the Go:
m.expressbuzz.com" and "Stay Wired:
www.expressbuzz.com". In the issue of 3rd April, 2011, on
the left upper side of column I, defendant No. 2 Manoj
Kumar Sonthalia has described himself as the Chairman,
The New Indian Express Group. On page 10 under the
caption "Caution", the logo, i.e., "The New Indian Express"
along with expression "The New Indian Express Group"
has been used. Also the Executive Editor Shri Ravi
Shankar has been described as the Executive Editor of
the New Indian Express, whereas in the right side column
on page 8, author Mr V Sudarshan has been described as
the Executive Editor of "The New Indian Express". The e-
mail IDs of Mr Ravi Shankar and Mr V Sudarshan have
been published and the e-mail ID contains the expression
"newindianexpress". There is an in house advertisement
on page 15 of "The Sunday Standard" and this
advertisement bears the name and logo "The New Indian
CS(OS) 1134/2011 Page 18 of 49
Express Group". On page 1 of the issue dated 10th April,
2011, the expression "Express News Service" is used as
byline presumably to indicate the source of the news. On
page 2, there is an advertisement of defendant No. 1
which carries the logo and expression "The New Indian
Express Group". The word "Express" has been used on
page 12 and 13 along with the words "A marketing
initiative"; on page 15, there is an in house advertisement
of "The Sunday Standard" similar to the advertisement in
the earlier issue. In the supplement, e-mail ID of the
reporter V. Prabhakar has been published and the e-mail
ID contains the expression "New Indian Express".
Similar use of the expression "New Indian Express is
found in the issues dated 17th April, 2011 and 1st May,
2011.
11. In a case of passing off, what is relevant is as to
whether there is any likelihood of the defendant being
able to pass off his goods/services as those of the plaintiff.
In the context of the case before this Court what is to be
seen is whether the defendant on account of use of the
expression "New Indian Express" in the manner it has so
CS(OS) 1134/2011 Page 19 of 49
far been used, is passing off the newspaper "The Sunday
Standard" in territories other than five southern States
and the Union Territories specified in the agreements
between them as a newspaper coming from the stable of
the plaintiff-company or "Indian Express Group". If the
defendant is able to show that on account of the title, get
up lay out, etc. of the newspaper "The Sunday Standard",
there is no reasonable probability of the reader getting
confused with regard to the ownership/origin of the
newspaper, The Sunday Standard no case of passing off
would be made out. Another factor which needs to be
considered by the Court is whether there is an element of
deceit involved in the way the expression "Indian Express
Group" has been used in the newspaper "The Sunday
Standard".
12. Neither "Indian Express Group" nor "New Indian
Express Group" by itself is a legal entity. The expression
"Indian Express Group", to my mind is being used in
order to convey the commonality of the
ownership/management of the newspapers which are
published by companies/business entities having same or
CS(OS) 1134/2011 Page 20 of 49
common ownership/management. Similarly, the
expression "New Indian Express Group" denotes common
ownership/management of the companies/business
entities which together form what is called "New Indian
Express Group".
The expression "New Indian Express Group" is
not altogether prohibited to be used for the defendant
under the agreements between the parties. Admittedly,
the supplementary agreement dated 12th August, 2005
permitted use of the expression "New Indian Express" or
any of its derivatives/abbreviations on the Internet.
Admittedly, the defendants were also permitted, under the
first agreement itself, to publish an English daily
newspaper in five southern States and Union Territories
specified in the agreement and they were permitted to use
the expression "New Indian Express" for that purpose. The
only embargo was on use of the words "Indian" or
"Express" or their derivatives outside the southern
territories and Union Territories specified in the
agreement dated 05th February, 1995.
CS(OS) 1134/2011 Page 21 of 49
A perusal of various issues of the newspaper
"The Sunday Standard" would show that the title of the
newspaper appears on the top of the front page in bold
capital letters which are quite big in size. As against this,
the expression "New Indian Express" appears in very very
small size just under the masthead and leaves to be
intended to invite the readers to defendant‟s website
www.expressbuzz.com/www.mexpressbuzz.com or to join
it on Facebook/Twitter. Under the supplementary
agreement dated 12th August, 2005, defendant No. 1 was
permitted to use the title "New Indian Express" or any of
its derivatives/abbreviations on the Internet and this use
does not have and cannot have any geographical
limitations. By inviting the readers to join to the website
www.expressbuzz.com / www.mexpressbuzz.com or to
join them on Facebook or Twitter, the defendants are only
promoting their Internet business in exercise of the
Internet rights given to them under the supplementary
agreement. To my mind, no exception can be taken to
such promotion of the Internet business of the defendant
under the name "New Indian Express" by the plaintiff.
CS(OS) 1134/2011 Page 22 of 49
I fail to appreciate the contention of the learned
Counsel for the plaintiff that the agreements between the
parties prohibits the defendants from
promoting/advertising their business outside the five
southern States/Union Territories specified in the
agreement, if it involves use of the express "New Indian
Express". Admittedly, the defendants are entitled to
publish an English daily under the name "New Indian
Express" in the southern States and Union Territories
specified in the agreements. The right to carry on a
business includes the right to advertise and promote that
business. There was no prohibition, in the agreements
between the parties, against promotion/advertisements
even of the newspaper "New Indian Express" outside the
southern States and Union Territories specified therein.
Hence, if the defendant want to advertise those
newspapers outside the specified southern States/Union
Territories specified in the agreement, by giving
advertisements in other newspapers or on television or
radio, that, to my mind, would not constitute a violation
of the agreements dated 05th February, 1995 and
CS(OS) 1134/2011 Page 23 of 49
supplementary agreement dated 12th August, 2005 and in
any case would not amount to passing off the newspaper
of the defendant as that of the plaintiff.
As regards defendant No. 2 describing himself as
the Chairman of "New Indian Express", the editor
describing himself as the editor of the "New Indian
Express" and the columnist describing himself as the
editorial advisor of "New Indian Express", it is not in
dispute that these persons are actually holding these
posts in the newspaper "New Indian Express" and
defendant No. 2 is actually the Chairman of the "New
Indian Express Group". The words "New Indian Express"
have been written in a very small print in the articles and
there is no attempt to make them eye-catching or
prominent. Therefore, it cannot be said that there is an
element of deceit or dishonesty involved in using the
expression "New Indian Express" while describing these
persons in the newspaper "The Sunday Standard". In my
view, no reader of "The Sunday Standard" is likely to
confuse "The Sunday Standard" as a newspaper belonging
to the plaintiff-company or "Indian Express Group" merely
CS(OS) 1134/2011 Page 24 of 49
because of the editor/editorial/advisor/columnist of "New
Indian Express" describing himself as such in the
column/editorial written by him in "The Sunday
Standard". To take an example, if a person working as
editor/columnist/reporter in Indian Express were to write
a column in "The Sunday Standard" and if he is described
as the editor/columnist/reporter of "Indian Express", that
would not amount to passing off the newspaper "The
Sunday Standard" as the newspaper belong to the "Indian
Express Group" and would not be in violation of the
agreement between the parties. To take an example if a
reporter/columnist of say Times of India/Hindustan
Times Group were to write a column/report/story/article
in "The Sunday Standard", can it be said by the owners of
Times of India/Hindustan Times that by doing so, the
defendants were passing off the newspaper "The Sunday
Standard" as a newspaper belonging to the Times of India
Group/Hindustan Times Group. The answer to this
question can only be in the negative. If a
columnist/reporter of Times of India/Hindustan Times
describing himself as such while writing a story/article in
CS(OS) 1134/2011 Page 25 of 49
"The Sunday Standard" does not amount to passing off
the newspaper as that of Times of India Group/Hindustan
Times Group, it cannot be said that the defendants by
using the expression "New Indian Express" while
describing the editor/editorial advisor/columnist of "New
Indian Express" are trying to pass off their newspaper as
a newspaper belonging to the "Indian Express Group".
As regards advertisements, since these were
advertisements of "New Indian Express Group", I fail to
appreciate how such advertisements can create confusion
in the mind of the reader that the newspaper in which the
advertisement is published belongs to "Indian Express
Group". As noted earlier, "New Indian Express" is
altogether different from "Indian Express Group", and has
been recognized by the plaintiff itself while publishing the
supplement "Express International Aero India" where
columns of both the groups appeared along with their
respective logos. Hence, advertisements of the vacancies
in "New Indian Express" or even advertisement of
newspaper published by "New Indian Express Group"
would not amount to passing off the newspaper "The
CS(OS) 1134/2011 Page 26 of 49
Sunday Standard" as a newspaper belonging to "Indian
Express Group" and will not be violative of the agreements
executed between the parties. In my view, if the
defendants advertise the newspaper published by them
from any of the five southern State/Union Territories
specified in the agreements in any newspaper whether it
is Times of India or Hindustan Times or The Sunday
Standards that would neither amount to passing off nor
would that be in violation of the agreements between the
parties. Same would be the position if the advertisements
of other newspapers are published in "The Sunday
Standard" irrespective of whether it is advertisement of
"Hindustan Times" or "Times of India" or "New Indian
Express". If tomorrow, the plaintiff advertises its
newspaper "Indian Express" in any of the five southern
States/Union Territories specified in the agreements, in a
newspaper published from these southern States/Union
Territories, can it be said that by doing so the plaintiff was
trying to pass off its newspaper as that of "New Indian
Express Group". The answer again would be in negative.
Therefore, to my mind, such advertisements or use of the
CS(OS) 1134/2011 Page 27 of 49
expression "New Indian Express" or "New Indian Express
Group", the way they have been used so far do not
amount to passing off and also do not constitute the
violation of the agreements between the parties.
13. It was pointed out by the learned counsel for the
plaintiff that under the agreements, the defendants are
precluded from using the expression "Indian" or
"Express", whereas the plaintiff is precluded only from
using this expression as a title of the newspaper in the
specified southern States/Union Territories which,
according to the learned counsel, precludes the defendant
from using the expression "New Indian Express" in any
form in any manner and for any purpose, outside the
southern States/Union Territories specified in the
agreement. In my view, the construction, suggested by
the learned counsel for the plaintiff, is not borne out from
the terms of the agreement and cannot be accepted. Since
the defendants were permitted to bring out the newspaper
under the name "New Indian Express" from any of the
southern States/Union Territories specified in the
agreement, no embargo can be placed on its rights to
CS(OS) 1134/2011 Page 28 of 49
advertise the newspaper "New Indian Express" outside the
southern States/Union Territories. If I accept the
construction, suggested by the learned counsel for the
plaintiff that would mean that the defendants cannot
advertise the newspaper "Indian Express" even on
television and radio because television and radio have
pan-India reach and their audience/viewers are not
confined to any particular State/region. Therefore,
advertisement of "New Indian Express" or "New Indian
Express Group" in the newspaper "The Sunday Standard"
outside the southern States/Union Territories specified in
the agreement between the parties cannot be objected to
by the plaintiff.
14. Even if it is presumed that the agreements
executed between the parties precluded the defendants
from using the expression "New Indian Express" in any
form and in any manner, except in the southern
States/Union Territories specified in the agreement
between the parties, there is ample material on record to
show that the plaintiff acquiesced in use of the expression
"New Indian Express" as well as the logo of "New Indian
CS(OS) 1134/2011 Page 29 of 49
Expressing Group" outside the southern States/Union
Territories specified in the agreement and therefore is now
estopped from objecting to such a use in the newspaper
"The Sunday Standard". A perusal of the supplement
"Express International Aero India" would show that the
name "New Indian Express" as well as the logo of "New
Indian Express Group" was prominently displayed in the
publication. Admittedly, the circulation of this
supplement was not confined to the southern
States/Union Territories specified in the agreements
between the parties and it was an All India Supplement.
In fact, in the supplement "Express International Aero
India" the expression "New Indian Express Group" has
given more prominence than the expression "Indian
Express Group".
Admittedly, the advertisements of the defendants
which carried their logo were published in various
newspapers published by the plaintiff. The copies of
invoice, issued by the plaintiff-company for carrying these
advertisements have been placed on record. A perusal of
"Indian Express" dated 15th July, 2005 would show that it
CS(OS) 1134/2011 Page 30 of 49
carried an advertisement of Students South, a publication
of the "New Indian Express Group" and name as well as
the logo of the defendant were prominently displayed in
the newspaper. The same advertisement was published in
Loksatta dated 15th July, 2007 which is a publication of
the plaintiff-company. There is yet another advertisement
of the "New Indian Express" published in "Indian Express"
Mumbai dated 02nd May, 2005. This advertisement was
also published in the Financial Express dated 02nd May,
2005 published from Mumbai/Kochi. I fail to appreciate
how the plaintiff can object to such advertisements being
published in "The Sunday Standard" which is defendants
own newspaper when they themselves have been
publishing similar advertisements in their newspapers
published outside the southern States/Union Territories,
specified in the agreements between the parties.
A perusal of an e-mail dated 10th October, 2008
from Mr Rajiv Girhotra of the plaintiff would show that he
had ensured prominent display of New Indian Express
logo in the Aero India supplement and "New Indian
Express Group", Hyderabad was named on the
CS(OS) 1134/2011 Page 31 of 49
supplement masthead. A joint letter dated 17th January,
2005 was written by Ratanbali Majumdar of the plaintiff-
company and Bhaskar Gati Roy of defendant No. 1 to
Pressman Advertising, whereby they agreed that the total
business given to plaintiff-company and defendant No. 1-
Company would be included for calculations of incentives.
The letter bears name and logo of the "New Indian
Express Group" as well as "Indian Express Group" and
was sent outside the southern States/Union Territories
mentioned in the agreement between the parties. This
letter indicates that the plaintiff-company had no
objection to use of the expression "New Indian Express" as
well as its log outside the southern States and Union
Territories mentioned in the agreement between the
parties. Similar letter have been written to Group M,
Mumbai Concept Communications Palm Advertising and
Marketing. In fact, the plaintiff-company also carried
advertisements of "Indian Express" in the Financial
Express dated 22nd April, 2011 published from the
Chennai/Kochi and Financial Express dated 19th May,
2011 published from Hyderabad which are amongst the
CS(OS) 1134/2011 Page 32 of 49
southern States/Union Territories, though, they were not
to use the title "Indian Express" in these territories. This
would show that the plaintiff has been carrying
advertisement of "Indian Express" in the in-house
newspapers published from the southern States/Union
Territories reserved for the defendants. Though it was the
case of the plaintiff is that under the agreement, they were
precluded from using the title "New Indian Express" and
not the expression "Indian Express" whereas the
defendant No. 1 was precluded from using the expression
"Indian" or "Express" outside specified States/Union
Territories, that, to my mind, would make no difference as
far as the case of the plaintiff is based on passing off. If
advertisement of "New Indian Express Group" in "The
Sunday Standard" is to be taken as passing off of the
newspaper, "The Sunday Standard", as a newspaper
belonging to the "Indian Express Group", it is difficult to
dispute that publication of advertisement of the "Indian
Express" would also amount to passing off of the
newspaper "Indian Express" as a newspaper belong to
"New Indian Express", in the southern States/Union
CS(OS) 1134/2011 Page 33 of 49
Territories which are reserved for the defendant No. 1-
company.
15. Ramdev Food Products Pvt. Ltd. v. Arvindbhai
Rambhai Patel and Ors (2006) 8 SCC 726, Supreme Court,
inter alia, observed as under:-
"103. Acquiescence is a facet of delay.
The principle of acquiescence would
apply where: (i) sitting by or allow
another to invade the rights and
spending money on it; (ii) it is a
course of conduct inconsistent with
the claim for exclusive rights for
trade mark, trade name, etc.
106. The defence of acquiescence,
thus, would be satisfied when the
plaintiff assents to or lay by in
relation to the acts of another person
and in view of that assent or laying
by and consequent acts it would be
unjust in all the circumstances to
grant the specific relief."
In Hindustan Pencils (P) Limited vs. India
Stationery Products Co.& Another, AIR 1990 Delhi 19,
this Court, inter alia, express the following view:-
"As already noted, acquiescence may
mean an encouragement by the plaintiff
to the defendant to use the infringing
mark. It is as if the plaintiff wants the
CS(OS) 1134/2011 Page 34 of 49
defendant to be under the belief that the
plaintiff does not regard- the action of the
defendant as being vocative of the
plaintiff's rights. Furthermore, there
should be a tacit or an express assent by
the plaintiff to the defendant's using the
mark and in a way encouraging the
defendants to continue with the business.
In such a case the infringer acts upon an
honest mistaken belief that he is not
infringing the trade mark of the plaintiff
and if, after a period of time when the
infringer has established the business
reputation, the plaintiff turns around and
brings an action for injunction the
defendant would be entitled to raise the
defense of acquiescence. Acquiescence
may be a good defense even to the grant
of a permanent injunction because the
defendant may legitimately contend that
the encouragement of the plaintiff to the
defendant's use of the mark in effect
amounted to the abandonment by the
plaintiff of his right in favor of the
defendant and, over a period of time, the
general public has accepted the goods of
the defendant resulting in increase of its
sale. It may, however, be stated that it
will be for the defendant in such cases to
prove acquiescence by the plaintiff.
Acquiescence cannot be inferred merely
by reason of the fact that the plaintiff has
not taken any action against the
infringement of its rights."
In Power Control Appliances vs. Sumeet
Machines Pvt. Ltd. (1994) 2 SCC 448, Supreme Court, inter
alia, observed as under:-
"Acquiescence is sitting by, when another
CS(OS) 1134/2011 Page 35 of 49
is invading the rights and spending
money on it. It is a course of conduct
inconsistent with the claim for exclusive
rights in a trade mark, trade name etc. It
implies positive acts; not merely silence
or inaction such as is involved in laches.
In Harcourt v. White10 Sr. John Romilly
said: "It is important to distinguish mere
negligence and acquiescence." Therefore,
acquiescence is one facet of delay. If the
plaintiff stood by knowingly and let the
defendants build up an important trade
until it had become necessary to crush it,
then the plaintiffs would be stopped by
their acquiescence. If the acquiescence in
the infringement amounts to consent, it
will be a complete defence as was laid
down in Mouson (J. G.) & Co. v. Boehm".
The acquiescence must be such as to
lead to the inference of a licence sufficient
to create a new right in the defendant as
was laid down in Rodgers v. Nowill12.
Delay simpliciter may be no defence to a
suit for infringement of a trade mark, but
the decisions to which I have referred to
clearly indicate that where a trader allows
a rival trader to expend money over a
considerable period in the building up of
a business with the aid of a mark similar
to his own he will not be allowed to stop
his rival's business. If he were permitted
to do so great loss would be caused not
only to the rival trader but to those who
depend on his business for their
livelihood. A village may develop into a
large town as the result of the building
up of a business and most of the
inhabitants may be dependent on the
business. No hard and fast rule can be
laid down for deciding when a person
has, as the result of inaction, lost the
right of stopping another using his mark.
CS(OS) 1134/2011 Page 36 of 49
As pointed out in Rowland v. Michell15
each case must depend on its own
circumstances, but obviously a person
cannot be allowed to stand by indefinitely
without suffering the consequence."
In Warner Bros. Entertainment Inc. & Anr. v.
Harinder Kohli & Ors., 2008 (38) PTC 185 (Del.), this Court
observed that if the plaintiffs stood by knowingly and let the
defendants build up their business or venture, then they
would be estopped by their acquiescence from claiming
equitable relief. It was further observed that acquiescence
on the part of the plaintiffs would amount to waiver, if not
abandonment of their right. The Court was of the view that
if, according to the plaintiffs, the defendants had
dishonestly adopted a title or mark akin to that of plaintiffs,
it was imperative upon them to have nipped the evil in the
bud by forwarding to the defendants a legal notice of CEASE
AND DESIST. In the case before this Court, the plaintiff has
gone much beyond inaction and laches and has in fact
contributed to the use of the expression "New Indian
Express" outside the specified southern States and
territories and has thus taken an active role in promoting
this expression outside these States and Union Territories.
CS(OS) 1134/2011 Page 37 of 49
The plaintiff by its acts and deeds waived its right, if any to
use of the expression, "New Indian Express" by the
defendants and now estopped from objecting to its use in
"The Sunday Standard".
16. The learned Counsel for the plaintiff has
submitted a compilation of a number of decisions, though
most of them were not referred during the course of
arguments. The compilation contains decisions rendered
in Mahashian Di Hatti Ltd. v. Mr. Raj Niwas Proprietor
of MHS Masalay 181 (2011) DLT 55, Midas Hygiene
Industries P. Ltd. & Anr. v. Sudhir Bhatia & Ors. 2004
(28) PTC 121(SC), Doctor Morepen Limited v. Yash
Pharma Laboratories Limited 2007 (35) PTC 357 (Del.),
Bawa Masala Company v. Bawa Masala Co. P. Ltd. &
Ors. 2004 (28) PTC 524 (GUH) (DB), Bal Pharma Ltd. v.
Centaur Laboratories Pvt. Ltd. & Anr. 2002 (24) PTC
226 (BOM)(DB), Bawa Jagmohan Singh & Ors. v. The
Registrar of Trade Marks and Ors. 2002 (24) PTC 417
(Del.), Marie Stops Int. v. Parivar Seva Sanstha 2010
(43) PTC 141 (Del.), T.V.Venugopal v. Ushodaya
Enterprises Limited & Anr. (2011) 4 SCC 85, Laxmikant
CS(OS) 1134/2011 Page 38 of 49
V. Patel v. Chetanbhat Shah & Anr. AIR 2002 SC 275,
Structural Waterproofing & Ors. Mr. Amit Gupta & Ors.
93 (2001) DLT 496, Ramdev Food Products (P) Ltd. v.
Arvindbhai Rambhai Patel & Ors. (2006) 8 SCC 726,
M/s Power Control Appliances and Ors v. Sumeet
Machines Pvt. Ltd. (1994) 2 SCC 448, N.R.Dongre &
Ors. v. Whirlpool Corporation & Anr. (1996) 5 SCC 714,
Atlas Cycles (Haryana) Ltd. v. Atlas Products Pvt. Ltd.
146 (2008) DLT 274 (DB) & Mahendra & Mahendra
Paper Mills Ltd. v. Mahindra and Mahindra Ltd. AIR
2002 SC 117.
17. In Mahashian Di Hatti Ltd. (supra), the plaintiff
was a registered proprietor of trademark/logo "MDH"
which it was using in respect of spices. The defendant in
that case was found using the logo "MHS". Both the
marks were in heaxagon device with red colour
background on the carton. The mark of the defendant
was not a registered mark. Considering the similarity
between the two marks it was held that the defendant had
infringed the registered trademark of the plaintiff. In
Midas Hygiene Industries P. Ltd. (supra), which was a
CS(OS) 1134/2011 Page 39 of 49
case of infringement, Supreme Court was of the view that
in case of infringement injunction should normally follow
and mere delay in seeking injunction would not be
sufficient to defeat grant of injunction in such cases. In
Doctor Morepen Limited (supra), the plaintiff was using
the trademark "LEMOLATE" which it had purchased from
the defendant for consideration. The defendant started
using the trademark "LEMOTAB". It was held that while
accepting consideration for the trademark "LEMOLATE",
the defendant had agreed not to use a similar trademark
and therefore it was not open to it to use the trademark
"LEMOTAB". In Bawa Jagmohan Singh (supra) a
partnership firm was the proprietor of the trademark.
There was a settlement between petitioner No.1 on the
one hand and respondents No. 3 to 5 on the other, which
was recorded in a Memorandum of Understanding dated 17th August, 2000. Under the MoU, petitioner No.1 retired from the firm but was allowed to carry on business of a company named Bawa Masala Company Private Limited. The trademarks were being used by the firm as well as by the company. The MoU provided that both the CS(OS) 1134/2011 Page 40 of 49 parties could continue to use the trademark but their territories were distributed. The Registrar of Trade Marks, without issuing notice to petitioner No.1 removed his name from the register of trademarks. This Court was prima facie of the view that the valuable rights of petitioner No.1 in the trademark could not have been taken away without giving an opportunity of hearing to him. The order passed by the Registrar was therefore stayed by the Court. The decision in the case of Bawa Masala Company (supra) was rendered in a subsequent litigation between these very parties. It was noted that the parties had agreed to use the disputed trademark in the territories specified under a MoU. Since the parties were suspicious of each other, it was directed that they should mention on the cartons that they were meant for sale in a particular territory or were not meant for sale in a particular territory. In Bal Pharma Ltd. (supra), the respondents were the registered proprietors of the trademark which they had coined. The appellant failed to show any prior user. It was therefore held that defence under Section 33(1)(b) of the Trade Marks Act was not CS(OS) 1134/2011 Page 41 of 49 available to him. In Marie Stops Int. (supra), the plaintiff which was the owner of trademark "Marie Stopes" had engaged the defendant in various Health Care Projects in India and had permitted it to use the trademark till 2003. It was held that use of the trademark by the defendant after 2003 was illegal. In T.V.Venugopal (supra), the appellant was carrying business of incense sticks (agarbatis). He adopted the mark "Ashika‟s Eenadu" and devised a label which also contained the word "Eenadu". The appellant also obtained registration of the aforesaid trademark. The respondent which was publishing a newspaper in Telugu language titled as "Eenadu", filed a suit alleging infringement of its copyright and passing off. The appellant took the plea that "Eenadu" was a generic word. During the Course of the judgment, Supreme Court observed that assuming that the said word is a generic word yet if it is found by the Court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for a considerable time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent users, the Court would CS(OS) 1134/2011 Page 42 of 49 grant an injunction to protect the business of the plaintiff. It was further observed that the protection qua common field of activity has now been expanded and interpreted to mean extending to other product lines than what is manufactured by the plaintiff and hence common field of activity is not restricted to same or similar products but extends to all other products, the test being that of "common class of consumers". The reason given by the Court was likelihood of "common class of consumers"
identifying the defendant‟s goods as originating from the source as the plaintiff. In Laxmikant V. Patel (supra), Supreme Court observed that an action of passing off will lie wherever defendant‟s name or its intended name is calculated to deceive and to divert business from the plaintiff or occasion a confusion between the two businesses. During the course of judgment, Supreme Court inter alia observed as under:
A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services as associated with a person acquire a reputation or goodwill which becomes a property which is protected CS(OS) 1134/2011 Page 43 of 49 by Courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business.
Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it result in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.
In Structural Waterproofing (supra) there was a Memorandum of Understanding between the parties and the Court found that each and every term of the document had been acted upon and given effect to by both the parties. The court was of the view that the plaintiff was not entitled to interim injunction against the terms of the settlement. In N.R.Dongre & Ors. (supra), Supreme Court inter alia observed as under: CS(OS) 1134/2011 Page 44 of 49
An infringement action is available where there is violation of specific property right acquired under and recognized by the statute. In a passing off action, however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit.
In Atlas Cycles (supra), the plaintiff was the registered proprietor of the trademark "Atlas" since 1952. Defendant No.1 Atlas Products Private Limited, which came to be incorporated in the year 1995, started manufacturing bicycles in February, 2002. The defendant took the plea of acquiescence on the ground that no legal action was initiated by the plaintiff between 1995 and 2002 despite the name „Atlas" having been used as its corporate name during this period. The Court was of the view that no case of acquiescence was made out since the defendant started the business of manufacture and sale of CS(OS) 1134/2011 Page 45 of 49 cycles only in February, 2002 and the plaintiffs filed suit immediately thereafter within a couple of months. The defendants were therefore restrained from using the word "Atlas" in their corporate/trade name in respect of bicycles and bicycles parts. In Mahendra and Mahendra Paper Mills Ltd. (supra), the plaintiff Mahindra and Mahindra Paper Mills Ltd. filed a suit seeking injunction against use of the corporate name Mahendra and Mahendra on the ground that the name was deceptively similar to its name. The defendant claimed that the name "Mahendera" was a household name in Gujarat and its products were in no way similar to the products of the plaintiff and there was no overlapping in the business of the two companies. The contention was however rejected by the Supreme Court which noticed that the plaintiff had been using the word "Mahindra" and "Mahindra and Mahindra" for a long span of time extending over five decades and therefore the name had acquired distinctiveness and a secondary meaning in business or trade circles. People had come to associate the name of Mahindra with a certain standard of goods and services CS(OS) 1134/2011 Page 46 of 49 and any attempt by any person to use this name would in probability create an impression of connection with the plaintiffs‟ group of companies.
None of these judgments apply to the facts of the case before this Court where the defendants were expressly permitted to use the name "New Indian Express"
though only in southern States and Union Territories specified in the agreement between the parties and use of the expression "New Indian Express" in the manner it has so far been used by the defendants is not likely to cause any confusion amongst the readers and there is no reasonable possibility of the newspaper "The Sunday Standard" being passed off as a newspaper belonging to Indian Express Group.
For the reasons given in the preceding paragraphs, I find no valid ground to grant injunction against use of the expressions "New Indian Express"
and/or "New Indian Express Group" by the defendants. However, to rule out any possibility of an unwary reader getting a little bit confused with respect to the group to which the newspaper "The Sunday Standard" belongs, I CS(OS) 1134/2011 Page 47 of 49 direct the defendants to use the word Madurai while using the expression "New Indian Express Group" and thus replace the expression "New Indian Express Group" by the expression "New India Express Group, Madurai". I also direct the defendants to use the name of the place of publication of the newspaper "New Indian Express", along with the expression "New Indian Express", wherever they refer to their newspaper "New Indian Express". This direction could apply only to the publications, which are published from outside the southern States and Union Territories, specified in the agreements between the parties.
Since prima facie, I have not found any merit in the case set up by the plaintiff, I need not examine the contention of the defendants that the remedy of the plaintiff against alleged contravention of the consent decree passed by Madras High Court lies in that Court and not before this Court.
The observations made in this order being prima facie having been made only for the purpose of deciding CS(OS) 1134/2011 Page 48 of 49 this application, would not affect the decision of the suit on merits.
The application stands disposed of in terms of this order.
CS(OS) No. 1134/2011
Replication can be filed within four weeks. List before the Joint Registrar on 01st December, 2011 for admission/denial of the documents and before the Court on 12th April, 2012 for framing of issues.
(V.K. JAIN) JUDGE OCTOBER 10, 2011 bg/vn CS(OS) 1134/2011 Page 49 of 49