Case Note & Summary
The Plaintiffs, The Indian Express Limited and Indian Express Newspapers (Mumbai) Ltd., are the owners and proprietors of the well-known 'Indian Express' group of newspapers and publications. They sought an injunction against the Defendant, Chandra Prakash Shivhare, restraining him from infringing their registered trade mark 'Indian Express'. The Defendant, a resident of Morena, Madhya Pradesh, began publishing a newspaper with the name 'Indian Express' written in Devnagari script. The Plaintiffs claimed that this amounted to infringement of their registered trade mark and passing off. The Court noted that the Plaintiffs have been publishing the Indian Express newspaper since 1932, with extensive circulation and registrations under the Trade Marks Act, 1999 and the Press and Registration of Books Act, 1867. The Defendant argued that his use was in a different script and in a different geographical area, and that he had obtained registration from the RNI. The Court rejected these arguments, holding that the use of the mark in Devnagari script is phonetically and visually similar to the registered mark, and that the Defendant's adoption was not honest. The Court granted an injunction restraining the Defendant from using the mark 'Indian Express' or any deceptively similar mark.
Headnote
A) Trade Mark Law - Infringement - Registered Trade Mark - Use of identical mark in different script - The Plaintiffs, owners of the well-known newspaper 'Indian Express', sought injunction against Defendant using 'Indian Express' in Devnagari script for a newspaper. The Court held that the use of the mark in Devnagari script, being phonetically and visually similar, constitutes infringement of the registered trade mark under the Trade Marks Act, 1999. The Defendant's claim of honest concurrent use was rejected as the use was not honest and the Defendant had no legitimate explanation for adopting the mark. (Paras 1-29) B) Trade Mark Law - Passing Off - Goodwill and Reputation - The Plaintiffs have established extensive goodwill and reputation in the mark 'Indian Express' since 1932. The Defendant's use of the identical mark in Devnagari script is likely to cause confusion and deception among the public, amounting to passing off. (Paras 3-5, 29) C) Press and Registration of Books Act, 1867 - Title Registration - The Plaintiffs have registered the title 'The Indian Express' with the Registrar of Newspapers for India (RNI) under the Press Act. This registration is a statutory recognition of the Plaintiffs' title and does not confer any right to use a deceptively similar title. (Para 5)
Issue of Consideration
Whether the use of the mark 'Indian Express' in Devnagari script by the Defendant amounts to infringement of the Plaintiffs' registered trade mark 'Indian Express' in English script, and whether the Plaintiffs are entitled to an injunction.
Final Decision
The Court granted an injunction restraining the Defendant from using the mark 'Indian Express' or any deceptively similar mark in any script, including Devnagari, in relation to newspapers or publications. The suit was decreed in favor of the Plaintiffs.
Law Points
- Trade mark infringement
- Passing off
- Registered trade mark
- Deceptive similarity
- Phonetic equivalence
- Script difference not a defence
- Injunction
- Press and Registration of Books Act
- 1867
- Trade Marks Act
- 1999
