Mumbai : The Intellectual Property Appellated Board (IPAB) has decided to take up a rectification application of The Indian Express Ltd against the trade mark The New Indian Express, registered by Express Publications Madurai Ltd, for final hearing soon. A miscelleneous petition (MP) filed by Mumbai-based The Indian Express to expedite the hearing appeared today on which the IPAB has ordered fixing a date for final hearing.
The development comes as the latest in the two-decade long disputes between both the parties, who are relatives in the Goenka family, over the brand and ownership of the name.
The Indian Express, based in Mumbai, has filed the rectification application with the IPAB against the Trade Mark The New Indian Express, registered by the Madurai-based Express Publications Madurai, which is currently running the newspaper ‘The New Indian Express’ in South India and Orissa. The Mumbai-based Group alleged that the trade mark is against the memorandum of settlement entered between the two parties in late 1990s.
The IPAB coram comprising of Chairman Justice K N Basha and Technical Member (Trade Marks) Sanjeev Kumar Chaswal observed that a settlement was arrived at, wherein the Express Publications was allowed to use the trade mark under challenge, which is The New Indian Express, within a specified five states and the grievance of applicant is that the latter is exceeding and has also applied for a seperate independent impugned registration on trade mark.
Justice K N Basha, after hearing both the parties related to the miscelleneous petition, said, “It is seen that it is a matter of tussle between close relatives namely the adopted son and the grant son in respect of the use of the Trade Mark The New Indian Express.” He added that the main question involved is whether Express Publications is having the right of permissive use of the trade mark under challenge or it is having an exclusive right of using the said trade mark. The IPAB directed the Registry to post the matter for final hearing on a date after two months.
The counsel appeared for Mumbai-based The Indian Express Ltd informed the IPAB that a dispute filed by the company against the Madurai Group related to the issue is pending with the Delhi High Court. He said that as per the Memorandum of Settlement, the latter could use the title only in five States.
The counsel appeared for The New Indian Express agreed that the Memorandum of Settlement allows it to use the title only in certain places. He added that the trade mark under challenge was registered in 1999 and even after that both the parties were sharing the advertisement.
As per the Memorandum of Settlement between both the parties, Express Publications Madurai was allowed to use the title The New Indian Express in Tamil Nadu, Kerala, Karnataka, Andhra Pradesh (undivided) and Orissa, apart from the Union Territories in Southern part of the country.
Indian Express Newspapers (Bombay) Limited, which later came to be named as Indian Express Newspapers (Mumbai) Limited, was founded by Ramnath Goenka, and had been publishing newspapers, including its flagship newspaper Indian Express.
After death of Goenka on October 5, 1991, there were numerous litigations amongst his heirs, including his adopted son Viveck Goenka, grand son Manoj Kumar Sonthalia and daughter-in-law Saroj Goenka.
According to an order by the Delhi High Court in 2011, a settlement dated February 5, 1995 was reached between the group of Viveck Goenka, the group of Manoj Kumar Sonthalia and group of Smt Saroj Goenka and it was under this settlement the Express Publications Madurai was entitled to use the title The New Indian Express in the five states and Union Territories in South India. A decree dated April 16, 1997 was passed by Madras High Court in terms of the settlement. This settlement was modified by a supplementary agreement dated August 12, 2005, added the document.