The ‘Indian Express’ trademark infringement conundrum

This post summarizes a recent case decided by Justice Gautam Patel of the Bombay HC, where the question of whether the use of a title registered only with the Registrar of Newspapers for India (RNI) under the Press and Registration of Books Act, 1867 (the ‘Press Act’) can amount to infringement of an identical title registered under the Trade Marks Act, 1999, was tackled. The Court, ruling in favour of the plantiffs, held that the mark had been infringed, and restrained the defendant from using the plaintiffs’ ‘Indian Express’ mark.

 Facts

 The Plaintiffs are owners and proprietors of the ‘Indian Express’ group, which has been publishing the ‘Indian Express’ newspaper since 1932, in English as well as regional languages. The title has been registered under Class 16 of the Trademarks Act in both English and Devnagari, as well as under with the RNI. The plaintiff’s newspaper enjoys widespread publication across most cities in Madhya Pradesh, except Morena. While the Plaintiff’s mark, ‘Indian Express’ was registered in English on 23^rd June, 2004 with a registration date of 23^rd June, 1994, the Devnagari mark registration was granted on 7^th July 2014, carrying the registration date of 26^th May, 2009.

Defendant has been publishing and circulating in Morena, Madhya Pradesh, its own ‘Indian Express’ journal written in the Devnagari script – having published 2000 copies so far. It also has a title registration of ‘Indian Express’ in Devnagari script with the RNI under the Press Act, dated 1^st October 2010.

Suit had been filed seeking an injunction against the defendant, restraining them from using the ‘Indian Express’ trademark owned by the plaintiffs.

Based on the Defendant’s submissions, the Court looked into the following issues, each of which have been discussed below.

 The Press Act = Trademarks Act : Principle of  ‘Harmonious construction’

The Defendant, relying almost entirely on the Times Publishing House Ltd. v The Financial Times Ltd case claimed that the use of a title registered under the Press Act cannot be infringing of an identical mark registered under the Trademarks Act since

a) he obtained the Press Act registration long before the plaintiff’s Devnagari trademark registration was granted, and

b) no one with a mere trademark registration under the Trade & Mercantile Marks Act is permitted to publish a newspaper without registration of the title under the Press Act as well, making the Press Act a Special Act that prevails over the Trade & Mercantile Marks Act, and the two must therefore be interpreted “harmoniously”.

Here, harmoniously quite conveniently implies a live and let live conflict avoidance system that would work heavily in favour of the defendant by allowing them to continue publishing their journal within the confines of Morena, while the Plaintiffs continue publishing ‘Indian Express’ newspapers in English, and in all places except Morena, in Devnagari as well.

On the first count, the Court held, that the Defendant’s assertion failed to take into account that although registration itself was granted in 2014, the mark carries the registration date of 26^th May 2009 – more than a year before before the defendant’s registration under the Press Act was granted.

Secondly, the Court also questioned the applicability of the decision in the present case on three counts.

• That firstly, for the defendant to claim that the Press Act is a special Act and that the Trademarks Act is not, is inherently wrong, not only because their objects remain different, but also considering that the latter already permits the registration of marks with regard to books, newspapers and periodicals under Class 16, effectively indicating that the Press act does not exclusively deal with registration of newspaper titles. The Court also stated that if both are in fact special Acts, it is established law that the latter must prevail, as held in Ashoka Marketing Ltd. & Anr. v Punjab National Bank & Ors.

• Further, that this decision was issued at an interim stage only, and under the Trade & Mercantile Marks Act, 1958 and not the existing Trademarks Act, 1999 – a fact that assumes significance because the latter brought with it several pertinent provisions that were previously unknown to the former.

• Thirdly, in the Financial Times case, the respondents had registered the title under the TM Act, while the appellant had a registration under the Press Act along with wide circulation of their papers. In the instant case, the plaintiffs have trademark as well as Press Act registrations in addition to wide circulation, while the defendant’s journal’s ‘circulation’ is restricted to Morena, the defendant having sold only 2000 copies yet.

The Court noted that since in the present case the plaintiff’s mark had fulfilled all the requirements necessary for it to be deemed a well-known trademark, it automatically became entitled not only to protection under Section 24(2) of the Trade Marks Act, but also protection at “closer quarters”, whereby, use of the plaintiff’s “Indian Express” title in any script whatsoever, will necessarily amount to trademark infringement, irrespective of the plaintiffs’ failure to ensure timely trademark registration of the newspaper’s Devnagari title,

Geographical limitations

The Defendant submitted that since the Plaintiff’s newspapers are not published in Morena, Madhya Pradesh where the Defendant’s journal is published, a claim for infringement cannot lie.

The defendant’s argument here seems rather unreasonable, and appears to come from some sort of half-hearted, last-ditch attempt to save his case. The Court held here that goodwill and reputation follow the ‘use’ of the paper, irrespective of geographical limitations or whether the paper itself is printed/published in the area concerned.

We live in the age of the digital revolution, where the term ‘use’ is not one that necessarily refers merely to physical copies of the paper, but also its online editions – the plaintiff’s first witness had already made an unequivocal assertion as to the plaintiff’s newspaper’s popular e-editions. As the Court aptly noted, Morena is not a city so far removed from the rest of the state so as to be devoid of internet accessibility and use.

The Court rejected the defendant’s claim under this head.

“Another language” : Translation v. Transliteration

Thirdly, the Defendant claimed that they used the plaintiff’s mark in “another language”, one in which, at the time of the suit, the plaintiff did not have a subsisting Press Act registration for.

The Plaintiff submitted that the Defendant’s entire case was faultily based. The Plaintiff’s use of ‘Indian Express’ is not in another language from that used by the Defendant is its Press Act registration, as the defendant claims – had this been the case, the Hindi equivalents of the words ‘Indian’ and ‘Express’ would have been used, instead. The plaintiff submitted that the Defendant’s claims do not fall within the ambit of ‘translation’, but ‘transliteration’ – implying conversion of text from one script or alphabet to another.

The Court, rejected the defendant’s claim on this count as well – ultimately passing an order in the Plaintiffs’ favour.

While on the subject, I think it is also worthwhile to consider whether the translation of a mark into another language can too amount to trademark infringement – here’s an interesting excerpt from the Bombay HC’s decision in J.C. Eno Limited vs Vishnu Chemical Co. that puts this question to rest :

“…if an Indian does not know English but knows only some vernacular language, if a trader is permitted to use in that language words which have become associated with the goods of another trader in another language and are distinctive of the goods of that other trader, he is thereby putting into the power of unscrupulous dealers to mislead and practice a deception upon the individual knowing only the one language in that he may thereby be enabled to pass off upon that unsuspecting person goods as and for the goods of the other trader to which those particular words in another language have by long user become attributed.

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On the whole, this case appears to be simply one of those innumerable instances where imitators come up with commendably innovative tactics to outsmart the law, and continue raking in (very) illegitimate moolah by riding on another’s reputation. Parasites not different from our Defendant in the instant case, just keep getting bolder and bolder, having no qualms about filling their coffers with someone else’s gold. I say this because of how unashamedly and rather conveniently the defendant published a journal that just so happened to share its name with one of the country’s longest running newspapers. Not surprisingly, he chose to keep mum upon being questioned as to the legitimacy of his title choice.

So was it destiny then that conjured up his meeting with ‘Indian Express’, or his own shrewd connivance?

I guess we’ll never know.