CURRENT AFFAIRS | 24 JUNE 2026
A division bench of the Bombay High Court has upheld a single judge’s order restraining a publisher from using the title The New Indian Express outside five permitted states. The restraint flows from a 1995 Memorandum of Settlement that carved up publication territories between two newspaper houses — and the court has now treated that territorial limit as fully enforceable under intellectual-property law.
The Dispute in Brief
Justices Bharati Dangre and Deshpande confirmed that Express Publications (Madurai) Pvt Ltd may use the contested title only within Tamil Nadu, Karnataka, Kerala, Odisha and Andhra Pradesh. The limitation traces back to a 1995 Memorandum of Settlement between EPML and The Indian Express (P) Ltd, which was later converted into a decree of the Madras High Court. That decree divided the country into zones in which each side could publish under its respective masthead, and the dispute revived when one party sought to push beyond its allotted territory.
The court rejected the argument that a permanent territorial cap was an impermissible restraint. It held that the limit was not a ‘perpetuity or patent’ restriction of the kind the law frowns upon, but an enforceable intellectual-property arrangement freely bargained between commercial parties and crystallised in a consent decree.
Why Trademarks Are Territorial
At the doctrinal core lies the territoriality principle: trademark rights do not float freely across a country or the globe but attach to defined jurisdictions where reputation and goodwill are actually built. A mark famous in one region need not enjoy automatic protection in another. Layered on top is the common-law remedy of passing off, which protects the goodwill attached to a name even where statutory registration does not reach. A registered proprietor sues for infringement; a trader with unregistered goodwill sues for passing off — and the two can co-exist in the same fact-pattern.
The judgment is therefore a compact lesson in how registered rights, common-law rights and a binding contractual settlement interlock. The 1995 settlement operates as the contract; the Trade Marks Act supplies the statutory remedies; and the territoriality principle explains why a court will police a name region by region rather than nationwide.
Passing Off Versus Infringement
Students often blur passing off and infringement, but the two remedies answer different questions. Infringement under s.29 is a statutory wrong: it asks whether the defendant has used a mark identical or deceptively similar to a registered trademark in relation to similar goods or services. Passing off, preserved by s.27, is older and broader. It does not require registration at all; it asks whether the defendant has misrepresented its goods as those of the claimant, riding on goodwill the claimant has actually built. A trader with an unregistered but well-known name can therefore succeed in passing off even where no infringement claim is available.
The territorial dimension sharpens this further. Because goodwill is earned locally, a name that commands reputation in one set of states may have none in another, which is exactly why the Bombay High Court was content to confine the publisher to its bargained zone. The honest-concurrent-use idea also lurks here: two parties may each have built legitimate goodwill in their own regions, and a negotiated territorial split — frozen into a consent decree — is the law’s way of letting both survive without one passing off as the other. For an exam answer, the cleanest formulation is that infringement protects the register while passing off protects the reputation, and both can be policed territory by territory.
Constitutional & Legal Framework
The Trade Marks Act, 1999 supplies the statutory scaffolding — s.27 preserves the action for passing off and s.29 defines infringement of a registered mark. A consent decree, like the 1995 Memorandum of Settlement that became a Madras HC decree, binds the parties as a contract. The leading authorities are Cadila Health Care v Cadila Pharmaceuticals (2001) on deceptive similarity and N.R. Dongre v Whirlpool (1996) on trans-border reputation and passing off.
CLAT Angle
This is a clean classroom example of how trademark rights are territorial and how passing-off and contractual settlements interact with the Trade Marks Act — exactly the IP fact-pattern CLAT favours. Lock in the classic passing-off trinity: goodwill, misrepresentation and damage, drawn from the Reckitt & Colman ‘Jif Lemon’ test. A favourite trap is to ask you to separate passing off, which protects unregistered goodwill, from infringement, which protects a registered mark — and to test whether a permanent territorial restriction is valid when it springs from a consent decree rather than a naked covenant.
Key Facts
| Bench | Bombay HC division bench: Justices Bharati Dangre and Deshpande |
| Permitted states | Tamil Nadu, Karnataka, Kerala, Odisha, Andhra Pradesh |
| Source of restraint | 1995 Memorandum of Settlement, made a Madras HC decree |
| Core principle | Trademarks are jurisdiction/territory specific |
Memory Hook
Marks are territorial; Passing off = Goodwill + Misrepresentation + Damage.
It is worth pausing on why courts care so much about goodwill. A trademark is, in commercial terms, a badge of origin: it tells a buyer who stands behind the product. When two houses publish under confusingly similar mastheads in overlapping markets, readers can be misled about which paper they are actually buying, and the value each house has built in its name is quietly eroded. The territorial split sanctioned by the court is the law’s pragmatic answer — it lets each side keep its reputation intact within the region where that reputation was genuinely earned, without forcing one to surrender a name it has used for decades.
For the legal-reasoning section, treat this judgment as a single anchor for the whole passing-off framework. If you can state the trinity, distinguish registered from common-law rights, explain why a consent decree binds like a contract and recall that protection is territorial, you will be ready for almost any trademark question CLAT can frame around this story — including the tempting distractors that blur infringement and passing off, or that wrongly suggest a registered mark automatically wins nationwide protection.
Practice Quiz — 10 CLAT-Style Questions
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