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The Indian Express Limited v/s Express Publications Madurai Limited, Express Gardens & Others

    ORA 164 of 2011/TM/CH

    Decided On, 18 June 2015

    At, Intellectual Property Appellate Board

    By, THE HONOURABLE MR. JUSTICE K.N. BASHA
    By, CHAIRMAN & THE HONOURABLE MR. SANJEEV KUMAR CHASWAL
    By, TECHNICAL MEMBER (TRADEMARKS)

    For the Appellant: Arun C. Mohan, Bhagwati Trivedi, Advocates. For the Respondents: S. Vijayaraghavan, Advocate.



Judgment Text

ORDER (No.118 of 2015)

K.N. Basha, Chairman:

This application is preferred by the applicant seeking for the rectification of the impugned trade mark 'The New Indian Express' in respect of the trade mark application No.856018 in class 16.

2. Mr. Arun C. Mohan, the learned counsel for the applicant with Ms. Bhagwati Trivedi is present today. Mr. S. Vijayaraghavan, the learned counsel appearing for the respondent is also present.

3. We heard the learned counsel for both the sides at length during the earlier hearings and we also suggested both the parties to submit a joint compromise memo on the basis of the earlier Memorandum of Understanding entered into between the applicant and the respondent.

4. The undisputed fact remains that the Hon’ble High Court of Madras in respect of the Civil Proceedings between the parties passed the decree and judgment dated 16/4/1997 in C.S. Nos.1246 and 1247 of 1992 on the basis of the terms of compromise arrived at between the parties as per the memorandum of compromise dated 5/2/1995 and 30/3/1997. It is also not disputed by both the parties that a supplemental agreement was also entered into between the applicant and the respondent 1 & 2 on 12/8/2005 and the said compromise was also incorporated in the judgment of the Hon’ble High Court of Madras in Execution Petition No.153 of 2005 in C.S. No.1246 of 1992 on 16/9/2005. As per the mutual agreement entered between the parties on the basis of the agreement entered between them as stated earlier, as incorporated in judgment and decree of the Hon’ble High Court of Madras in C.S. 1246 and 1247 of 1992 dated 16/4/1997, and on the basis of the supplemental agreement entered between them dated 12/8/2005 and as incorporated in the Execution Petition No.153 of 2005 in C.S. 1246 of 1992 dated 16/9/2005, the respondents 1 & 2 are entitled to use the impugned trade mark in respect of printing and publication of the daily Newspaper in English language in the States viz Tamilnadu, Karnataka, Kerala, Andhra Pradesh, Telungana and Orissa and the Union Territories of Pondicherry, Andaman Nicobar, Lakshadweep and Enam. It would suffice for us to state clearly and categorically that it is incumbent on both the parties, the applicant and respondent 1 &2 to follow the terms and conditions of Memorandum of Understanding dated 5/2/1995, 30/3/1997 and supplemental agreement of 12/8/2005 incorporated in the judgment and decree of the Hon’ble High Court of Madras in C.S. 1246,1247 of 1992 dated 16/4/1997 and Execution Petition No.153 as stated earlier and to scrupulously follow without any slightest violation.

5. We are also constrained to state and direct the Registrar of Trade Mark, Chennai to restrict the use of the impugned trade mark ' The New Indian Express' under No. 856018 only to the above said States namely Tamilnadu, Kerala, Karnataka, Andhra Pradesh, Telungana and Orissa and the Union Territories of Pondicherry, Andaman Nicobar, Lak

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shadweep and Enam. In respect of other points that are agitated before us, it is open to the parties to agitate the same either in suit filed by the applicant and pending on the file of the Hon’ble Delhi High Court or by initiating any proceedings before the appropriate forum. The ORA is disposed of with the above directions.
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