Bombay High Court Rejects Plea To Stay Trademark Infringement Suit Over 'Pune Mirror' Mark

The Bombay High Court has refused to stay a trademark infringement suit filed by three media companies against a Pune-based newspaper publisher over the alleged unauthorised use of the names Pune Mirror and KM Kothrud Mirror. It rejected such plea that was made after the case had reached the stage of final arguments.

Justice Gauri Godse held that the newspaper publisher had failed to establish a prima facie case challenging the validity of the media companies' registered trademarks. “In the present case, the defendants have raised neither a low-threshold prima facie case nor any challenge to the validity of the plaintiffs' registered trade marks in relation to the provisions of the Trade Marks Act,” the court observed.

The suit was filed by Metropolitan Media Company Ltd, Bennett Coleman and Company Ltd, the publisher of The Times of India, and Lexicon Media Private Ltd against Kothrud Mitra Newspapers Pvt Ltd and its publisher, Sunnjoy Manohar Dahake.

The media companies alleged that the newspaper publisher infringed their registered Pune Mirror and Sunday Pune Mirror trademarks by using the names Pune Mirror and KM Kothrud Mirror. They have sought an injunction restraining the use of these names and other similar marks, along with ₹100 crore in damages.

The newspaper publisher argued that it had obtained title verification from the Registrar of Newspapers for India (RNI) for Pune Mirror and had been publishing a fortnightly newspaper under that name since October 1, 2010. It relied on its use of the name to contest the trademark infringement and passing-off claims.

The publisher also challenged the media companies' continued use of their registered trademarks, alleging that the marks had not been used bona fide. It filed applications before the Registrar of Trade Marks in 2023 and 2024 seeking removal of the registrations on grounds of non-use.

However, Justice Godse noted that the publisher had not challenged the validity of the registered trademarks in its written statement. No issue concerning their validity had therefore been framed during the trial.

The court also held that the rectification applications filed before the Registrar of Trade Marks were not tenable in the circumstances. Under the Trade Marks Act, a challenge to the validity of a registered trademark in an infringement suit must be pursued before the High Court through the prescribed procedure. The applications before the Registrar could not, therefore, provide a basis for staying the suit.

The court noted that the publisher had sought a stay when the case had reached the stage of final arguments. It rejected the argument that merely asserting that the registered trademarks were invalid was enough to frame an issue on their validity and halt the proceedings.

It also clarified that approval of a newspaper title under a separate law does not, by itself, establish that a trademark registered under the Trade Marks Act is invalid. A challenge based on non-use must meet the requirements of that Act.

Finding the application devoid of merit, the court rejected it and directed that the suit be listed for final arguments before the court having the assignment.