Aadrikaa Legal Services (ALS)- Law I Litigation I Arbitration
Date: 23.10.2026
Bombay High Court: Newspaper Title Registration Does Not Invalidate Trademark Rights โ Section 124 Stay Plea Rejected
This Short Article has been prepared & written by Advocate Ravi Shekhar Jha-Delhi High Court, New Delhi. The views expressed are based on his interpretation of the law. He can be reached at his email id intelconsul@gmail.com .
The Bombay High Court has refused to stay a trademark infringement suit over the name โPune Mirror,โ finding that the defendantsโ late challenge to the plaintiffsโ trademark registrations was procedurally defective and unsupported by the pleadings.
The dispute
The suit was brought by Metropolitan Media Company Ltd., Bennett Coleman and Company Ltd., and Lexicon Media Pvt. Ltd. against Kothrud Mitra Newspapers Pvt. Ltd. and its publisher, Sunnjoy Manohar Dahake.
The plaintiffs claim registered rights in โPune Mirrorโ and โSunday Pune Mirror,โ along with a broader group of โMirrorโ newspaper marks, including โMumbai Mirror,โ โAhmedabad Mirror,โ and Bangalore-related titles. They allege that the defendantsโ use of โPune Mirrorโ and โKM Kothrud Mirrorโ infringes their registrations and is likely to cause public confusion. The suit seeks permanent injunctive relief and Rs. 100 crore in damages.
The defendants maintain that they began publishing a fortnightly newspaper titled โPune Mirrorโ on 1 October 2010 and received a registration certificate from the Registrar of Newspapers for India (RNI) on 14 December 2010. They argued that the plaintiffs had not completed RNI-related compliance for their own titles, resulting in those titles being deblocked under the Press and Registration of Books Act, 1867.
Why the defendants sought a stay
When the suit reached final arguments, the defendants relied on three rectification applications filed in 2023 and 2024. Those applications sought cancellation or rectification of certain plaintiff registrations on the basis of alleged non-use.
They asked the court to stay the infringement suit under Section 124 of the Trade Marks Act, 1999, until the rectification proceedings were decided. Alternatively, they sought framing of an issue on the validity of the plaintiffsโ registrations and time to bring a rectification challenge before the appropriate forum.
The plaintiffs opposed the request as a delaying tactic. The suit had been filed in 2015; pleadings, issues, amendments, and evidence had already been completed, and both sidesโ evidence closed in August 2025.
The courtโs ruling
Justice Gauri Godse rejected the interim application. The court held that the defendants had not established a basis to either pause the suit or add an issue concerning trademark invalidity.
Rectification applications were before the wrong forum
The defendantsโ rectification applications were pending before the Registrar of Trade Marks. The court held that, once an infringement suit is pending and validity of a registered mark is questioned, Section 125 of the Trade Marks Act requires the rectification issue to be pursued before the High Court.
Because the applications had been filed before an authority that lacked jurisdiction in the circumstances, their pendency could not support a stay under Section 124.
No pleaded challenge to trademark validity
The defendantsโ written statement relied mainly on their use of โPune Mirror,โ their RNI registration, and allegations that the plaintiffsโ newspaper titles were deblocked. But it did not specifically challenge the validity of the plaintiffsโ trademark registrations under the Trade Marks Act.
The court found that an issue on invalidity can be framed only where such an issue arises from the partiesโ pleadings. A party cannot obtain a stay merely by later asserting in an application that a registered trademark is invalid.
Press-title registration and trademark registration are distinct
A central feature of the decision is the distinction between registration of a newspaper title under the Press and Registration of Books Act and registration of a trademark under the Trade Marks Act.
The court held that RNI-related proceedings, including deblocking or registration of a newspaper title, do not automatically create a ground to cancel or invalidate a trademark registration. A non-use challenge must be expressly pleaded and assessed against the statutory requirements of trademark law.
Section 124: a low threshold, but not no threshold
The court considered the principles laid down in Patel Field Marshal Agencies v. P.M. Diesels and Franco India Pharmaceuticals v. Corona Remedies. These cases recognise that a court should frame an invalidity issue where the challenge is prima facie tenable, applying a relatively low threshold.
But that threshold still requires a genuine, legally recognisable challenge. Courts may refuse to frame an issue where the proposed invalidity plea is false, frivolous, or untenable.
Here, the court found that the defendants had not pleaded invalidity under the Trade Marks Act and had not made even a low-threshold prima facie case that the plaintiffsโ registrations were invalid. Their reliance on RNI proceedings did not fill that gap.
Final outcome
The Bombay High Court dismissed the defendantsโ interim application and directed that the main trademark suit be listed for final arguments before the court having the appropriate assignment.
Key legal implications
- Trademark invalidity must be specifically raised: A challenge to a registered mark should be tied to grounds available under the Trade Marks Act, rather than general assertions about competing title registrations.
- The correct forum matters: In a pending infringement suit, a rectification challenge to the relevant registration must be filed before the High Court as required by Section 125.
- Separate legal regimes serve separate functions: Registration of a newspaper title under press law does not, by itself, determine trademark validity, ownership, or infringement.
- Late procedural applications face close scrutiny: A stay request made after completion of evidence and at the final-arguments stage will not succeed without a clear legal foundation in the existing pleadings.
The ruling preserves the distinction between newspaper-title regulation and trademark protection, while confirming that Section 124 cannot be used to interrupt an advanced infringement suit on the basis of an unpleaded and improperly filed validity challenge.
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Source: Bombay High Court
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