The decision in the long standing dispute over the FT trademark was finally decided by the IPAB last month. The case was an amalgamation of five related applications. The first application for removal of the FT mark was the main one since it encompassed issues raised in the other applications.
The IPAB ordered the removal of Financial Times Limited’s (FTL) mark from the register as it was not able to prove use from 1948. However it allowed FTL’s rectification application against the mark, ‘Financial Times’ registered by Times Publishing House Ltd. (TPHL).
Our previous posts on the case can be found here and here. For a recap on the facts of the case please see here and here. The entire IPAB judgment can be found here.
This was an application filed by TPHL under the old act i.e. the Trade and Merchandise Marks Act, 1958. S.56 (equivalent provision is S.57 in the new Act) of the Act provides for cancellation of mark on the ground of any contravention or failure to observe the conditions entered on the register. S.56(2) gives to the rectifying authority, a wide area of discretion to check the wrong entries made without sufficient cause or an error or defect in the entry. The High Court was the rectifying authority earlier, under the new Act it is the IPAB.
The two main issues were use of the mark in India and applicability of the Press and Registration of Books Act, 1867.
I. Descriptive and Use of Mark in India
- TPHL sought rectification on the grounds that the mark was descriptive and unless there is evidence of distinctiveness, the mark must be removed from the register. Evidence of distinctiveness should be on the basis of use of the mark in India. Such use should be genuine, commercial use and not intermittent or sporadic use. If it is not used in India that would be a valid ground for removal from the Indian register. FT has only been able to show a circulation of 350-500 copies in India which is insignificant.
- The newspaper industry earned revenue mainly through advertisements and not by circulation. Financial Times Limited’s (FTL) low sales in India coupled with lack of evidence regarding advertisements for Indian goods show that the quantum of sales did not amount to use in India.
- FTL has not been able to establish trans-border reputation in India, proof of trans-border reputation by itself will not dispense with the requirement of use of the mark in India. The fact that there is an exclusive clientele of readers cannot mean that the mark was used in India.
- The syndication agreement entered into with FTL was only to indicate source of the syndicated articles for publication and does not prove use of the mark.
- The grant of registration is not merely a right given to the applicant but a right taken away from the rest of the world, therefore the decision regarding validity should be tested by the strict rule of evidence. Counsel referred to Chandra Bhan v . Arjundas AIR  Cal 280 where it was held that the evidence of distinctiveness and evidence required must place the matter beyond reasonable doubt and stronger evidence is requires than in a passing off case since registration asserts a title against the rest of the world and requires consideration of future as well as present circumstances.
- Mere use of mark will not prove distinctiveness. The title should be capable of being associated with a particular source to achieve that otherwise it is likely to lead to confusion. Hence the sale of a few copies of the newspaper in India was not enough to prove distinctiveness.
- TPHL could not deny FTL’s Indian presence and territorial reputation as it was itself a FTL subscriber and had entered into syndication agreements with FTL. It had actively pursued commercial arrangements with FTL.
- TPHL cannot allege that the mark is only descriptive and unless distinctiveness is proved the mark must be removed from the register since they have themselves applied for registration of the same mark.
- The newspaper had existed for 124 years and enjoyed a formidable reputation. The extent of trans-border reputation would amount to distinctiveness. The trans-border reputation was supported by its use.
- The use of the newspaper cannot be determined by quantity alone, the quality, price and target audience must also be taken into consideration.
- Counsel cited the Haw Par Bros. International Ltd. v. Tiger Balm Co. (P) Ltd. & Ors. [MANU/TN/0526/1995] which in his opinion was identical to the present case. In that case the HC held that though at one time the view was that unless a business is carried on at a particular place one cannot rely on reputation or goodwill this view has changed. Just because a company’s goods are not sold in the open market does not mean that their goods cannot have acquired reputation in India.
The court accepted FTL’s evidence of a subscribers list, proof of ‘A Financial Times Conference” organised in 1981 and the syndicated agreement with TPHL. On the basis of this evidence it held that FTL had proved trans-border reputation and its intention to enter India. It held that the mark had become distinctive of FTL. Quality was more important than quantity, the newspaper was meant for a specific target audience. Therefore the minimal number of newspapers sent to India was not an issue.
However, it was held that there was no evidence to suggest use from 1948. TPHL’s application was removal of the mark was therefore allowed.
II. Press and Registration of Books Act, 1867 (PRB)
FTL has not complied with the provisions of the PRB which regulates the publication of a newspaper in India and therefore is not entitled to have the mark registered.
The Act was not applicable in this case. The PRB Act applies only to newspapers printed and published in India and circulation is not the same as printing and publication. The Act does not cover circulation of newspapers.
The PRB Act does not apply in the present case. S.6 of the PRB bars adoption of a title similar to an existing title and to that extent the PRB is applicable. When FTL applied for this mark, there was no other newspaper being published under the same title so there is no violation of the PRB Act. FTL only circulates their paper in India, once they start printing or publishing their paper they will have to comply with the law.
The Trade Mark Registrar would transgress his jurisdiction if he embarks on an examination as to whether every newspaper owner who seeks registration of his mark has complied with the provisions of the PRB Act.
On the second application, for rectification filed by FTL against their mark, ‘Financial Times’ registered by TPHL, the IPAB ordered removal of the mark from the register. It held that since TPHL and FTL were in the same business TPHL would have been aware of the existence of FTL and its circulation in India. TPHL was not able to prove distinctive use of the mark, the circulation figures cannot be accepted as evidence in furtherance of distinctive use since TPHL’s Financial Times was circulated as a complimentary copy with Economic Times, and therefore their version of the Financial Times had not established any reputation on its own.
It’s 1-1 to both parties after this case, with both of them having applications decided in favour and against them. It remains to be seen whether this will be the last of the battle or if another appeal awaits...