India: Reputation Without Use for FINANCIAL TIMES

Last Updated: 12 June 2012
Article by Abhai Pandey

One of the characters in a Tom Stoppard play Night and Day says, "I'm with you on the free press; it's the newspapers I can't stand." The order of the IPAB (Board) starting with the above quote cannot be more apt when two newspaper publishers are fighting a protracted legal battle over a newspaper title.

Financial Times Limited, UK (FTL) and Times Publishing House Ltd (TPHL), the two warring newspaper publishers, were recently before the Board with a slew of applications. The issue was whether the entry of the mark "Financial Times" in the trademark register is without any sufficient cause and whether there is a need to rectify the register by canceling the entry. TPHL sought rectification on the ground that the mark "Financial Times" is descriptive and devoid of any distinctiveness as there was no substantial, genuine and commercial use of the mark in India. Also that the proof of trans-border reputation by itself would not dispense with the requirement of use of the mark in India. In addition, TPHL contented that the mark is registered contrary to Press and Registration of Books Act, 1867 (PRB Act), which when put to use would be contrary to the law as provided under the Trade Marks Act.

FTL presented its case that it has built an enviable reputation since its establishment 125 years ago and that the trademark "Financial Times" coined in 1888 has since then acquired distinctiveness due to its prolonged use. FTL emphasized that the factors determining the "use" of a newspaper, besides numbers alone, is also dependent on the price of the newspaper, the quality and the target audience. Thus a low circulation of a newspaper cannot be identified as having no genuine or bona fide use. Further, on the contention of the mark being registered contrary to the law, FTL submitted that this question must be decided as on the date of application for registration and if on the date of application for registration it was a valid one and in consonance with the Act, then the registration is not contrary to law.

The Board, after an examination of the relevant provisions of the PRB Act, observed that the overlap between the two statutes i.e. the Trade Marks Act and the PRB Act, is to the extent of only examining whether the mark is identical or similar to a registered user i.e. the extent to which a Trade Mark Registrar can go in his examination as to whether the use of the mark would be contrary to law is to see that the title of a newspaper shall not be the same or similar to that of any other newspaper published in the same language or in the same geographical location. 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 PRB Act. The Board while rejecting the issue relating to the violation of the PRB Act concluded that when FTL had applied for registering the mark "Financial Times" there was no other newspaper being published under the same title therefore there is any violation of the PRB Act.

Next, the Board came upon the mark itself and its use and in this respect it went ahead to weigh the evidence to see whether the mark has acquired distinctiveness on the basis of use as claimed and is not descriptive. FTL claimed user from 1948 in respect of newspaper. Accepting and working further on the contention of FTL that the benchmark of the use would depend on what the goods are and not on mere circulation alone, the Board opined that there is a clear proof of FTL's trans-border reputation and that the mark "Financial Times" had become distinctive of FTL but the evidence brought forth to establish "use" in India does not amount to that. Taking into consideration that the word "use" is to be understood in its widest amplitude, the Board however found none of the documents proving user from 1948 as claimed. Finally, while mentioning again that there is no evidence of user from 1948, the Board held that FTL made its application in 1987 stating that it had used the mark in India from 1948 but the user from 1948 has not been proved and therefore the mark "Financial Times" wrongly remains on the register.

It is quite interesting to note here that the Board's decision on "use" in India does not take into consideration the documents, which it took into account to establish trans boarder reputation. Specifically, on the Syndication Agreement between Bennett Coleman & Company Ltd and FTL, the Board says that it may not be "use" but it is definitely proof of reputation as no self-respecting newspaper will enter into such agreement for a price with unknown newspapers. The Board's opinion that FTL has proved its trans-border reputation and that the mark "Financial Times" has become distinctive of FTL but they cannot ignore the hitch (Use of mark) has led to a perplexing situation. Now, as per reports, when writs have been filed before the Delhi High Court against the order of the Board, it's a wait and watch policy for the parties as well as for the Indian IP fraternity.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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