Use and reputation – ft – case (ipab)

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USE AND REPUTATION – FT – CASE (IPAB)

P.ILANANGAI

IP CONSULTANT

PATENT DEPARTMENT



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Times Publishing House Ltd.

Vs

The Financial Times Limited

Vs

USE AND REPUTATION



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• Reputation without use

• A recent order of the IPAB in rectification petitions for the mark “Financial Times” has thrown forth several interesting propositions.

• The dispute is between the Financial Times UK (FTUK), which runs the well known publication Financial Times globally, and Times Publishing House Ltd which runs the well known Indian publication Economic Times within which it also runs a supplement called Financial Times.

USE AND REPUTATION



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Intellectual Property Appellate Board

• Intellectual Property Appellate Board (IPAB) has been constituted by a Gazette notification of the Central Government in the Ministry of Commerce and Industry on 15th September 2003 to hear appeals against the decisions of the Registrar under the Trade Marks Act, 1999 and the Geographical Indications of Goods (Registration and Protection) Act, 1999.

• In terms of the Notifications dated 2/4/2007, all the Appeals pending before the various High Courts under the Patents Act, 1970, will stand transferred to the IPAB. Likewise, fresh Rectification Applications, will have to be filed before the IPAB.

• IPAB has its headquarters at Chennai and shall have sittings at Chennai, Mumbai, Delhi, Kolkata and Ahmedabad.



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• The case was an amalgamation of five related applications which are as follows:

• (i) TRA/6/2005/TM/DEL is for cancellation filed by Times Publishing House Limited (TPHL) for the mark, ‘Financial Times’ registered in the name of The Financial Times Limited (FTL) under No.468937 in class 16.

• (ii) ORA/112/2006/TM/DEL is a rectification application filed by FTL against the mark, ‘Financial Times’ registered in the name of TPHL under No.587870 in class 16.

• (iii) OA/4/2006/TM/DEL is an appeal, filed by TPHL against the suo motu order of the Registrar cancelling the registration granted in favour of TPHL under No.587870 in class 16.

• (iv) ORA/64/2007/TM/DEL is a rectification application filed by TPHL seeking cancellation of the mark ‘Financial Times’ registered in the name of FTL under No.468936 in class 9.

• (v) ORA/67/2007/TM/DEL is a rectification application filed by TPHL seeking cancellation of the registration of the mark ‘FT’ registered in the name of FTL under No.468932 in class 16.

USE AND REPUTATION



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• Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

• Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks.



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• The cross-rectifications were:

1. Times filed rectifications against FTUK’s registration of the marks “Financial Times” and “FT” in classes 9 and 16.

2. FTUK filed rectification against Time’s registration of “Financial Times” under class 16.



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ISSUES

First Application

A. Descriptive and Use of Mark in India

TPHL’s contentions

•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. 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 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.

contd..



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• 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 decision regarding validity should be tested by the strict rule of evidence.

• Mere use of mark will not prove distinctiveness.



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FTL’s contentions

•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.

•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.

•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.



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Held

•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.



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B. Press and Registration of Books Act, 1867 (PRB)

TPHL’s contentions

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.

FTL’s contentions

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.

Held

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.



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• Second Application:

• FTUK filed rectification against Time’s registration of “Financial Times” under class 16. This application was 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.



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• The Board in deciding Time’s registration of “Financial Times” stated that:

i. TPHL and FTL were in the same business and TPHL would have been aware of the existence of FTL and had entered into syndication agreements with FTUK for articles from the Financial Times.

ii. 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. Therefore, the Board also cancelled Times registration.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



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• To conclude:

• The IPAB ordered the removal of Financial Times Limited’s 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.

• The position today therefore, is that no one has registration for the mark “Financial Times”.



Chennai - 600 004.Tel: +91 - 44 - 2498 4821



Bangalore - 560 001.Tel: +91 - 80 - 6546 2400



Tel: +91 - 422 – 6552921

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THANK YOU

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Use and reputation – ft – case (ipab)