Wide ranging battle
The IPAB’s ruling is part of a 19-year dispute between the two companies over the mark. FTUK applied to register the mark in March 1987 and received the registration in February 1994. In December 1993, TPH filed to rectify FTUK’s trade mark. However, TPH also received a registration for the mark in 2005, resulting in two Financial Times marks in the register.
Despite these and other legal actions, there was a syndication agreement for TPH to run FTUK’s content from 1993 until 2008.
IPAB found that FTUK had used its mark and that the mark was distinctive in India. It held that FTUK’s low circulation numbers was not dispositive of the distinctiveness issue and that it in fact had established a “formidable” and “enviable” trans-border reputation in its mark.
IPAB rejected TPH’s argument that FTUK lacked sufficient reputation in India, pointing to the syndication agreement between the parties.
The court reasoned that TPH would not have entered an agreement with just anybody, explained Anuradha Salhotra at Lall Lahiri & Salhotra. “It had to be with someone with reputation.”
The court also cancelled TPH’s trade mark on the grounds that it was registered dishonestly, saying the syndication agreement showed that it was aware of FTUK’s use of the mark.
Despite these findings, IPAB cancelled FTUK’s mark on the grounds that its trade mark application claimed continuous use since 1948, but there was only evidence of use since 1951.
Salhotra said she was surprised at IPAB’s reasoning for cancelling FTUK’s mark.
“The finding was totally in (FTUK’s) favour” except for the actual starting use date, said Salhotra, who added that the issue of the 1948 use date was not proper grounds to cancel the mark.
“IPAB should have looked at the date of application (in 1987) to decide whether the mark was distinctive then, not to 1948”, she explained, adding that this aspect of an otherwise solid decision was “unprecedented”.
Not done yet
The cancellations of both marks have been stayed pending appeal.
TPH’s counsel told Managing IP that the company believes IPAB’s holding should be overturned. Attorneys for FTUK declined to comment.
IPAB’s ruling ignored a previous 2002 suit between the parties that found the FTUK’s mark was not distinctive, said Hemant Singh of Inttl Advocare in New Delhi and counsel for TPH.
“The concept of trans-border reputation by itself may not be applicable in the case of a newspaper considering that there are common titles used by different publishers all over the world,” he explained, pointing to multiple newspapers named “Statesman” and “Telegraph” as examples.
In addition, Singh argued that FTUK failed to comply with the Press and Registration of Books Act, which governs newspapers, and therefore was not entitled to register the mark. The IPAB had held that FTUK did not publish a newspaper in India and therefore did not fall under the Press Act.
Arguments for the appeal are expected to take place in October.