Financial Times – The never ending trademark battle
The legal battle between The Financial Times Ltd (FTL) and Times Publishing House Ltd (TPHL) over the trademark rights to the term “FINANCIAL TIMES” and “FT” has been going on for over two decades now and continues to do so. This trademark battle in addition to elaborating the hierarchy of Courts and different judicial fora, throws light on the obstacles faced by foreign companies when trying to enter the Indian market. On October 7, 2016 the Delhi High Court ruled in favour of FTL dismissing the application of TPHL who requested an opportunity to cross examine the deponent of the affidavit by way of evidence filed by FTL. A brief of the events that lead to such an order shall follow.
FTL applied for the registration of the trademark “Financial Times” in Class 16 on March 9, 1987 whereas TPHL obtained a certificate under the Press Registration of Books (PRB) Act, 1867 for the title “Financial Times” on July 23, 1990. It is pertinent to note here that in India, an important law that governed the rules and procedures for the grant of titles with respect to publication of newspapers and periodicals is the PRB Act under which no publication can be brought out without a title being given to it by the Registrar of Newspapers for India. Moving on to the facts of the case, FTL obtained registration of the “Financial Times” mark in class 9 on August 30, 1991. In furtherance of this TPHL applied for registration of the “Financial Times” mark on January 1, 1993 in class 16. However, on October 29, 1993, the demanded “Financial Times” trademark was registered in favor of FTL. In consequence of such grant, TPHL filed proceedings before the Delhi High Court for cancellation of FTL’s “Financial Times” trade mark in class 16. In immediate retaliation, FTL filed a suit in the City Civil Court at Bangalore, Karnataka seeking permanent injunction to restrain TPHL from infringing its registered mark and/or from passing off its newspaper Financial Times as that of FTL.
Furthermore, FTL obtained registration of its trademark “FT” in class 16 on February 16, 1994. The City Civil court, Bangalore also granted an interim injunction restraining TPHL from using the “Financial Times” trademark in March, 1994 which was then vacated on TPHL’s appeal. When FTL preferred a Special Leave Petition, the Supreme Court permitted TPHL to use the “Financial Times” trademark subject to certain conditions. When the Trade Marks Act 1999 came into force, the proceeding for cancellation filed by TPHL before the Delhi High Court stood transferred to the IPAB. Meanwhile, the suit filed by FTL before the city civil court of Bangalore in 2002 was dismissed and the first appeal before the High Court of Karnataka is still pending. Later in 2005, although the “Financial Times” trademark was registered in favour of TPHL in class 16, the Registrar suo moto cancelled such registration. However, in furtherance of this, both FTL and TPHL filed proceedings before the IPAB for cancellation of the other party’s trademark registrations and then began the never ending saga between the two companies.
The IPAB in 2012 looked into the submissions of both the parties and vide its order directed that FTL’s “Financial Times” trademark in class 16 be removed from the Registrar as it was not able to prove the claimed usage date from 1948, allowed FTL’s rectification application against TPHL’s “Financial Times” in class 16 as it took note of the fact that TPHL had knowledge of FTL’s trademark owing to the publicity generated. With respect to the “FT” trademark in class 9, the IPAB dismissed TPHL’s rectification application. The order was challenged by both the parties in the Delhi High Court. Appeals and cross appeals were filed by both the parties over the years against the April 2012 order of the IPAB. The Delhi High Court then stayed the operation of the IPAB order and began hearing the case.
In the present order dated October 7, 2016, the Delhi High Court had to look into whether it should remand the case to the IPAB on account of not allowing TPHL to cross examine witnesses along with the trademark dispute itself. The City Civil Court, Bangalore and the IPAB had conflicting opinions regarding the goodwill and reputation associated with FTL’s “Financial Times” newspaper in India. While City Civil Court, Bangalore held that the mark “Financial Times” had not acquired distinctiveness so as to be associated with FTL exclusively in India, IPAB held that the mark had become distinctive of FTL. That being the case, TPHL filed an application to cross examine the witness of FTL before the IPAB.
However, Justice Endlaw noted that if mere parallel proceedings before the IPAB and the Civil Court were to be reason for grant of such cross examination, it would frustrate Section 92, Section 93 and Section 100 of the Trade Marks Act. The learned Judge further noted in this case that the evidence submitted before the IPAB as well as the City Civil Court were the same and that the difference was on account of appreciation of evidence by the two. Justice Endlaw pointed out that such difference in the appreciation could not constitute a ground for allowing cross examination as is sought by TPHL. On perusal of the evidences submitted by both parties, the Learned Judge found no error in the order of the IPAB disallowing the cross examination. He set out the contents of the affidavits in his order, avoiding any observations and leaving it open to the counsels at the time for hearing to make their submissions as to which parts of the affidavits constitute evidence and which does not. Justice Endlaw also noted that once the IPAB was empowered to proceed with the transferred matter de novo, the procedure prescribed before the IPAB would apply.
Thus TPHL’s challenge of the order of the IPAB stood dismissed by the Delhi High Court. We now await further occurrences in this matter.