INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443 Anna Salai, Teynampet, Chennai-600018
Tele: 24328902/03 Fax: 24328905 Website: http://www.ipab.tn.nic.in
M.P.Nos.04/2008, 157/2010 & 70/2012 in TRA/6/2005/TM/DEL
M.P.Nos.264/2010 & 71/2012 in OA/4/06/TM/DEL
M.P.No.72/2012 in ORA/112/2006/TM/DEL
M.P.No.73/2012 in ORA/64/2007/TM/DEL
M.P.No.74/2012 in ORA/67/2007/TM/DEL
and
TRA/6/2005/TM/DEL
OA/04/2006/TM/DEL
ORA/112/2006/TM/DEL
ORA/64/2007/TM/DEL
ORA/67/2007/TM/DEL
WEDNESDAY, THIS THE 4TH DAY OF APRIL, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms. S. Usha … Vice-Chairman
TRA/6/2005/TM/DEL, ORA/64/2007/TM/DEL,ORA/67/2007/TM/DEL
M/s.Times Publishing House Ltd.,
7, Bahadur Shah Zafar Marg,
New Delhi-110 002. … Applicant
(Represented by Advocate: Shri Hemant Singh for Intell Advocare)
Vs.
1. M/s.The Financial Times Limited
Number One, Southweark Bridge,
London Sei.
Address For Service:
Indus Venture Management Ltd.,
Mafatlal Centre, 12th Floor,
Nariman Point, Bombay-400 021.
2. Registrar of Trade Marks
Trade Marks Registry,
Okhla Industrial Estate,
New Delhi. … Respondents
(Represented by Shri P.S.Raman, Senior Counsel for M/s Remfry & Sagar)
ORA/112/2006/TM/DEL
M/s. The Financial Times Limited,
No.one, Southwark Bridge,
London, SE 1 9HL, England. … Applicant
(Represented by Shri P.S.Raman, Senior Counsel for M/s Remfry & Sagar)
Vs
M/s. Times Publishing House Limited,
No.7, Bahadur Shah Zafar Marg,
New Delhi-110 002. … Respondent
(Represented by Advocate: Shri Hemant Singh for Intell Advocare)
OA/4/2006/TM/DEL
M/s Times Publishing House Limited,
7, Bahadur Shah Zafar Marg.,
New Delhi. … Appellant
(Represented by Advocate: Shri Hemant Singh for Intell Advocare)
Vs
1. Assistant Registrar of Trade Marks,
Trade Mark Registry,
Boudhik Sampada Bhawan,
Plot No.32, Sector – 14,
Dwaraka, New Delhi.
2. M/sThe Financial Times Limited
Number One, Southweark Bridge,
London Se1 Phl, England … Respondents
(Represented by Shri P.S.Raman, Senior Counsel for M/s Remfry & Sagar)
ORDER (No. 91 of 2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman
A line from Tom Stoppard’s play, “Night and Day”, reads thus, ”I’m with you on the free press. It is the newspapers I can’t stand.” The two newspapers before us obviously cannot stand each other. Though they nearly came to “marrying” each other in a manner of speaking, they have now fallen apart and are fighting legal battles.
2. The details of the five matters are as follows:
(i) TRA/6/2005/TM/DEL is for cancellation of the mark, ‘Financial Times’ registered in the name of the respondent (FTL, in short), 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 Times Publishing House Limited (TPHL, in short) 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.
3. Of these, TRA/6/2005/TM/DEL shall be taken up first since the decision on the issue therein, will broadly cover the issues in other matters. For the sake of convenience, TPHL will mean the applicant and FTL will mean the respondent hereinafter.
4. The learned counsel appearing for both the sides made oral submissions and submitted their written submissions also subsequently after serving a copy to each other.
5. In the written submissions filed by FTL a reference is made to the recent decision of the Hon’ble Madras high Court in W.P.No.8681 of 2011 dated 16.2.2012 (Rhizome Distilleries Pvt. Ltd. V. Union of India & ors.). Orders were reserved in these matters on 10.3.2012. FTL did not rely upon the aforesaid judgment at the time of arguments, and it is only in the written submissions that they have referred to it. The submissions of FTL is that, in view of the said judgment, TPHL cannot rely upon Ss 9 and 11 of the Trade Marks Act,1999 to seek cancellation and that would leave only the grounds of bona fide intention to use and/or non-use under section 46 of the Trade Marks Act. Since the written submissions were exchanged after the orders were reserved, the applicant TPHL did not have the opportunity to meet the ground that is now raised, and may genuinely feel aggrieved. However, we have taken into account the wide discretion that the statutory power of rectification gives us, and we have decided in the interest of justice not to throw out the case of TPHL merely because they have invoked Ss 9 and 11 of the Act.
6. We will first deal with the judgment referred to above. In the last paragraph of the said judgment, it is stated as follows:
“Further, in our considered opinion, the grounds embodied under sections 9 and 11 are available to the persons only at the time when they raise objection for registering the trade mark.”
7. Both the counsel agree that, the Trade and Merchandise Marks Act, 1958 (the Old Act in short) will govern the issue in TRA/6/2005/TM/DEL. This is an application filed by TPHL under Sections 56 and 46(1) of the Old Act. Section 56 provides for cancellation of a mark on the ground of any contravention or failure to observe the conditions entered on the register. Section 56(2) provides for rectification at the instance of a person aggrieved, by the absence or omission from the register of any entry or if an entry has been made without sufficient cause or if any entry is wrongly remaining in the register or if there is an error or defect in any entry in the register. S.56 of the 1958 Act (Old Act) and S.57 of the Trade Marks Act, 1999 (the New Act) are there to protect public interest in the maintenance of the register. It is, for this reason, that S.56(2) of the Old Act and S.57 of (the New Act) give 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. Necessarily therefore, the High Court as the rectifying authority earlier, whose powers have been transferred to us, had an avowed duty in public interest to see if the registration granted was in accordance with law. Now, IPAB has the same powers.
8. Therefore, we have a duty to see whether the registration has been granted in accordance with law, whether the provisions of the Act have been violated or whether the public interest is affected by the said registration and while examining so, whether the entry in the register shall not remain. We necessarily have to examine if the Registrar has performed his duty in accordance with the provisions of the Act. So the fact that TPHL has mentioned Ss 9 and 11 will not be a ground to throw its petition out. We must examine whether on the grounds raised by TPHL, we can exercise the power of rectification, be it under S. 46 or S. 56 of the Act.
9. The chronological events are as follows:
On March 9 1987 an application was filed by FTL for registration of the mark impugned in TRA/6/2005/TM/DEL and the mark impugned in ORA/67/2007/TM/DEL. On July 23, 1990, TPHL obtained a certificate under the Press and Registration of Books Act, 1867 for the title, ‘Financial Times’. The publication of the newspaper commenced, but it was stopped and it was recommenced later. On January 1, 1993 TPHL filed the application for registration of the mark, ‘Financial Times’ which is the subject matter of ORA/112/2006/TM/DEL. On October 29, 1993, the mark impugned in TRA/6/2005/TM/DEL was registered in favour of FTL in India. On December 2, 1993, TPHL filed the present rectification proceedings originally before the Hon’ble Delhi High Court and now transferred to this Board as TRA/6/2005/TM/DEL. On December 3, 1993, FTL filed OS.No.7087 of 1993 before the City Civil Court, Bangalore, against TPHL for infringement of its trademark, ‘Financial Times’ and for passing off. On February 16, 1994, the trademark ‘FT’ was registered in favour of FTL. On March 2, 1994, the City Civil Court confirmed an ex parte order of temporary injunction. An appeal was filed against this order. On April 19, 1994, the Hon’ble Karnataka High Court allowed the appeal filed by TPHL and the temporary injunction granted by the City Civil Court was vacated. FTL filed a Special Leave Petition on September 23, 1994 and the Hon’ble Supreme Court disposed of the said SLP with a direction that TPHL shall issue two disclaimers with sufficient prominence. Directions were also given for the disposal of O.S.7087 of 1993 before the City Civil Court, Bangalore and the present TRA/6/2005/TM/DEL. On August 28, 2001, FTL filed suits before the Hon’ble Delhi High Court for injunction against infringement and passing off in respect of the marks ‘FT’ and ‘Financial Times’. The suits are pending adjudication. On September 24, 2002, the City Civil Court, Bangalore dismissed the suit filed by FTL. On February 10, 2003, FTL filed an appeal before the Hon’ble Karnataka High Court which is pending. On June 22, 2005, the trademark, ‘Financial Times’ was registered in favour of TPHL (challenged in ORA/112/2006/TM/DEL). On October 10, 2005, the Assistant Registrar of Trademarks suo motu cancelled the above mark (challenged in OA/4/2006/TM/DEL) invoking Section 57(4) of the New Act. Originally, FTL was not a party, but subsequently, it was impleaded as respondent No.2. On August 14, 2006, FTL filed an application for rectification of the above mark, since the Hon’ble Delhi High Court had stayed the order passed by the Assistant Register. In April, 2007 TPHL filed a rectification proceedings against the mark ‘FT’ under class 16 and the mark ‘Financial times’ under class 9 (ORA/64 & 67/2007/TM/DEL). On May 28, 2009, TPHL filed a suit against the Registrar of newspapers for India for declaration that it alone is entitled to print, publish and circulate the newspaper. This was subsequently withdrawn by TPHL.
10. TPHL seeks rectification on several grounds. The mark is descriptive and unless there is evidence of distinctiveness, the said mark cannot remain in the register. The evidence of distinctiveness should be on the basis of use of the mark in India. Such use shall be genuine, commercial use and not intermittent and sporadic use. The trademark shall not be registered contrary to the provisions of any law in force and since the Press and Registration of Books Act, 1867 (PRB Act in short) regulates the publication of a newspaper in India and also protects the grant of title, FTL which has not complied with the provisions of the PRB Act, is not entitled to have the mark registered, nor shall the mark remain on the register. According to TPHL, the judgment of the City Civil Court, Bangalore had dealt with almost all the issues. In the said suit, issues were framed relating to FTL’s right of proprietorship over the mark, proof of publication, proof of acquisition of reputation, registration of mark obtained by violating the provisions of the Trade Marks Act, right to publish newspapers without complying with the provisions of the PRB Act, etc.
11. According to TPHL, the issues relating to the effect of PRB Act, the proof of publication in India and the acquisition of reputation in India are all issues which are relevant to decide the controversy here and the findings given by the Civil Court after full trial and detailed examination of witnesses would operate as issue estoppel. According to TPHL, the mark ‘Financial Times’ is not only descriptive, but it is also commonly used as title for different newspapers in different countries. According to TPHL, the various provisions of the Trade Marks Act refer to the use of the mark and wherever the use of a mark is required to be established, it only means use of the mark in India and to give any other construction would make section 46 of the Trade Marks Act redundant. According to TPHL, the evidence regarding use must show that it was substantial, genuine and commercial. The evidence of FTL shows only a circulation of about 350 to 500 copies in India which is insignificant. The Registration of Newspapers (Central) Rules, 1956 require a newspaper publisher to obtain a certificate from a Chartered Accountant certifying the circulation and this requirement is dispensed with if any newspaper publishes less than 2000 copies. So FTL’s circulation has not even reached this bench mark. According to TPHL, FTL was unable to satisfy even the Civil Court regarding use, reputation and distinctiveness where it is a case of passing-off and here where the validity of registration is questioned, the bar is much higher, since it secures to the proprietor a monopoly, against the rest of the world. According to TPHL, the evidence produced by FTL is inadmissible, since the documents are neither originals, nor certified copies and the provisions of the Evidence Act cannot be given a complete go by, even though the Board is not bound by the strict rules of evidence. The case of TPHL is that FTL has not produced evidence to establish trans-border reputation in India as of 1993 and that the proof of trans-border reputation by itself will not dispense with the requirement of use of the mark in India without which the mark shall not remain in the register and ought not to have been granted registration. The evidence adduced before the City Civil Court has been produced here to show that the respondent had no intention of printing or publishing newspaper in India and more particularly, to show the contradictions between the statements of the witnesses before the Civil Court and the affidavit of the sole witness before us.
12. On the side of the respondent FTL, it was pleaded that the circulation of the newspaper was not in violation of the PRB Act. The Act relates only to printing and publishing of newspapers and even the object of the Act makes it clear that the Act does not cover ‘circulation’, so ‘circulation’ of a newspaper is not covered by the legislation. According to the respondent, the Karnataka City Civil Court judgment would not operate as res judicata and the judgment itself leaves those issues untouched which are to be decided by the Board and if the Board accepts the findings of the City Civil Court and rectifies the mark, then, in the event of success in the appeal, FTL would have to start the registration process afresh. It is the case of FTL that it was established 125 years ago and had built an enviable reputation as one of the leading newspapers on economical affairs which has crossed over to Indian borders and has stood by its motto – without fear or favour etc. The learned senior counsel Mr. P.S.Raman submitted that the applicant was FTL’s subscriber, the applicant had entered into Syndication Agreements with FTL, the applicant or another concern from the same stable, had actively pursued a commercial arrangement with FTL, and with this history it is remarkable that TPHL should deny FTL’s Indian presence and territorial reputation. According to FTL, the evidence produced by it shows long and continuous use as well as intention to use and the mark shall be protected. The trademark had been coined by FTL for the first time in 1888 and it had acquired distinctiveness and the adoption of the said mark by TPHL is dishonest. The use of the newspaper cannot be determined by numbers alone, here the price of the newspaper, the quality, the target audience are factors which must determine the question whether the use is genuine or bona fide and the de minimis rule will not apply. Broadly, this was the basis on which TPHL and FTL built their cases.
13. Mr.Hemant Singh, learned counsel appearing for TPHL submitted that a registered mark must not be protected, if the registration has been done in violation of any law. The object of the PRB Act is clear and if one were to accept FTL’s case, then, a person who had violated a law in India would be given protection under another Indian Act. He referred to the Law Lexicon and dictionary with reference to the words, ‘publication’, ‘dissemination’ and ‘circulation’, and submitted that FTL wanted to rely on its circulation to prove use in India, then it would necessarily have to comply with the provisions of the PRB Act. He submitted that the current foreign trade policy provides for compliance with the rigors of domestic laws, if one imports goods and the fact that the newspapers are only print items, would not mean that FTL can violate the law. In BENNETT COLEMAN CO. v. UNION OF INDIA [(1972) 2 SCC 788], the Supreme Court, in paragraph 34, had held that “publication means dissemination and circulation”. In that case, the Supreme Court dealt with the freedom of newspapers to publish when the restraint on circulation affected the rights under Article 19(1)(a) of the Constitution on the aspects of propagation, publication and circulation. Learned counsel submitted that by taking a stand that it is merely circulating the newspaper, FTL cannot avoid compliance with the law.
14. Learned counsel referred to various provisions of the PRB Act, viz., the mandatory requirements under section 3 which deals with the particulars to be printed on books and papers, section 5 which provides that no newspaper shall be published in India except in conformity with the rules contained therein, section 6 which deals with the authentication of declaration, section 8-B which deals with cancellation of declaration and also the penal provision for printing contrary to the provisions of the Act. Learned counsel submitted that when the Trade Mark Act prohibits registration of a mark, the use of which would be contrary to the law, the FTL’s mark cannot remain in the register when there is no proof of compliance with the mandatory provisions of the PRB Act and if the provisions of the Act are not complied with, then the use claimed by the respondent FTL would not be legal and cannot be relied on to form the basis for any protection under the Trade Mark Act.
15. In this regard, FTL contended that though at the interlocutory stage the Hon’ble Karnataka High Court held that the PRB Act would alone prevail, there are judgments of Hon’ble Delhi High Court to the contrary. According to Mr. P.S.Raman, learned senior counsel for FTL, the PRB Act is a regulatory legislation and this concerns itself only with newspapers that are printed and published in India and the circulation of newspapers is not the same as printing and publication.
16. He further submitted that the reliance placed on BENNETT COLEMAN CO. v. UNION OF INDIA [(1972) 2 SCC 788] was wrong. He submitted that this Board cannot decide the correctness of any order passed under the PRB Act and both the Acts must be harmoniously construed, so that one does not make the other redundant. Learned senior counsel submitted that the rights granted under the respective Acts should not be defeated by wrong interpretation. Learned senior counsel also submitted that with regard to the same two Acts, in a given situation, one Act may be the Special Act and the other would be the General Act and in another it would be vice versa. Learned senior counsel also submitted that the apprehension that the circulation of newspaper in India without compliance with the PRB Act would make the publisher immune from any control is without merit, since the customs authorities verify and refuse entry, if the content is prejudicial to Indian law. He referred to judgments where judicial notice had been taken of the free circulation of foreign newspapers and publication. He also referred to the judgment of the Madras High Court in HAW PAR BROS. INTERNATIONAL LTD. V. TIGER BALM CO. (P) LTD & ORS. [MANU/TN/0526/1995], which recognised that goods enter India through official and non-official channels. It was submitted finally that the question whether registration of the mark was contrary to law 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. Several decisions were relied on in this regard regarding harmonious construction in interpretation.
17. The impugned mark shall be rectified by us, if it has been wrongly made and the Registrar had accepted for registration a mark, the use of which is contrary to law. Then, we must examine the provisions of that law which have been allegedly violated by the registration of the mark. In the PRB Act, section 6 deals with the authentication of declaration that no declaration shall be authenticated unless the Magistrate on enquiry from the Press Registrar is satisfied that the newspaper proposed to be published does not bear a title which is the same as, or similar to, that of any other newspaper published either in the same language or in the same State. Therefore, the Trade Marks Registrar shall not register a mark which is contrary to any law and in the instant case, we must examine the PRB Act, since it is alleged that FTL has violated it. It requires 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 State. This is the extent to which the Trade Mark Registrar can go in his examination as to whether the use of the mark would be contrary to any law. Here the law is the PRB Act. The Trade Mark Registrar would indeed 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. Similarly, the Magistrate who has to be satisfied regarding the title cannot go beyond what is provided under section 6 of the PRB Act. Suppose a newspaper which is proposed to be published, applies for the name, ‘Excellent’, neither the Press Registrar, nor the Magistrate is concerned with the distinctiveness or descriptiveness, they can only examine, if there is any other paper by the name, ‘Excellent’ and thereafter, proceed in accordance with that Act. On the other hand, when the same newspaper owner applies for registration of the mark, ‘Excellent’ before the Trade Mark Registrar, there he will have to satisfy the Registrar that though it is descriptive, on the date of application, it acquired distinctiveness. We do not think that the authority under the PRB Act has any power to go into that aspect.
18. Therefore, the overlap between the two Acts is to this extent alone. Under the Trade Marks Act, the Trade Mark Registrar has to examine whether the mark is identical or similar to a registered user. This is also the requirement of Section 6 of the PRB Act. We cannot, while deciding the question of registrability, enlarge our jurisdiction. We cannot examine, nor can the Trade Marks Registrar examine whether all the provisions of the PRB Act are complied with. That is not our domain. PRB Act bars in Section 6 the adoption of a title similar to an existing title. To that extent alone, the provisions of the PRB Act have relevance. In this case , when FTL applied for this mark, there was no other newspaper which was being published under the same title. So there is no violation of the PRB Act. Further, the word, ‘circulation’ is not used in the PRB Act. It has nothing to do with circulation. Only the makes and addresses etc of the printer and publisher are required under that Act, and non-compliance is punishable. We cannot take the dictionary meaning of ‘circulation’ or rely on the Bennett Coleman Co. case, cited supra, which was given in a different context and bring circulation agents under the purview of the PRB Act. That is impermissible. FTL only circulates their paper in India. Once they start printing and/or publishing their paper they will have to comply with the law. And the machinery under that law will ensure the compliance, not Trade Mark registry nor the IPAB. The PRB Act has nothing to do with ‘circulation’. The evidence on the side of FTL that they have no intention to print and publish the newspaper here, when they do and they do not comply with the Press and Registration of Books Act, they will face the consequence. We are not concerned with that. On the other hand, the factum of circulation will have a bearing on the issue of use of the mark by the respondent FTL and the question then follows, whether the evidence that is produced by the respondent FTL satisfies the requirement of the Trade Marks Act regarding genuine and bona fide use of the mark. The issue raised relating to the violation of the Press and Registration of Books Act is rejected.
19. Next, we deal with the effect of the judgment of Civil Civil Court, Bangalore on the dispute here. S. 111 of the Old Act (1958 Act) deals with the stay of proceedings where the validity of registration is questioned. This is equivalent to S.124 of the Trade Marks Act, 1999. In the written statement filed by TPHL before the City Civil Court, Bangalore, it is averred that the plaintiff’s mark is wrongly registered and liable to be rectified and that it does not confer any valid and sustainable right. In fact, in the written statement it is stated that the defendant that is the applicant herein (TPHL) has applied for cancellation. The Act provides that if the defendant in a suit for infringement pleads that the plaintiff’s registration is invalid, then, the Court where the suit is pending, shall stay the suit until the proceedings for rectification are finally disposed of. In fact, if no such proceedings are pending, and the Court is prima facie satisfied regarding the plea of invalidity, the Civil Court shall, raise an issue regarding the same and grant time to the parties concerned to seek rectification. The Act provides that the final order made in the rectification proceedings shall be binding upon the parties and the Court shall dispose of the suit conformably to such orders in so far as it relates to the issue of the validity of registration of the mark. Therefore, the decision of the Board on the question of validity of the mark would bind the parties and the disposal of the suit will conform to our findings. This would mean that we shall and must independently address the issue of validity which is why the Act requires the Civil Court to conform to our findings. If we have to conform to theCivil Court findings, it would make sub-section 4 of section 111 of the Old Act meaningless. The findings there may be a relevant piece of evidence. But, that will not bind us.
20. The City Civil Court, Bangalore held that FTL was the registered proprietor but negated the claim of FTL that it had acquired a reputation in India and rejected the case of FTL that TPHL committed an act of infringement and rejected the case of FTL that TPHL caused damages. It left the issue No.6 which relates to the mark wrongly remaining in the Register to be dealt with by us as also the issue No.7 which deals with the violation of sections 9 and 11 of the Act. The City Civil Court held that FTL has no right to publish newspaper without registering itself under the PRB Act. As regards the question whether the Registrar of Trade Marks can register the title of a newspaper contrary to the provisions of the PRB Act, the City Civil Court held that the same shall be decided by us.
21. We have already held that what the Trade Marks Registrar has to examine is whether the mark violated the provisions of Section 6 of the Press and Registration of Books Act and nothing more. If there was any other newspaper by the same name on the date of application, he shall not grant registration. But, if there was no mark of same name or similar name on the date when FTL applied, then, the grant of registration would not violate the provisions of the PRB Act. The mark is probably liable to be expunged on other grounds but not on this.
22. Next, we come to the mark itself and its use. The contradictions between the evidence of witnesses before the Civil Court and before us have been highlighted in the Chart of contradictory statement filed before us along with the written submissions. Before us, the evidence of Mr.Khozem Merchant is available in the form of affidavit. The contradictions (i) whether the words, ‘Financial Times’ are descriptive words, (ii) whether the words, ‘Financial Times’ are common to the newspaper trade and (iii) whether the mark was used in different countries, were highlighted before us. Mr.Hemant Singh, submitted that the evidence of Mr.Khozem Merchant filed before us cannot be accepted in view of the clear contradictions. The evidence that the mark has acquired distinctiveness and it is not descriptive will be weighed by us. We are also not really concerned with the use of the same mark by other newspapers in other countries. It is obvious that there are certain words which are favoured by newspapers; we still have to see, if this mark can be used by FTL. The dispute before us is whether the FTL’s mark shall remain in the register or not and whether there is use as claimed. The evidence of the respondent’s witnesses before the Civil Court is to the effect that FTL had no intention of printing and publishing the newspaper in India. According to TPHL, this would determine whether the intention to use was bona fide. It is also submitted that whatever evidence has been produced post 1993 must be rejected. Several documents were marked before us to show use viz., Publication ‘World Banking’ and Financial Times Year Book which got affixed with the stamp of National Library of India, Kolkata. According to TPHL these documents have not been legally proved and the documents would not really establish that there was use of the mark by FTL and that the fact that the stamp of National Library in Kolkata is found affixed on the ‘Financial Times Year Book’ would not prove that there is such degree of use which is required to justify the presence of the mark in the Register. TPHL disputed the case of trans-border reputation and contended that the fact that there is an exclusive clientele of readers, cannot mean that the mark was used in India by the respondent. All the advertisements show, that these advertisements were made in U.K. and not in India. The subscribers’ list that was produced is not corroborated by any other evidence to show that the newspapers which are said to have been sent were indeed received and the Xerox copies of subscribers’ list cannot help the respondent. There is evidence to show that in 1981 there was a conference organised by the Financial Times where the leaders of commerce, ministers and other important persons took part. According to TPHL this may be a public relationship exercise, but that cannot be construed as use of the mark, and this evidence is more in the nature of awareness that has been created regarding reputation and goodwill rather than the use of the mark in India. FTL had referred to Syndication Agreement entered into between the Times Group and FTL to show that this is a proof for the use of the mark by the respondent as well as trans-border reputation to which the learned counsel for TPHL submitted that the Syndication Agreement was to indicate the source of the syndicated articles for publication in the Indian newspaper. Entering into Syndication Agreement does not mean that the Indian proprietor used the trademark of the others. The newspaper industry earned revenue only by advertisements and not by circulation and the fact that the sales in India is minimal and lack of evidence regarding advertisements for Indian goods in the respondent newspaper would show that the quantum of sales did not amount to use in India. The grant of registration given to the applicant is not merely a right given to the applicant, but a right taken away from the rest of the world. The decision regarding validity should be tested by the strict rule of evidence. Learned counsel submitted that this amount of use, it would not be sufficient to prove the acquisition of distinctiveness.
23. Learned counsel referred to Kerly’s Law of Trade Marks and Trade Names (Fifteenth Edition) by James Mellor & others wherein in Chapter 8-123, it is stated that the mere use will not prove acquisition of distinctiveness. He produced the Chart of average daily circulation of financial newspapers to show how meagre the sales of the respondent was. Learned counsel referred toKanungo Media (P) Ltd. V. RGV Film Factory & Ors. [2007 (34) PTC 591 (Del.)] where it was held that for the title to be protected as trademark, it is necessary to prove that it has acquired secondary meaning and in paragraph 16 it was held that the assumption behind this rule is that unless such title is capable of being associated with a particular source, the question of confusion would arise. According to the learned counsel, unless FTL has proved this, its mark is not entitled to protection and the descriptive mark would require higher onus and the sale of mere 300 to 500 copies would not be sufficient to prove distinctiveness.
24. In CHANDRA BHAN v. ARJUNDAS [AIR 1979 CALCUTTA 280], in paragraph-12, the Court referred to the Halsbury’s Laws of England and specifically referred to Article 878 which deals with the evidence of distinctiveness and the evidence required which ‘must place the matter beyond reasonable doubt and stronger evidence is required than in passing off case, since registration asserts a title against the world and necessitates the consideration of future possibilities as well as present circumstances’. In fact, this is why the learned counsel repeatedly reiterated that when the Civil Court, which only dealt with the common law on the grievance of passing off, had held against the respondent, the question relating to statutory right of trademark proprietorship requires stronger evidence and the person who has not passed the test for passing-off is not entitled to higher right of retaining the registration. In Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories [AIR 1965 SC 980], it was held that the mere use will not prove distinctiveness. In A.J.VULCAN v. V.S.V.PALANICHAMY [AIR 1969 CALCUTTA 43], in paragraph-27, the learned Judge dealt with the territorial nature of the Act. Learned counsel submitted that the definition of the trademark speaking of use in relation to goods must be understood as use within the territory of India and not the use abroad and naturally if it is not used in India, it would be a ground for removal from the Indian register. In the above case, it was held that no extra-territorial notion could be imported to construe the Indian Trade and Merchandise Marks Act to cover foreign use. Learned counsel submitted that the proof for trans-border reputation may help a registered proprietor who has proved the reputation, but it will not obliterate the necessity of proving use.
25. The respondent has produced the evidence by way of filing affidavit of Mr.Khozem Merchant and we will have to see if the evidence produced would satisfy the requirements of the Act. Annexure-3 contains copies of newspaper bearing the mark ‘Financial Times’. Annexure-4 at page-14 is the reproduction of the first issue of ‘Financial Times’ on 13.2.1888. The documents show the existence of ‘Financial Times’. Annexure-15 is an illustrative list of world-wide subscribers of the respondent newspaper. Annexure-31 contains copies of shipping documents, invoices, remittance advices evidencing supply of newspaper, ‘Financial Times’ to distributors. There are letters by third parties in evidence of the subscription to the newspaper, letters received from HDFC Bank, British Council Library, etc. Learned counsel submitted that these letters would not in any way prove the use by the respondent. Learned senior counsel for FTL submitted that all the articles published under the Syndication Agreements bear the acknowledgment of the mark of respondent. He referred in detail to the judgment in Haw Par case, cited supra, which has dealt with trans-border reputation. He submitted that the quantity of use is not an indicator as to quality. According to him, the quality of goods, price and track record of consumers are all factors that should be reckoned while fixing the benchmark for the use. He submitted that there is evidence to show that Indians were reading Financial Times and the International Travel Magazine contains the advertisement of the respondent and the respondent had bona fide intention to use the mark. The subscribers’ lists that has been filed in evidence, one of which was not before us but before the City Civil Court, the 1981 Conference, etc. would show that there was a bona fide intention to use. He also submitted that it hardly lies in the mouth of the applicant who has applied for registration of the same mark to allege that the mark is only descriptive and unless the distinctiveness is proved, its mark is liable to be removed from the Register. He referred to the newspaper’s 124 years old existence and formidable reputation it earned and submitted that the extent of trans-border reputation would amount to distinctiveness and the trans-border reputation and distinctiveness go together. According to the learned senior counsel, the trans-border reputation in this case was supported by the use. According to him, until the applicant applied for registration of the mark, ‘Financial Times’, there was no other ‘Financial Times’ in India, and the reason for that was the existence of the respondent and its reputation.
26. Learned senior counsel submitted that there are newspapers by the name, ‘Financial Express’ and ‘Economic Times’ from the applicant’s desk, but no ‘Financial Times’. Learned senior counsel submitted that Haw Par case applies on all fours to this case and that even the facts were similar. In paragraph-59 of the judgment in Haw Par case, cited supra, a Division Bench of the Madras High Court held that after having failed in the negotiation to commence a joint venture with the first appellant therein, the respondents therein had thought of marketing their goods as if they belonged to the first appellant and that even an educated person would get an impression that the product was that of the first appellant. In paragraph-65 it was held that the Single Judge had overlooked the fact that though the appellants had not commenced their business in India, their goods were available. In paragraph-68, it was held that the appellants’ product had been sold in India for several decades and it had acquired worldwide reputation. Finally, in paragraph 88, while dealing with the question of necessity of actual business in India, the Division Bench held that though at one time a view was taken that unless the business is carried on in a particular place, one cannot rely on reputation or goodwill, in course of time, this view began to change. The Division Bench relied on the judgment of the Bombay High Court in KAMAL TRADING CO. V. Gillette U.K. Limited [1988 (1) PLR 135] where the Division Bench of Hon’ble Bombay High Court held that merely because ‘National’ or ‘Sony’ televisions are not sold in open market due to trade restrictions, is it possible to suggest that they have not acquired reputation in this country. Learned senior counsel also referred to the exchange of correspondence between FT Business Enterprises Ltd. and the Times Group under the Syndication Agreement, particularly the letter dated 30.11.1993, where BCCL had informed the FT Business Promotion Ltd. regarding the conclusion of agreement with the applicant herein for the use of ‘Financial Times’ in their publication. On 11.2.1994, FT Business Enterprises Ltd. addressed a letter to the Times of India group that circulation and publication of Economic Times along with supplementary publication in title, ‘Financial Times’ would amount to clear breach of Syndication Agreement dated 11.12.1990. The exchange of correspondence went on and in February, 1994 a letter was written by FT Business Enterprises Ltd. to the applicant herein that the reproduction of trademark is an infringement which is a subject matter of litigation between the parties. Earlier, there had been correspondence between the Financial Times and the Chairman of Times of India and other officers regarding what is termed as possible area of cooperation. Whatever the parties tried to achieve, obviously failed. Learned senior counsel submitted that there was enough evidence to show that FTL had established a worldwide reputation and TPHL itself wanted to enter into a commercial arrangement with the respondent. According to the learned senior counsel, the evidence of user produced by the respondent was sufficient to show that it had established distinctiveness.
27. The Trade Mark application, that is subject matter of dispute in TRA/6/2005/TM/DEL was applied for on 9.3.1987. The claim of use made was “from 1948 in respect of newspaper and from 1977 in respect of printed matters, periodical publication books and it was proposed-to-be-used in respect of other goods” in the specification and the user claim was made to show that the use had come from 1948. The respondent has produced a newspaper article appearing in the Indian Express (Annexure-20). Then, according to the respondent, a letter was written by Sociedade de Fomento Industrial Pvt. Ltd, where it is stated that they had been subscribing to Financial Times from 1952 to 1984. The respondent refers to the Major Survey of India in the year 1963 wherein advertisements were placed by well known Indian companies. Thereafter, ‘A Survey of India’ published in subsequent years would show that the mark is established one. There was ‘A Financial Times Conference’ held in association with the Federation of Indian Chambers of Commerce and Industries in 1981. The theme of the Conference was, ‘India as a world trading partner’ and the Conference was termed as ‘A Financial Times Conference’. The welcome speech was by ‘The Hon A.V.Hare, Chairman and Chief Executive of Financial Times and there were representatives from all walks of life who had addressed the gathering at this conference including the then Minister of Finance. The evidence of use produced are all newspaper articles from 1948 that had appeared in Indian Express on Monday, August 16, 1948 where the news item started with the words, ‘The “Financial Times” said in an editorial today .....’. On January 1, 1948 a news item was also found in the Indian Express which started with the words,
‘Agreement between India and Pakistan on nearly all outstanding financial and administrative problems arising from partition ... will continue to be as close and as harmonious as they have been hitherto the London “Financial Times” declared today’.
Thirdly, on October 16, 1948 there was a news item started with, “The ‘Financial Times’ states that the Indian Government has created a situation……“
28. The respondent has claimed registration on the ground that it had been using the mark since 1948. The use of the mark must be the use in India. In that, we cannot have any controversy. The respondent has also understood this, otherwise the respondent would have claimed user from 1888. The respondent had been in existence from 1888 yet, it is in 1948 the name of respondent was found mentioned in an Indian newspaper; so, the claim of user from 1948 was made by the respondent. The Act requires that in respect of any goods where the applicant carries on business in India, it has to give an address for service in India. There are many cases in which special circumstances have been pleaded against import restrictions under section 12 which would again mean that person claiming to be registered proprietors are aware that the use of the mark should be in India. Otherwise, the pleading, ‘import restrictions’ is unnecessary.
29. We have also referred to the decision of the Hon’ble Calcutta High Court in A.J.Vulcan’s case (AIR 1969 Calcutta 43) which speaks of the Act being territorial in nature. This is why the Act also provides for a deemed use in the goods of export, since the sine qua non for registration is use in India and the bona fide intention to use in India. In IMPERIAL GROUP LTD. v. PHILIP MORRIS & CO. LTD [(1982) FSR 72], the Court of Appeal has dealt with what could be the bona fide use and held that it was a case where the plaintiff never intended to use the mark in the ordinary course of business and the use of it was not substantial and it was not a real use in any commercial sense. Of course, the goods there were cigarettes.
30. We accept the contention of the respondent as to the benchmark of the use, and whether it is substantial would depend upon what the goods are and mere numbers will not alone determine the issue. We cannot reject the entire evidence produced by FTL as not proved in accordance with law. We can not ignore the Sociedade’s letter to show subscribership from 1952. In fact it is a complaint that FTL’s newspaper is not delivered promptly. It speaks not only of the newspaper’s reputation but also entry in to India. The despatch of copies of paper to their agent is “use”. The subscriber’s list shows “use”. We have no reason to think it is a fudged document. The Syndication Agreement may not be “use” but it is definitely proof of reputation. No self-respecting newspaper will enter into such agreements for a price with unknown newspapers, but only with newspapers whose columns have avid followers. It is a mode of increasing the circulation. Being in the same business TPHL knew that its readers would appreciate FTL syndicated articles. The 1981 Conference which is called “ A Financial Times Conference” indicates that it is enough to say Financial Times to associate the word with FTL and hence distinctive, that it had a big reputation in India, and that they had intention to use it in India. The correspondence between FTL and ]Times of India is clear evidence of intention to enter India. So we are of the opinion, that FTL has proved its trans-border reputation, and its intention to enter India, and that the mark had become distinctive of FTL. But there is a hitch, which we cannot ignore.
31. The respondent claims user from 1948. The only evidence to show the alleged user in India from that date is a bunch of news items that appeared in Indian Express in that year. We have referred to this earlier. These news items indicate that FTL’s reputation had extended to India even in 1948, but the mention of the newspaper in Indian Express will not amount to ‘use’ in India by FTL. The 1981 Conference where the conference itself was titled as ‘A Financial Times Conference’ indicates the use or at least bona fide intention to use. There is a document appointing one Setty as advertising representative. But, this is in 1977. There are documents to show that copies have been sent to FTL’s agent one Mirchandani from 1992. We accept this as evidence, though TPHL vainly tried to suggest there is no evidence that Mirchandani distributed them. What else will he do with the bundles of newspapers, pray? Business heads have written to FTL but, those are in 1993. There is one letter by Trikaya Grey in 1991 for advertisement. All these documents are attacked by the applicant as inadmissible. We find no reason to disbelieve this evidence, but in any way it is not helpful to FTL. None of these documents prove user from 1948 that is what is claimed. There are decisions to the effect that the word, ‘use’ is to be understood in its widest amplitude. The circulation of FTL’s newspaper in India is definitely ‘use’. The subscribers apply only by using the name of the newspaper. The newspaper in this case is not meant for the masses, but to a specific target audience. Therefore, the number of newspapers sent to India is not the determinant. The respondent has shown that the section of the Indian public which is interested in the contents of the FTL have been among its subscribers. The user is neither spasmodic, nor is it clandestine, but it is genuine and consistent; may be a tad exclusive. However, we repeat, there is no evidence of user from 1948. FTL had made its application stating that it had used the mark in India from 1948. The user from 1948 has not been proved and therefore, we have to hold that the mark wrongly remains in the Register and accordingly, TRA/6/2005/TM/DEL is allowed.
32. Both the counsel relied on numerous judgments and we will deal with only those that are necessary for our decision. The appellant relied on the following judgments. We have given alongside the referred judgments the extent to which they apply to the present case.
A.Issue estoppel
(1) Hope plantation v.Taluk Land Board (1999) 5 SCC 590:
In this, it was held that when proceedings have attained finality, parties are bound by the judgment and are stopped from questioning it, and that the principle is based on public policy.
(2) Ishwar Dutt vs. Land Acquisition Officer [AIR 2005 SC 3165]:
In this, it was held that if there is a judicial determination, the parties bound by the judgment are stopped from questioning it, except in proceedings by way of appeal.
(3) Nahar Industrial vs. Hongkong and Shanghai Bank [JT 2009 (10) SC 199]:
In it, it is held that if there is an unavoidable conflict between the findings recorded by the Tribunal and the findings recorded by the Civil Court, then, the latter would supersede the Tribunal’s findings.
The Trade Marks Act, itself makes the Civil Court conform its findings on the issue of validity of the mark to be in accordance with the findings of the Tribunal. (vide: S.111 of the old Act and S.124 of the new Act). Further, FTL has filed an appeal against that judgment, so the decision on those issues is still at large. But the law requires us to deal with the issue of invalidity of the mark in question. So we shall examine it in accordance with this Act and on the basis of the materials before us, and if in our endeavour to decide this issue, we have to consider whether FTL has proved trans-border reputation or use of the mark, we must and we will. The appellate court which is seized of the matter and/or the Hon’ble Court which has to decide the correctness of our order will resolve any unavoidable conflict.
B) Descriptive and Distinctive marks:
(1)Gillette Co vs A.K.Stationery [2001 PTC 513]
In this case, in the judgment, though it is observed that Flexi and Grip are descriptive, it was also held that there was no likelihood of confusion, and it also observed that the principles relating to spill over of international repute will be applied keeping in view the “salient aspects of each case”.
2) Marico vs AgroTech [2010 PTC 736 (Del) DB]
In this case, the mark was Lo-Sorb and the Court held that “Those who were the first of the blocks in using the trademark which is a purely descriptive expression ... ought to be discouraged ... and that it would be in accordance with the spirit of Section 9.
The view we have taken here is that though the marks are descriptive FTL has shown that the said mark was associated with its newspaper alone, but yet, in view of FTL’s failure to prove the claimed user from 1948, their registration shall not remain.
(3) Kanungo Medial (P) Ltd. v. RGV Film Factory & Ors. [2007 (34) PTC 591 (Del.)]:
In this case, the learned Judge held that without the proof of acquisition of secondary meaning, distinctive mark cannot be registered.
(C) The application of the Act is territorial:
(1) A.J. Vulcan vs V.S.V. Palaniswami Nadar [AIR 1969 Calcutta 43].
In this, the Court held that the use abroad and advertisement abroad are of no use to the person seeking registration, and that the definition of the word trademark in S. 2(v) must be understood as use within the territory of India and that the registration of mark and its continuance on the register are exclusively within the scope of domestic and national law.
This case arose out of rectification proceedings and therefore applies to the present case.
(2) Kores ( India) Vs. Whale Stationery products [ 2008 (36) PTC 463 (Bom)]:
In this, the Court referred to the judgment above mentioned and held that the Act has territorial operation and also referred to the Privy Council decision in Star Industrial Company v. Yap kwee Kor 1976 FSPLR 256 where it was held that good will is local in character and has no independent existence apart from the business.
(3) Roca Sanitario vs Naresh Kumar Gupta (Manu/De/2040/2010):
Here, the Court referred to American Jurisprudence ( 74 American Jurisprudence 2nd) dealing with territorial extent of rights which stated that “..where the same mark or name has been lawfully adopted and used by different persons in different localities, neither may use the mark .. in competition .. in territory already occupied by the other”.
This decision can not help the applicant regarding its adoption of the mark, but would help the applicant as regards the territorial application of the law. The decisions above are clear that use for the purpose of the Act is use in India.
(4) Rob Mathys India Pvt Ltd vs. Synthes Ag Chur [1997(17) PTC (DB)]:
In this case, it was held that “the use has to be in India and any advertisement, etc. in foreign counties may not be of any help.” This judgment also holds that trans-border reputation cannot be accepted as the “sole criteria for protection of..... a registered mark and ... there has to be user too” The Court noted the contradiction between the legislative policy insisting upon “user” of the mark and the liberal approach extending protection regardless of user and our domestic limitations on the strength of reputation hardly known in India.
FTL has not taken the position that user in India is unnecessary. In fact it has claimed user from 1948, based on a newspaper report in Indian Express of that year. It has not claimed user from 1888, which is when it commenced its paper in U.K. So, if a mark has to remain in the register the proprietor must prove user in India or intention to use in India.
(D) Quality of User- Substantial, Commercial, Genuine.
(1) Imperial Group Ltd vs Philip Morris ( 1982 FSR 72).
The Court of Appeal held that “a bona fide course of trading would have the primary intention of driving from it a trading profit coupled with trading good will. The judgment held that the sales of NERIT were designed to legitimise the illegitimate and was only to “ bolster a projected use ...of the ordinary word MERIT .. and (it was ) not merely outside the scope of the Trademarks Act 1938 but directly contrary to its spirit and intent.”
This does not help the applicant. The respondent is indisputably the first one to adopt the mark Financial Times, no doubt it was in UK, so their use even if minimal, can not be termed a projected use to bolster the mark or a use to legitimise the illegitimate. The use that has been shown in the records before us, is definitely genuine use.
2) Bimal Govindji vs Pannaalal v. Chandulal [1997 (Arb) L.R. 76]:
In this case too, the Court held that the use should be genuine and not colourable or fictitious.
We cannot hold differently, but what is genuine use and what is colourable, does not depend on purely numbers. In fact, Mr.Hemant Singh himself agreed that the sale of Benz cars or Rolls Royce cars would necessarily be few in number, and his case was that the respondent did not come under that category, whereas Mr. P.S.Raman contended that his client’s paper was the Rolls Royce of newspapers. Rolls Royce or not, FTL’s newspaper is addressed not to the masses but to a particular section of the public; clearly its content shows it to be so. So, what is bona fide sales will depend on the facts of that case.
(E) How the evidence must be assessed
(1) Kores ( India) Vs. Whale Stationery products [ 2008 (36) PTC 463 (Bom)] (cited supra):
In this case, it was held that the evidence of user within India must be clear and cogent for grant of registration.
(2) Bhole Baba Milk food ,,Vs. Parul Food Specialities [2011 (48) PTC 235 ( Del)) DB]
It was held that the volume of sale has to be considered with reference to the spectrum of consumers.
- This decision actually aids FTL. FTL’s newspaper is not the kind which enjoys the popularity of millions. At least, in India, its customer base appears to be, if we may call it that, a trifle elitist, and its target readership is defined. This concept of a specific customer base is recognised in the Trade mark law too, where the relevant section of the public is a determinant to assess the recognition of a mark. So, the fact that the sales does not run into lakhs, cannot alone decide the character of use.
(3) Marico vs AgroTech (2010 PTC 736 (Del) DB) ( cited supra)
It was held that the user was only seven years since 2001 and in that period the mark which was descriptive cannot be said to have acquired distinctiveness.
But in the same case referring to Godfrey Philips India Ltd V. Girnar Foods and beverages (2004 5 SCC 257) it was held that distinctiveness is an issue to be established or examined in the facts of each particular case.
(4) British Sugar v. James Robertson (1996 RPC 281)
In this, it was held that use does not equal distinctiveness. And however much a soap manufacturer uses the word “Soap’ as a purported mark, it would not be distinctive. It said that the use must show that it has been accepted, “ by a substantial majority of persons as a trademark”, and without that descriptive words cannot become distinctive.
In this case there is evidence to show that the words Financial Times have come to indicate FTL’s paper. There is evidence to show that the words, ‘Financial Times’ have come to be accepted by a considerable number of persons as denoting the mark of the respondent. One is the Conference held in 1981. Leading members of the world of commerce in India (FICCI) had co-hosted it and it was described as “A Financial Times Conference”. This is clear evidence to show that the use of the words ‘Financial Times’ would indicate the respondent and no one else. TPHL has attacked this piece of evidence and other documents marked through Mr. Merchant as inadmissible. There is no doubt that we have to keep in mind the rules of evidence regarding admissibility and relevance. But to reject this evidence, which shows the participation of persons of eminence, would be nit-picking. This is the approach we have adopted, we have not been too technical in our assessment of evidence at the same time we have not accepted as evidence what may require a greater degree of proof.
F. Section 31(2) of Old Act (1958 Act) – Onus of proof is higher in the case of descriptive marks:
(1) Marico vs AgroTech (2010 PTC 736 (Del) DB), cited supra
In this case, it was held that ‘distinctive’ means the use of the mark will lead the public immediately and unmistakingly to co-relate the mark with a particular manufacturer/owner.
(2) Chandra Bhan v. Arjundas (AIR 1979 CALCUTTA 280):
In this case, the Court extracted the British Law from Halsbury’s Laws of England (III Edition, Vol.38) to show as to how the evidence of distinctiveness has to be assessed. This decision also held that since registration of a mark confers a title on its owner, ‘a right of rem’, not only the trademark has to satisfy all the conditions imposed by law, but also to ensure that no trader in the same course of business at present or in future is prejudiced. In that, that is why, descriptive words are not granted registration.
(3) Durga Dutt Sharma v. Navaratna Pharmaceuticals Laboratories [AIR 1965 SC 980]:
In this case, the Supreme Court held that ‘the more apt a word is to describe the goods of a manufacturer, the less apt it is to distinguish them’. Therefore, the proof of user was not on the basis of mere proof of distinctiveness.
(4) Imperial Tobacco Co. V. Registrar, Trade marks [AIR 1968 calcutta 582]
In this case, it was held that the evidence of distinctiveness must be carefully scrutinised and spending on advertisement is not enough to prove it. It has to be established and the result has to be proved. This decision also held that there can be no hard and fast rule for any particular immediate period of time required to acquire distinctiveness.
Here, FTL has shown that its paper has acquired a reputation and the mark indicates its newspaper. The applicant TPHL referred to Financial Times newspapers in other countries. These newspapers may or may not be published by virtue of some arrangement with FTL. The Trade Marks Laws of those countries will govern them. We have decided the issue according to the facts of the case and the Indian law. The mark, ‘Financial Times’ is associated in the minds of the Indian readers with the U.K. paper i.e., FTL and not the Financial Times of any other country, as even the Indian Express report in 1948 shows.
(G) NEED FOR SCRUTINY:
(1) Chandra Bhan v. Arjundas (AIR 1979 CALCUTTA 280), cited supra:
The decision stresses the importance of analysis of the evidence produced by the respondent.
(2) Khushi Ram Behari Lal v. New Bharat Rice Mills & Anr. [2011 (46) PTC (Del.)]
In this case, it was held that though IPAB is not strictly bound by technical rules of evidence, the claim must be proved in the manner that is legally acceptable.
There can be no disagreement with this. We have only considered those documents regarding which there can be no dispute and which are legally acceptable, and accepted them to the extent they prove the parties’ case.
(H) LACK OF INTENTION TO USE:
American Home Products Corpn. V. Mac Laboratories pvt. Ltd [AIR 1986 Supreme Court 137]:
Here, the Supreme Court held that the intention to use the mark must be genuine.
(I) TRANSBORDER REPUTATION:
(1) Roca Sanitario S.A. v. Naresh Kumar Gupta & Anr. [Manu/De/2040/2010], cited supra:
In this case, after referring to English authorities, it was held that trans-border reputation is taken into consideration, but not without there being any evidence of use in this very country and if it is solely based on evidence on the assumption of circulation of certain magazines in India, it is imprudent and unfeasible.
(2) M/s.Smithkline Beecham Plc. V. Hindustan lever Limited[1999 PTC 775]:
In this case, the question was whether interim injunction should be granted and it was held that the evidence did not establish trans-border reputation.
(3) Rob Mathys India Pvt. Ltd. v. Synthes Ag Chur [1997 (17) PTC (DB)669]:
In this case, it was held that solely on the ground of trans-border reputation, the registration of a mark cannot be protected.
(4) UAS Pharmaceuticals Pty. Ltd. & Anr. V. Ajantha Pharma Limited [2009 (41) PTC 248 (Mad.)(DB)]:
In that case, the plaintiff had not produced any proof to show that it had any intention to appear in the Indian market in October, 2007.
It would not apply to the present case, since the circulation of newspaper in India over the years would clearly show the intention to use the mark in India. The mark of a newspaper is ‘used’ by its circulation. Printing and publishing a newspaper without any circulation cannot help the proprietor. FTL used the mark in India as seen from the subscribership. In fact, some of the letters produced as evidence indicate a steadfast loyalty to the newspaper. These letters are also attacked by TPHL, but we see no reason to disbelieve them and to hold that there is absolutely no use or intention to use the FTL’s mark in India. In fact the efforts to have a joint arrangement with a newspaper in India, is itself evidence of bona fide intent to use. TPHL’s stand is that FTL’s arrangement was with some other paper not with it. That paper is clearly an associated publication, but even if it is some third party’s paper, for the purpose of bonafide intent to use, it serves FTL well. The use is clearly genuine and sufficient for the purpose of the Act.
(5) Pioneer Nuts and Bolts Pvt. Ltd. v. Goodwill Enterprises [2009 (41) PTC 362 (Del.)(DB)]:
In that case on facts it was found that there was no user.
(6) The appellant also relied on Milment Oftho Industries v. Allergan Inc. [2004 (28) PTC 585 (SC)]:
Here, the Hon’ble Supreme Court observed that multinational corporations who have no intention to coming to India should not be allowed to throttle an Indian company, if it had genuinely adopted the mark and developed the product and marketed it. This judgment is actually in favour of the respondent for, in the same judgment, the Supreme Court held that if the market which is associated with the respondent is world wide, it would lead to an anomalous situation, if an identical mark in respect of a similar drug is allowed in India.
Here, not only had the mark ‘Financial Times’ been associated with FTL, but FTL also had intention of / had introduced the goods, i.e. the newspaper, in India, nor is it a case where the Indian company viz., TPHL is the first in the market, nor have we been persuaded to uphold TPHL’s adoption of the same mark. So, this decision actually helps FTL.
(J) PROHIBITION OF REGISTRATION IN VIEW OF PRESS AND REGISTRATION OF BOOKS ACT:
(1) In Re. G.Alavandar [AIR 1957 Mad 427]:
In this case, the Madras High Court held that the Act does not restrict the freedom of expression, but it prevents the freedom from regenerating into licence and it insists upon furnishing of information.
(2) Times Publishing House Ltd. v. Financial Times Ltd. [1995 (1) Kar.L.J. 219].
This is an appeal against the order passed under Order XXXIX, Rules 1&2 CPC by the Civil Court. In this, the Karnataka High Court held that it required harmonious construction of two Acts.
However, it is relevant to note that the suit, after full trial, has been dismissed and an appeal has been filed there against.
(3) Biman Chandra Pachani v. State of Assam[AIR 1970 Gau 128].
In this case, the Full Bench held that a publisher must comply with the requirements of section 3 of the Act and cannot escape liability by merely stating that he is not a person connected with the press.
We have construed both the Acts harmoniously taking into account the extent to which one Act impinges upon the other.
33. The respondent (FTL) relied on the following judgments:
(1) Haw Par Bros. International Ltd. V. Tiger Balm Co.(P) Ltd. & Ors. [Manu/TN/0526/1995=[1996 PTC (16) 311]
According to the learned senior counsel, this case is almost identical to the present case. In this case, there was a Singapore company called, Haw Par Brothers which took over the business of two brothers who adopted the mark, ‘Tiger Balm’ in their medicinal ointment. The take over was in or about 1932. The trademark was registered in various countries, all over the world, including India. It was also advertised here. During the Second World War, export to India was stopped. After Indian independence, there were import restrictions. In 1990, the Government introduced liberalisation policy. The appellant decided to launch its products. The third respondent showed interest in association. There were negotiations which did not fructify. After the failure of negotiations, the respondent devised a scheme of trading on the reputation of the appellant and it also applied for registration. The appellant also filed rectification petition. This was broadly the case of the appellant. The Division Bench held that the appellant had acquired world wide reputation which products were available through official and non-official sources and the respondent had copied its design, label and carton. As regards the necessity of actual business in India, the Division Bench held that though at one time, a view was taken that unless the business is carried on in a particular place, there is no question of relying on reputation or goodwill and claiming any relief on that footing, but in course of time, the view has began to change. The Division Bench referred to ‘Drysdale and Silverleaf on Passing Off Law and Practice’ and held that foreign traders may well have a reputation which can support a passing off action in the country. They referred in detail to Kamal Trading Co. V. Gillette U.K. Limited [1988 (1) PLR 135] which has already been extracted above. They agreed that the view of Delhi High Court regarding trans-border reputation and especially, the view in WWW International v.Mahavir Spinning Mills Ltd. [1994 PTC 250=1994 31 DRJ 412] where the learned Judge of Hon’ble Delhi High Court said that the trade mark law is not intended to protect the person who deliberately sets out to take benefit of somebody else’s reputation with reference to the goods especially so when the reputation extends worldwide.
(2) Ashok Leyland Limited v. Blue Hill Logistics Pvt. Ltd. [2011 (4) CTC 397]
In this case, the marks were ‘Luxura’ and ‘Luxuria’ and the learned Judge held that they are descriptive and the protection is not strong. Learned Judge referred to Indian hotels Company Limited v. Jiva Institute of Vedic Science and Culture [2008 (37) PTC 468 (Delhi)] where the Hon’ble Delhi High Court held that the appellant who had applied for registration of an identical name cannot attack the registration of the same mark on the ground that it is descriptive.
FTL’s mark has acquired distinctiveness because of the long use and in any event, TPHL which has applied for the same mark, cannot attack that FTL’s mark is descriptive.
(3) Milment Oftho Industries v. Allergan Inc. [2004 (28) PTC 585 (SC)]. This case refers to the person first to have adopted the mark, which was, in this case, only the respondent.
(4) Uniply Industries Ltd. V. Unicorn Plywood Pvt. Ltd. & Ors [AIR 2001 SC 2083]. It is submitted that sometimes prior small sales of goods are sufficient to establish priority.
(5) FTL distinguished Bimal Govindji Shah Trading as Acme Industries v. Pannalal Chandulal [1997 (2) Arb.LR 76], cited supra, and submitted that the user within the territory of India was referred to only in the context of section 46.
We do not think that any such qualification can be made. The Hon’ble Delhi High Court in the above case relied on A.J. Vulcan vs V.S.V. Palaniswami Nadar (IR 1969 Calcutta 43). Though that was a case which dealt with section 46(3), the Calcutta High Court relied on Ford-Werke AG.’s Application for a Trade Mark reported in [(1955) 72 RPC 191] which held the adaptability to the distinctiveness of a mark must be ‘in respect of the market in the U.K.’ Then, again, in the same judgment, learned Judge of the Hon’ble Calcutta High Court has referred to the observation of Lindley M.R. in Re Batt and Co’s Trade Mark case reported in [(1898) 2 Ch D 432 at p.439] that ‘can a man properly register a trademark for goods in which he does not deal or intends to deal?’ and that it must mean, deal or intend to deal in this country, and the categorical statement in paragraph-27 that the Trade Mark Law from that point of view is not extra-territorial and the learned Judge has read the preamble and confined to the territorial limits of India and further, the learned Judge quotes, ‘naturally, if it is not used in India that would be a ground for removal from the Indian register’. So, the use of the mark must be in India for a mark to be registered.
(6) No judgment has been brought to our notice arising out of cancellation proceedings where the Courts have held that the use for the purpose of the Act would include the ‘use’ elsewhere. To decide whether an Indian dealer is also imitating this mark, the Court may look at the earliest user overseas by a foreign company which enjoys trans-border reputation, but the law laid down by the Calcutta High Court is clear that to obtain protection of the Act, the registered proprietor must show user in India.
(7) Haji C.H.Mohammad Koya v. T.K.S.M.A.Muthukoya [AIR 1979 SC 154]. In this case, the Hon’ble Supreme Court held that the object of Press and Registration of Books Act was to regulate printing press and newspapers in order to preserve copies of newspapers and books and therefore, the compliance or non-compliance of the provisions of the Act will not affect the registration of the mark.
(8) K.N.Ganesh v. Chief Presidency Magistrate [AIR 1959 Mad 519]. There, it was held that if a right to use a particular name for publication must be acquired under the provisions of the Trade Marks Act, the remedy for him will be in the Civil Court and the Magistrate had no jurisdiction to decide the rival claims for using the same title.
This helps the respondent.
(9) Cattle Remedies and Anr. V. Licensing Authority/Director of Ayurvedic and Unani Services [2007(2) AWC 1093, where the Division Bench took primacy to the intellectual property rights to the parties over licensing regulation.
(10) The Assistant Commissioner v. M/s.Velliappa Textiles Ltd. & Anr. [263 ITR 550(SC)]is referred to show that when the PRB Act provides penal consequences, the provisions are to be strictly construed and when the Act merely refers to printing and publishing, circulation cannot be brought under the legislation and the observation in Bennett Coleman and Co.& Ors. V. Union of India & Ors.[(1972) 2 SCC 788], cited supra, cannot be relied on in the manner which will have severe consequences on the circulating agents of newspaper, who are neither the publishers, nor the printers.
(11) M.K.Agarwal v. Union of India [AIR 1994 Delhi 242] is referred to show that judicial notice has to be taken to the fact that foreign newspapers and publications are freely available in the country.
(12) SNJ Distilleries Ltd. And Anr. v. M/s.Imperial Spirits Private Ltd. [2010(4)LW 304]where two ordinary words ‘Gold’ and ‘Napoleon’ were afforded protection.
(13) Automatic Electric Ltd. V. R.K.Dhawan and Anr. [1999 PTC(19) 81]. It was held that when registration has been granted it should not be lightly rectified. Rectification is asked for inter alia when a mark which ought not to be on the register is granted registration contrary to the Act. So, we are bound to examine the issue since it is not just an adversarial issue between TPHL and FTL, but a public-interest-issue too.
(14) PLAYBOY ENTERPRISES INC. V. BHARAT MALIK & ANR. [91(20010 Delhi Law Times 321] here the Delhi High Court dealt with the distinctive features of the Press and Registration of Books Act and Trade and merchandise Marks Act and it also held that the two legislations shall not be confused and ‘ so far as the valuation or infringement of the trade mark or mark is concerned this is to be regulated by the provisions of TMM ACT AND PROVISIONS OF THE PRB Act are of no relevance’.
This is in favour of the respondent.
(15) LIVING MEDIA INDIA LIMITED v. JITENDER V JAIN & ANR. [98 (2002) Delhi Law Times 430] This related to the mark, ‘AAJ TAK’ and the word ‘AAJ’ was so distinctive that it has acquired a distinct meaning.
(16) TV TODAY NET WORK LIMITED AND ANR. V. KESARI SINGH GUJJAR AND ORS. [2008 (38) PTC 262 (Del)]. In this case, the Hon’ble Delhi High Court held that the Press and Registration of Books Act concerns only with registration for the purpose of publication and it does not deal with various aspects of trade marks, etc. The judgment also held that merely because of a person securing registration under the Press and Registration of Books Act, he cannot infringe another mark.
(17) THE INSTITUTE OF CHARTERED ACCOUNTANTS OF INDIA v. UNION OF INDIA AND ORS. [MANU/DE/1019/2005] where the Learned Judge had observed that the press and Registration of Books Act reflects the colonial mindset.
(18) M/s.POWER CONTROL APPLIANCES v. SUMEET MACHINES PVT.LTD. [(1994) 2 SCC 448] is referred to for the proposition that there can only be one mark, one source and one proprietor.
This was relied on to support its case that there can be only one ‘Financial Times’.
(19) CORN PRODUCTS REFINING CO. V. SHANGRILA FOOD PRODUCTS LTD. [PTC (Suppl) (1) 13 (SC)] where it was held that the question whether two marks will confuse is a pure question of fact and in deciding the question of similarity, the mark has to be considered as a whole.
(20) MILMET OFTHO INDUSTRIES v. ALLERGAN INC. [(2004) 12 SCC 624], cited supra,where the Supreme Court had stressed that the ultimate test is who is first in the market.
FTL is clearly the first in the market.
(21) UNIPLY INDUSTRIES LTD. v. UNICORN PLYWOOD PVT. LTD. & ORS. [AIR 2001 SC 2083]. In this case, the seniority of user was stressed and even prior small sales of goods with the mark are sufficient to establish priority.
It is clearly not just the quantity of use, but the quality of use.
(22) CAPRIHANS (INDIA) PRIVATE LTD. v. REGISTRAR OF TRADE MARKS AND OTHERS [PTC (Suppl) (2) 497 (Cal0 (DB)]. Here, it was observed that the fact that there was registration in other countries is a relevant fact and also that importance must be attached to the same.
We are also conscious that the registration in other countries would be relevant, but, yet, unless the provisions of our own trademark law are complied with, we cannot uphold the registration, merely because other countries have granted registration.
(23) MOTORPRESSE INTERNATIONAL VERLAGSGESELISCHAFT HOLDING mpH & Co. V. MISTRALE PUBLISHING PVT. LTD. [2005(30) PTC 377 (Del-DB)]. In this case, the Hon’ble Delhi High Court considered the question whether a party who entered into an agreement to use a trademark of another as licensee can turn around and contend that the licensor has no trans-border name or reputation. The Delhi High Court answered in the negative.
In the present case, TPHL had entered into a Syndication Agreement and one of its sister concerns had also considered joining in a venture for publishing a newspaper in the name, ‘Financial Times’ and therefore, TPHL cannot now dispute the reputation of FTL.
(24) LAXMIKANT V. PATEL v. CHETANBHAI SHAH AND ANOTHER [(2002) 3 SCC 65]. In this, the Supreme Court held that a person may sell his goods under a trade name or style and with the lapse of time such a business or service associated with the person acquires reputation and becomes a property which is protected by courts.
In this case, FTL is the company which is the publisher of ‘Financial Times’ since 1888 in U.K.
(25) UNITED BIOTECH PVT. LTD. v.ORCHID CHEMICALS AND PHARMACEUTICALS LTD. & ORS [MIPR 2011 (3) 54]. The Hon’ble Delhi High Court held that while the principles of comity of jurisdiction ought to be respected, it does not mean that IPAB should be bound by the interim orders of the High Court and disputes regarding registration of marks and rectification are left to be decided by IPAB which is expected to form an independent view while respecting any final determination of the issue by a High Court.
(26) JAMES CHADWICK & BROS. LTD. v. THE NATIONAL SEWING THREAD CO. LTD. [AIR 1951 Bom. 147]. In this case, it was held that when a Registrar has exercised discretion vested in him for registration of a mark, the Court in appeal should be extremely loath to interfere with the discretion that has been correctly exercised.
(27) M/s.BINDAL TOYS v. M/s.GEMINI TOYS [AIR 1996 Delhi 161]. This also refers to the above ratio that the Court shall not easily disturb the opinion of the Registrar.
(28) CHIMANLAL NARSAJI SUHAN v. PARASMAL MITHALAL ARMAR AND ANOTHER [MANU/MH/0082/1997]. This also lays down that the Registrar is an expert Tribunal who regularly deals with this question and his discretion should not be disturbed.
(29) THE IMPERIAL TOBACCO CO. OF INDIA LTD. v. THE REGISTRAR OF TRADE MARKS AND ANR. [AIR 1977 Cal 413]. This is also to the same effect.
Though two volumes of citations were given by the respondents, we have referred only to those which were actually relied on and which are necessary.
34. Both sides have produced voluminous evidence in huge piles (or do we mean files?). We have not dealt with all of them. We have dealt only with that evidence which clinched the case.
(i) In TRA/6/2005/TM/DEL, the only documents to prove user in 1948 were the three issues of Indian Express. We have held that this evidence may indicate a trans-border reputation and not user. The user subsequent is not enough. The circulation establishes use, the evidence shows trans-border reputation, but the evidence does not show user from 1948.
(ii) In ORA/64/2007/TM/DEL, there is no evidence relating to this class of goods. In fact, no submissions were made in this regard by the respondent. FTL perhaps thought, may be justifiably, that if the mark in TRA/6/2005/TM/DEL rode through successfully, this mark will go pillion-riding.
In ORA/67/2007/TM/DEL, we were satisfied with the evidence and more importantly the claim was proposed to be used. So, the scrutiny regarding date of user did not arise.
(iii) In the other cases, we have only referred to that evidence which show TPHL’s knowledge of FTL’s mark to check the nature of adoption.
35. Next, we take up the two connected matters which are OA/4/2006/TM/DEL and ORA/112/2006/TM/DEL. The proceedings were initiated by issuing notice under S. 57(4) of the Trade Marks Act relating to TPHL’s application No.587870 in class 16. In the notice it was stated that the application was erroneously registered and the registration certificate was issued in error being in contravention of S. 11(1) and (2) of the Trade Marks Act and therefore, it was an entry wrongly remaining in the register. Hearing notice was given and according to the Registrar, opportunity was afforded to TPHL and by a detailed judgment in which the Karnataka Civil Court decision, the Press and Registration of Books Act and the question of issue of estoppel were also referred to, the Assistant Registrar rejected the objection raised by the appellant TPHL that unless proceedings are pending, notice under section 57(4) cannot be issued. The mark of TPHL was expunged.
36. In WHIRLPOOL CORPORATION v. REGISTRAR OF TRADE MARKS, MUMBAI [AIR 1999 SC 22], the Supreme Court construed the meaning of ‘Tribunal’ as defined in section 2(1)(x) and held that the Registrar would be a ‘Tribunal’ if the proceedings are pending before him and the High Court would be the ‘Tribunal’ if the proceedings are pending before the High Court. In that case, the Assistant Registrar had dismissed the appellant’s opposition and the appeal was filed in the High Court and thereafter, the appellant also filed rectification petition. The Supreme Court held that in order to attract the provisions of section 56(4), the proceedings must be pending before the Registrar. In this case, the Assistant Registrar appeared to be under the impression that the issuance of notice would amount to pendency of proceedings. That is not the spirit of section 56(4), where proceedings are required to be pending. The language is fairly clear. Only if the proceedings under Section 56 are pending, then the Assistant Registrar would be the ‘Tribunal’ vested with the power to issue notice. The Registrar’s order is without jurisdiction. So, on this ground, OA/4/2006/TM/DEL must be allowed. However, the fate of the mark would depend upon our decision in ORA/112/2006/TM/DEL, which we will deal hereinafter.
37. TPHL contends that it had applied for the approval of three titles and it was the authority under the Press and Registration of Books Act which approved the title, ‘Financial Times’ and this was in the year 1984. The approval was given by the Registrar of newspapers for India and subsequently, because of certain difficulties which were extraneous to the decision in this case, it had to discontinue the publication. So there was no dishonesty in adoption of the mark. The adoption of the mark thereafter in 1990 cannot be said to be dishonest either. Mr. Hemant Singh submitted that on the date when it applied for approval of the title before the Registrar, the FTL’s mark was not used as title of newspaper in India and therefore, there was no statutory bar under the PRB Act. Learned counsel submitted that the adoption was honest considering the facts of the case and the rectification shall not be allowed. Mr.P.S.Raman for FTL, would submit that dishonesty was writ large in the adoption of the mark and that the group to which TPHL belongs viz., Times Group had all along been a subscriber to ‘Financial Times’. So TPHL cannot contend that their adoption was honest, because there were transactions between the parties e.g. the Syndication Agreement and TPHL being the owner of newspapers can hardly plead ignorance of the mark of FTL. Therefore, the registration of the mark in favour of TPHL should be removed.
38. He also submitted that it is, in those circumstances, the Supreme Court imposed conditions for continuance of publication of TPHL’s newspaper. Mr. P.S.Raman submitted that the distribution of Financial Times was as a complimentary copy along with Economic Times and therefore, any circulation figure furnished can hardly come to the aid of the applicant in relation to this mark. It is only when people voluntarily purchased the newspaper in question, one can assess the strength of the mark. Above all, TPHL which has attacked the same mark as being descriptive cannot take a different stand in the rectification proceedings filed against it.
39. We have already dealt with the area of coincidence of the PRB Act and the Trade Marks Act. The authority under the PRB Act is neither concerned with the distinctiveness, nor with the descriptiveness, nor with any other requirements for registering a trade-mark, nor is it concerned with the trans-border reputation. All that the authority can look at is, whether there was a same or similar mark in the same language or in the same State. So, if three names are given by TPHL, the fact that the authority under the PRB Act chose the title ‘Financial Times’ is hardly a point in its favour.
40. Being in the same business, TPHL would know about the existence of ‘Financial Times’. Though it was pleaded by TPHL, that the collaboration efforts were with another entity, TPHL must have known about it. The Financial Times Conference which was held in 1981 in association with FICCI must have generated a lot of publicity considering the persons who had participated in that conference both from private and public sectors. Further, there were the Syndication Agreements between the newspapers whereby TPHL was publishing certain articles of FTL. Its case with regard to user was that the fact that the respondent’s name appeared in the syndicated articles would not amount to user. But, definitely it is a strong piece of evidence to show that the applicant TPHL was aware not only the existence of the respondent, but also that it had some intention to enter India. Further, as contended by TPHL in TRA/6/2005/TM/DEL, the word ‘Times’ appeared to be popular among newspapers such as, New York Times, London Times, Times of India and others. Therefore unless the applicant TPHL, had proved that mark had attained distinctiveness, the registration ought not to have been granted. The applicant TPHL knew about the existence of the respondent and its circulation in India. In certain businesses like, newspaper and perhaps, motorcar industry, one manufacturer can hardly pretend to be ignorant of the existence of rival marks. TPHL knew about FTL, it knew about its circulation in India; so, its adoption of the same cannot be accepted. TPHL’s Financial Times was circulated as a complimentary copy along with Economic Times. So, the circulation figures may be a matter of celebration for Economic Times as a mark, but does not push TPHL’s Financial Times any further. Therefore, we hold that the applicant’s (TPHL) mark shall not remain in the register and ORA/112/2006/TM/DEL is allowed.
41. Now, we take up ORA/64 & 67/2007/TM/DEL. ORA/64/2007/TM/DEL deals with the mark, ‘Financial Times’ in class 9. The focus of both sides was more on TRA/6/2005/TM/DEL than any other proceedings. In fact, both the counsel stated that the results of other applications would follow the decision in TRA 6/2005. FTL has not placed any evidence of use of the mark ‘Financial Times’ in class-9 goods. Whatever evidence it has produced to the extent to which they are admissible or relevant are all with regard to class-16 goods. Of course, the application was a proposed-to-be-used application, but the same was applied for in the same year 1987. We are aware that in American Home Products Corpn. V. Mac Laboratories pvt. Ltd [AIR 1986 Supreme Court 137], the Supreme Court had held that business enterprises are not started over night. Even if we give that elbow room to FTL it does not help. In view of the fact there is absolutely no evidence with regard to this class of goods, we do not think that FTL’s mark in Class-9 merits survival on the register. ORA/64/2007/TM/DEL is allowed.
42. Now, we go to ORA/67/2007/TM/DEL which relates to the mark, ‘FT’ in class 16 which was applied for on 9.3.1987 as proposed-to-be-used mark. According to the learned counsel for TPHL, ‘FT’ letters are inherently not distinctive and therefore, the mark shall not be granted registration. He relied on the order of this Board in ASHOK TRIPATHY, ASHLOK v. BHARAT N.PARIKH RAJEN A.KAMDAR, SAFE EARTHING ELECTRODES MANUFACTURING CO. Reported in [(2008) 141 Comp Cas 378=MIPR 2007 (3) 269]. There, the goods were Safe Earthing Electrodes and the mark for which the registration was obtained was ‘S.E.E.’ The Board held that the trademark lacks secondary meaning unless it is established that significant number of people in the market associated the mark with the product as originating from a particular source. In that case also, user was ‘proposed-to-be-used’ and therefore, no evidence would be offered for distinctiveness acquired by use.
43. P.P.JEWELLERS PVT. LTD. v. P.P.BUILDWELL PVT. LTD. [2009 (41) PTC 217(Del.)] was a judgment of the learned Single Judge of Delhi High Court against which an appeal was filed and the judgment in the appeal was reported in 2010 (43) PTC 1, which confirmed the judgment of the learned Single Judge. The Division Bench referred to British Petroleum Company Ltd. v. European Petroleum Distributors Ltd. [1968 RPC 54] where ‘W.&G.’ (Du Cros’ Application) [(1913)30 RPC 660] was referred to and it was held that the registration was refused
‘not because the letters W.& G. were thought to be so inherently unadapted to distinguish the goods in question (taxi cabs) as to make registration in principle impossible, but because the user proved, especially as regards area, was thought not to be enough to justify registration in a case where the inherent distinctiveness of the mark was so slight’.
The judgment further observed that ‘I do not think that it is right to say that no two-letter mark ought ever to be registered’. In such matters, the decision would depend upon the facts of the case. There can be no across the board decision that two-letter marks can be registered or that they cannot be registered. On the side of FTL, it was contended that even in the correspondence between the parties, TPHL has made a reference to ‘FT’. In Annexure-63, Times of India addressed a letter to the Financial Times which reads as follows:
‘E.T. obtains the benefit of F.T.’s editorial strength…’
So, the relationship was very good until disputes arose. Even in the Syndication Agreement, it was referred to as FT Business Information Ltd. The Financial Times readers survey refers to as FT. The Economic Times (from TPHL’s stable) published an article in 1991 ‘A view from outside FT’. If we apply the ratio in Haw Par case [MANU/TN/0526/1995], in the light of the evidence filed by the respondent FTL, it cannot be denied that the reading public in India especially those who read financial news and magazines, viz., target audience, were aware of the reputation of the respondent (FTL) and the association of the mark FT with the respondent (FTL). In the case of this mark,FTL had filed it as proposed-to-be-used mark. When the respondent undertook 1994 survey, they referred to the original FT survey of the year 1963. All these would not amount to use of the mark ‘FT’ in India in 1963, but definitely, it indicates reputation. FTL has not claimed that it had used FT as a mark in India prior to the date of application. Considering the above circumstances, we do not find any reason to remove the mark ‘FT’ from the Register. ORA/67/2007/TM/DEL is dismissed.
44. In the result, TRA/6/2005/TM/DEL is allowed with costs of Rs.10,000/-. ORA/112/2006/TM/DEL is allowed with costs of Rs.10,000/-. OA/4/2006/TM/DEL and ORA/64/2007/TM/DEL are allowed. ORA/67/2007/TM/DEL is dismissed. .
45. M.P.No.70/2012 in TRA/6/2005/TM/DEL, M.P.No.71/2012 in OA/4/06/TM/DEL, M.P.No.72/2012 in ORA/112/2006/TM/DEL, M.P.No.73/2012 in ORA/64/2007/TM/DEL and M.P.No.74/2012 in ORA/67/2007/TM/DEL were all filed for reception of additional evidence. In this judgment, we have taken into account all the evidence filed and considered the relevant ones. In view of this, all the above MPs. are allowed. As we are not inclined to order for cross-examination of witnesses, M.P.No.157/2010 in TRA/6/2005/TM/DEL is dismissed. M.P.Nos.04/2008 in TRA/6/2005/TM/DEL filed for extension of time for filing rejoinder evidence and M.P.No.264/2010 in OA/4/06/TM/DEL for stay stand closed as nothing survives.
(S.Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
