By Helen Sloan
June 13 2012
A trademark dispute between the UK’s Financial Times and the Times of India that has been running for almost 20 years shows no sign of reaching an end, despite a recent order by India’s Intellectual Property Appellate Board (IPAB).
In April this year, the IPAB decided that the trademark FINANCIAL TIMES that had been registered by both parties should be removed from the registry. The Spicy IP blog, which has been following the case over the past few years, has suggested that the IPAB order marks a “minor victory” for the Financial Times, as the London publication has come out of the process with one trademark at least, for FT. On the other hand, the Times of India retains its registration of the name at India’s Registrar of Newspapers. Ultimately, however, neither side is likely to be 100% happy with the decision.
The roots of the dispute go back to 1987, when London-based paper the Financial Times first registered the trademark FT in India, followed by FINANCIAL TIMES. Subsequently, Indian newspaper the Times of India registered similar marks – however only the Times of India also registered the titles at India’s national press registrar.
Hemant Singh from Inttl Advocare in Delhi, who acts for the Times of India, told WTR that they are reasonable happy with the decision because they have succeeded in their aim of getting the UK Financial Times’ trademark cancelled. “As far as our registration is concerned, we are primarily claiming right to use the title under the local press laws,” he says. “There is the Press and Registration of Books Act which determines the title under which a newspaper can be published here. We have been publishing the Financial Times since 1990 in India. The Financial Times UK secured the trademark registration, but never bothered to secure any title clearance under the local clause.”
Singh also points out that while the UK Financial Times first filed for infringement against the Indian Times group back in 1993; this suit was finally dismissed by the trial court in 2002. This, combined with the Appelate Board’s recent order, makes for a success for the Indian party. Singh does admit, however, that a happier outcome for the Times of India would have seen their trademark allowed by the IPAB.
The matter is further complicated, as Singh explains, because trademarks in the newspaper business are different to other industries due to the small pool of names that are traditionally used. “It is a common practice that publishers use a handful of titles that are shared by them all. So you have Times used all over the world - the Tribune, the Telegraph - it is something that is peculiar to the newspaper trade.”
Although this is an unusual case, there are lessons to be learned for foreign companies doing business in India. Singh explains that the UK Financial Times could perhaps have saved themselves some trouble had they followed local procedure for newspaper registration: “When they filed an application in 1987 intending to publish the newspaper in India, they could have made the compliances with the local press law and they could have secured the title, and they would have had no issue in being the only ones entitled to publish the Financial Times in India.”
Appeals by both parties to the IPAB will be heard later this year, and the case is also being fought on other platforms. This very long-running saga looks like it will not be over any time soon.
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