Distribution of complimentary copies does not amount to trademark use

India

The registration of the mark FINANCIAL TIMES in the name of two publishing houses - The Financial Times Limited, London, and Times Publishing House Limited, which runs the well-known Indian publication Economic Times - has given rise to an intense trademark battle, with both parties filing cross-complaints and cancellation actions to assert their rights in the mark.

In Times Publishing House Ltd v The Financial Times Limited (April 4 2012), the Intellectual Property Appellate Board (IPAB) has ruled in five related cancellation petitions filed by both parties:

  • Three cancellation petitions filed by Times Publishing House dated March 9 1987 against The Financial Times' registrations for:
    • FINANCIAL TIMES in Classes 9 and 16 of the Nice Classification (Nos 468936 and 468937, respectively); and  
    • FT in Class 16 (No 468932).
  • A cancellation petition filed by The Financial Times against Times Publishing House's FINANCIAL TIMES mark in Class 16 (No 587870).
  • An appeal filed by Times Publishing House against a suo moto order of the registrar cancelling Registration No 587870 in Class 16.

In the cancellation petitions before IPAB, the main issues were:

  • whether The Financial Times had been able to show use of the mark FINANCIAL TIMES since 1948;
  • whether The Financial Times’ mark FINANCIAL TIMES was descriptive and non-distinctive, being a commonly used title for newspapers in different countries;
  • whether the circulation of complimentary copies of the Financial Times by Times Publishing House amounted to trademark use;
  • the impact of The Financial Times' trans-border reputation and whether such use abroad was sufficient to defend a non-use action; and
  • the effect of a registration for a newspaper title under the Press and Registration of Books Act 1867 in favour of Times Publishing House.

In support of its case, The Financial Times submitted that:

  • Times Publishing House could not allege that the FINANCIAL TIMES mark was descriptive, since it had sought to register an identical mark.
  • It had coined the mark FINANCIAL TIMES in 1888 and had used it in India since 1948. The mark had acquired distinctiveness, as well as an enviable goodwill which had crossed over to the Indian territory.
  • Times Publishing House had adopted the FINANCIAL TIMES mark in bad faith, since it was a subscriber of The Financial Times and had entered into a syndication agreement with The Financial Times on December 11 1990.
  • The circulation of newspapers is not covered by the Press and Registration of Books Act. The act relates to the printing and publishing of newspapers. The Trademarks Act and the Press and Registration of Books Act must be harmoniously construed.
  • Its exchange of correspondence with Times Publishing House in 1993 established that it had a worldwide reputation, and Times Publishing House itself had sought to enter into a commercial arrangement with The Financial Times.
  • Use of the mark cannot be determined based only on the number of copies circulated.
  • The Financial Times Conference, organised by The Financial Times and the Federation of Indian Chambers of Commerce and Industry in 1981, indicated its good-faith intention to use the FINANCIAL TIMES mark.

In response, Times Publishing House argued that:

  • The Financial Times had not complied with the mandatory provisions of the Press and Registration of Books Act.
  • the evidence produced by The Financial Times was inadmissible, as evidence postdating 1993 ought to be rejected;
  • the fact that a mark has a trans-border reputation does not mean that there is no requirement of use in India;
  • the adoption of the FINANCIAL TIMES mark in 1984 was in good faith, since this newspaper title was approved under the Press and Registration of Books Act; and
  • the circulation of The Financial Times in India was insignificant and did not establish exclusive rights in favour of The Financial Times. 

The IPAB held as follows:

  • No other newspaper was published under the name Financial Times when The Financial Times applied for registration in India.
  • The word ‘circulation’ is not used in the Press and Registration of Books Act and, therefore, there was no violation of the act.
  • It is not only the quantity, but also the quality of the use, that must be taken into account, as well as the type of the goods.
  • The Financial Times was the first to use this title in the market. Its FINANCIAL TIMES mark had thus acquired distinctiveness.
  • Times Publishing House could not attack The Financial Times’ mark on the grounds that it was descriptive, since it applied for an identical mark.
  • The evidence produced by The Financial Times showed its trans-border reputation and its intention to enter the Indian market.
  • However, due to the Financial Times’ failure to prove use since 1948, its registration for the mark FINANCIAL TIMES (No 468937) in Class 16 was removed from the register.
  • The Financial Times did not present any evidence relating to Class 9 goods and, accordingly, Registration No 468936 for the mark FINANCIAL TIMES was also removed from the register.
  • The mark FT had acquired a reputation in India, as the public was aware of it. Therefore, there was no reason to remove Registration No 468932 in Class 16 from the register.
  • The registrar had no jurisdiction to cancel suo moto Times Publishing House’s registration for FINANCIAL TIMES (No 587870). As the parties were in the same business, Times Publishing House would have been aware of the existence of The Financial Times and its circulation in India. The circulation of Times Publishing House's newspapers as a complimentary copy along with Economic Times did not assist Times Publishing House, as it had not established a reputation of its own. Therefore, Times Publishing House’s registration could not remain on the register and was expunged.

The decision is a reminder to many applicants that a claim of use at the time of filing an application, if challenged and not supported by cogent evidence, can be a ground for cancellation of the mark. Interestingly, the decision also shows that the distribution of complimentary copies does not amount to use of the mark.

Abhishek Nangia, Ranjan Narula Associates, Delhi

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