An Order for the Times: a tenable TM challenge

The longstanding multi-forum dispute in India between two global newspaper giants The Financial Times Ltd. (‘FT’) – Bennett Coleman & Co. (‘BC’) (the people behind The Times of India) is a classic case of using IP as mainstream business strategy to sculpt the growth of an industry.

In the latest in the turf war ongoing since the mid-1980s, the Delhi High Court refused to stay FT’s infringement suit merely because BC had filed a rectification petition at the Intellectual Property Appellate Board challenging the validity of FT’s trademark. The order discusses the “tenability” of a validity challenge in context of the much-debated S. 124 (Trademarks Act) [which deals with the stay of an infringement suit where the (infringed) trademark’s validity is challenged.]

You can download and read the order here.

As ever, a quick backstory:

I gather these snippets primarily from the order, but also from two old articles which discuss FT’s and BC’s business strategies in India: in Mint and ContentSutra.

[Historically, foreign newspapers have not been allowed direct entry into India (there are still huge restrictions in the industry). As a result, newspapers had to circuitously enter the Indian market. TM registrations would have been one way of blocking their own brands, as well as entering into content sharing agreements with the Indian media, as FT had with Business Standard for several years.]

FT applied for the mark “FT” in India in 1987, which was granted in 1994. I haven’t unfortunately seen the plaint, but I make some connections here. About a decade ago, BC’s financial daily the Economic Times used to run a periodical supplement which they called The Financial Times, where they may also have used the “FT” moniker. It is likely that this forms the core of the present infringement suit filed in 2001.

In its response to the suit in 2002, BC pleaded lack of inherent or acquired distinctiveness of the FT mark. BC filed for rectification in 2007, and moved the present application under S. 124 in 2010. BC has also in 2010 itself applied for the same “FT” mark.

[Additionally: BC (via its arm, the Times Publishing House) has registered marks including variations on “Financial Times” and “FT”. BC also appears to have registered newspaper titles with the Registrar of Newspapers in India, on these same variations.]

The Order

BC argued that when a rectification is moved before the IPAB against a mark which is allegedly infringed, at best the Court needs to be satisfied that the rectification (validity) challenge is, prima facie, tenable and if so proceed to stay the suit. Further, to determine such tenability, BC argued that the court should look at the validity challenge at the time when the mark was applied for (1987), and no later.

FT was in agreement that S. 124 required assessing whether the challenge was prima facie tenable. But this had to be done carefully, in view of any implications it would have on the rectification proceeding itself.

Hypothetically, they argued, in such assessment, if a Court were to accept that the marks were not distinctive, and thus not capable of registration, BC would likely rely on these decisions in the rectification before the IPAB. The IPAB, being a lower Tribunal, would likely accept the Court’s opinion, and decide the rectification against FT.

FT also referred to BC’s delay in filing the rectification, and how the distinctiveness challenge ought to rebound on BC because they had themselves filed for the mark.

Justice S Ravindra Bhat accepted FT’s argument, but pointed out that this was conditional; and that “tenability” played out differently in case of a temporary injunction, and while staying a suit.

“The Court is conscious that this reason cannot be invoked under all circumstances, because Section-124 does empower prima facie examination of tenability. Nevertheless, while exercising that jurisdiction, a fine distinction has to be kept in mind between the nature of “tenability” of such a plea, while considering a temporary injunction motion, and one for stay of suit.”

What must have hit BC hard was the Court noting that BC’s application for registering FT as a trademark was indicative of their own claim of distinctiveness, and was near-synchronous with the filing of this S. 124 application.

There’s a lot more to the FT-BC story than what the order tells us, and it would be great if anyone who has the juice on this could share!


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