Trademark

FT vs TOI: The rest is yet to come


The title-ownership battle between two global media giants — The Financial Times Ltd., of the UK, and the home-grown Times Publishing House Ltd., known to us through their flagship publications, the Financial Times (FT) and the Times of India (TOI)  — may well go down as one of the longest ever in Indian corporate history. {warning: extremely long post}

FT has been trying to enter the Indian market for many years now, through joint ventures, content sharing agreements and the like, but with limited success (see this post on the media-tracker website churumuri, for example). Some believe that there may have been a concerted effort by multiple media houses in India to prevent its entry into the country, such as this indicting post by an ex-FT correspondent who lives in New Delhi. Whatever the politics may be, the litigation between FT and TOI is fascinating, complex and has many layers to it, some of which I try to piece together in this post. Image from here.

The IPAB order, and its appeal to the Delhi HC

Shan’s recent post on the lengthy April 2012 order of the Intellectual Property Appellate Board (IPAB) suggested that the fight on the IP front may have concluded. (you can read the entire IPAB order here). But it was not to be, and the scene has since shifted away from the Board. The IPAB order directed that trademarks of both parties (“Financial Times” in various classes) be removed from the register. FT was the only party to come out of the order with one trademark in hand (“FT”).

Not surprisingly, both FT and TOI were aggrieved at having lost their trademarks. Both filed writs before the Delhi High Court immediately after, and the HC stayed the IPAB order, and has scheduled to hear the matter next in October 2012.

Regardless of the appeal, the IPAB order was surely a minor victory of sorts for FT (because they were the only party left with a mark in hand, and with a stated acknowledgement that they had cross-border reputation and had demonstrated distinctiveness). There were a few other statements made by the IPAB which seem to swing the general mood in FT’s favour, as follows: 
  • That FT was “clearly the first in the market”.
  • Additionally, the IPAB order points out that TOI had entered into a syndication agreement with FT through one of its sister concerns, and considered a joint venture to publish a newspaper with the name “Financial Times”. This meant that TOI could no longer “dispute the reputation” of FT.
  • While FT could not convince the Board of use of their mark in India since 1948 (as claimed in its trademark application); the Board was reasonably convinced of use at least since 1952. Should the Board have accordingly asked FT to amend its user date in its trademark application to 1952, and allowed them to retain their trademark, instead of striking it off altogether?
We have posted on this media confrontation before: the IPAB order here; and a couple of older tidbits about the battle from a couple of years ago. The IPAB order has already been challenged, and presumably will involve discussion around the IPAB’s unique interpretation of the concept of “reputation without use”, and whether indeed this is possible. Arun Mohan, our regular guest poster, has already offered a commentary on this, and I see no reason to repeat that discussion here.

Instead, today’s post is an attempt to place the story in a larger context on the value of the press turf in India, and the lengths to which firms will go to to make it their own.

A brief backstory:

The first trademark involved in this fight was filed in 1987, by FT, for the mark “FT”. Being a foreign publication, they could not, however, enter the Indian market directly, because of the restrictions that (continue to) surround the press in the country. FT was mostly present in India through a content-sharing agreement with local newspapers, such as Business Standard. FT also later filed for the “Financial Times” trademark.

Meanwhile, TOI also obtained trademark registrations on variations of the same, but all of these applications seem to have been made well after FT’s original 1987 application. To substantiate their use of the marks, TOI also briefly brought out a 2-page supplement to its main pink paper, the Economic Times, called “Financial Times” sometime in the 1990s.  By 2001, both parties expectedly followed up with suits of passing off and trademark infringement for their respective trademarks. These matters are still before the Delhi High Court, and will be heard in October 2012, around the same time as the appeal against the IPAB order is to be heard.

This is the newspaper business, remember!

But in all of this, we ignore the most important aspect of the story: TOI had also obtained registrations for newspaper titles from the Registrar of Newspapers in India (RNI) around the titles “FT” and “Financial Times”.  (image from here)

Being in the IP business, we occasionally get deceived into believing that IP is all that matters. But in the print media business, apparently, getting a trademark doesn’t cover your bases sufficiently. There is another devil called the Press and Registration of Books (PRB) Act, 1867.  According to the PRB Act, which governs the printing and publishing of newspapers and periodicals in India, 

“no newspaper should bear a title which is the same or similar to any other newspaper or periodical already being published, either in the same language or in the same State,  unless the latter is also owned by the same person.”


Now FT, like its international peers, would have been actively considering entering the Indian market – for India is arguably one of the last bastions of the print media – in some avatar. But it seems that it may not be able to even consider the Indian jurisdiction so long as the newspaper title registrations remain with TOI. The trademarks, clearly, matter only in part.

This experiment has already been tested: FT briefly entered into a content syndication arrangement with Indian Express (IE), under which IE ran selected articles from the UK publication. Before long, IE was slapped with a suit by TOI before a trial court in Bangalore. The suit objected to the use of the word “Financial Times” and “FT” in IE. An interim injunction was granted to TOI, but the order has been appealed, and now rests before the Bangalore High Court.

Simultaneously, TOI has also filed a writ petition in Bangalore, seeking directions against the Registrar of Newspapers of India to not register the titles “Financial Times Facsimile” or “FT Weekend Facsimile”, or anything in relation to these. The choice of Bangalore as a preferred jurisdiction is something that I am unable to understand, and would appreciate any light thrown on this. I understand FT challenged jurisdiction as well, but did not succeed, at least at the level of the Karnataka High Court. This decision of the Karnataka HC (on jurisdiction) has apparently been challenged further, and is now awaiting admission before the Supreme Court of India.

What next?

We have certainly not heard the end of this matter yet. Remember that the first trademark registration in this matter was filed in 1987, and the first application for cancellation was filed in 1993. This was field by TOI against FT’s mark “Financial Times”, which was among the applications decided by the IPAB, and now in appeal. The writ seeking directions against the RNI to not register any related titles in FT’s name was filed in 1994. It’s been nearly two decades, and it doesn’t look anywhere close to the end (they’re still fighting on jurisdiction). (image from here).

Besides the various suits having been filed, I feel it is important to remember two things: first, TOI still has the newspaper titles; and second, there is just a single trademark left standing (pending the Delhi HC’s final decision in this regard) — “FT” in the name of FT. Who has come out the winner? Surely, it is too early to say anything. But if nothing else, this fight shows that the media business is definitely alive and kicking in India. Kumar Mangalam Birla is probably right when he says that  “the media sector is a sunrise sector”, It sure looks like it in this part of the world.

4 comments.

  1. AvatarAnonymous

    Pending Cases in this matter –
    1) Two civil suits (later merged) before Delhi High Court

    2) One appeal (FAO) filed by BCCL against J Bhat’s order on its application u/s 124 TM Act (stay of suit)

    3) One appeal (RFA) before High Court of Karnataka

    besides the two writs filed against IPAB Order

    Reply
  2. AvatarOmesh

    Hi,

    It is not a victory for FT since IPAB has erred in disallowing the registration number 468932 on the basis that it was filed on proposed to be used basis. However, FT has also claimed user of since 1948 in registration no. 468932 for FT (ORA/67/2007/TM/DEL) like other FINANCIAL TIMES registrations. This thing will be contested in appeal.
    Looking forward to hear further comments.

    Reply
  3. AvatarAnonymous

    Below is the latest order in the matter at DHC between FT and BCCL….parties wish the matter to be listed in November 2012. Suits were filed in 2001…And it is the fault of the Judicial System…how ironic !!!!!!
    IN THE HIGH COURT OF DELHI AT NEW DELHI
    CS(OS) 2055/2001 and 2056/2001

    THE FINANCIAL TIMES LTD. ….. Plaintiff
    Through: Mr. Sudipto Sarkar, Senior Advocate with Mr. Peeyush Kalra, Advocate, Mr. Gaurav Mukerjee, Advocate and Mr. J.V. Abhay, Advocate.
    versus
    BENNETT COLEMAN and CO. LTD. and ORS. ….. Defendants
    Through: Mr. Sachin Gupta, Advocate with Mr. Shashi P. Ojha, Advocate.
    CORAM:
    HON’BLE MR. JUSTICE VALMIKI J. MEHTA
    O R D E R
    16.07.2012
    List before another Bench after obtaining orders of Hon’ble the Judge In Charge (Original Side) for directions. Counsel for the
    parties state that the matters be taken up in November.
    List on 19th November, 2012.
    VALMIKI J. MEHTA, J
    JULY 16, 2012

    Reply
  4. AvatarDivya Tejnani

    What will be the probable end to this battle? Will ‘Financial Times’ remain with ToI and we will never see Financial Times, UK in print in India?

    Is there a scope to contest allotment of name under the PRB act, so that FT,UK can file to get the name vacated under that act?

    Isn’t this a predatory tactic by ToI? Isn’t this a valid point for the court to consider?

    Reply

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