CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road,         Mylapore,    Chennai - 600 004. Tel: +91 - 44 - 249...
USE AND REPUTATION         CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road,         Mylapore,    Chennai - 6...
USE AND REPUTATION         CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road,                                 ...
Intellectual Property Appellate Board         CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road,         Mylap...
USE AND REPUTATION         CHENNAI3rd Floor, ‘Creative Enclave’,   •   The case was an amalgamation of five related applic...
CHENNAI3rd Floor, ‘Creative Enclave’,                                 •   Class 9: Scientific, nautical, surveying, photog...
CHENNAI3rd Floor, ‘Creative Enclave’,                                 •   The cross-rectifications were:148-150, Luz Churc...
ISSUES         CHENNAI3rd Floor, ‘Creative Enclave’,   First Application148-150, Luz Church Road,         Mylapore,       ...
CHENNAI3rd Floor, ‘Creative Enclave’,   •   The syndication agreement entered into with FTL was only to148-150, Luz Church...
CHENNAI3rd Floor, ‘Creative Enclave’,   FTL’s contentions148-150, Luz Church Road,         Mylapore,               •TPHL c...
CHENNAI3rd Floor, ‘Creative Enclave’,   Held148-150, Luz Church Road,         Mylapore,               •The court accepted ...
CHENNAI3rd Floor, ‘Creative Enclave’,   B. Press and Registration of Books Act, 1867 (PRB)148-150, Luz Church Road,       ...
CHENNAI3rd Floor, ‘Creative Enclave’,   •   Second Application:148-150, Luz Church Road,         Mylapore,               •...
CHENNAI3rd Floor, ‘Creative Enclave’,                                 •    The Board in deciding Time’s registration of “F...
CHENNAI3rd Floor, ‘Creative Enclave’,                                 • To conclude:148-150, Luz Church Road,         Myla...
CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road,         Mylapore,    Chennai - 600 004. Tel: +91 - 44 - 249...
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Use and reputation – ft – case (ipab)

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  • © Altacit Global 2009 Email: info@altacit.com
  • Use and reputation – ft – case (ipab)

    1. 1. CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, USE AND REPUTATION – FT – Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, CASE (IPAB) # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 P.ILANANGAI IP CONSULTANT PATENT DEPARTMENT EMAIL info@altacit.com WEBSITE www.altacit.com
    2. 2. USE AND REPUTATION CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 Times Publishing House Ltd. BANGALORE Suite 920, Level 9, Vs Raheja Towers, 26-27, M G Road, The Financial Times Limited Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 Vs EMAIL info@altacit.com WEBSITE www.altacit.com
    3. 3. USE AND REPUTATION CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road, • Reputation without use Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 • A recent order of the IPAB in rectification petitions BANGALORE Suite 920, Level 9, for the mark “Financial Times” has thrown forth Raheja Towers, 26-27, M G Road, several interesting propositions. Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 • The dispute is between the Financial Times UK COIMBATORE BB1, Park Avenue, # 48, Race Course Road, (FTUK), which runs the well known publication Coimbatore - 641018. Tel: +91 - 422 – 6552921 Financial Times globally, and Times Publishing House Ltd which runs the well known Indian publication Economic Times within which it also runs a supplement called Financial Times. EMAIL info@altacit.com WEBSITE www.altacit.com
    4. 4. Intellectual Property Appellate Board CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 • Intellectual Property Appellate Board (IPAB) has been BANGALORE Suite 920, Level 9, constituted by a Gazette notification of the Central Raheja Towers, 26-27, M G Road, Government in the Ministry of Commerce and Industry on Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 15th September 2003 to hear appeals against the decisions of COIMBATORE BB1, Park Avenue, the Registrar under the Trade Marks Act, 1999 and the # 48, Race Course Road, Coimbatore - 641018. Geographical Indications of Goods (Registration and Tel: +91 - 422 – 6552921 Protection) Act, 1999. • In terms of the Notifications dated 2/4/2007, all the Appeals pending before the various High Courts under the Patents Act, 1970, will stand transferred to the IPAB. Likewise, fresh Rectification Applications, will have to be filed before the EMAIL IPAB. info@altacit.com WEBSITE • IPAB has its headquarters at Chennai and shall have sittings at www.altacit.com Chennai, Mumbai, Delhi, Kolkata and Ahmedabad.
    5. 5. USE AND REPUTATION CHENNAI3rd Floor, ‘Creative Enclave’, • The case was an amalgamation of five related applications which are148-150, Luz Church Road, as follows: Mylapore, Chennai - 600 004. • (i) TRA/6/2005/TM/DEL is for cancellation filed by Times Publishing Tel: +91 - 44 - 2498 4821 House Limited (TPHL) for the mark, ‘Financial Times’ registered in BANGALORE Suite 920, Level 9, the name of The Financial Times Limited (FTL) under No.468937 in Raheja Towers, 26-27, M G Road, class 16. Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 • (ii) ORA/112/2006/TM/DEL is a rectification application filed by FTL against the mark, ‘Financial Times’ registered in the name of TPHL COIMBATORE BB1, Park Avenue, under No.587870 in class 16. # 48, Race Course Road, Coimbatore - 641018. • (iii) OA/4/2006/TM/DEL is an appeal, filed by TPHL against the suo Tel: +91 - 422 – 6552921 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 EMAIL TPHL seeking cancellation of the registration of the mark ‘FT’ info@altacit.com registered in the name of FTL under No.468932 in class 16. WEBSITE www.altacit.com
    6. 6. CHENNAI3rd Floor, ‘Creative Enclave’, • Class 9: Scientific, nautical, surveying, photographic, cinematographic,148-150, Luz Church Road, Mylapore, optical, weighing, measuring, signalling, checking (supervision), life- Chennai - 600 004. Tel: +91 - 44 - 2498 4821 saving and teaching apparatus and instruments; apparatus and BANGALORE instruments for conducting, switching, transforming, accumulating, Suite 920, Level 9, Raheja Towers, regulating or controlling electricity; apparatus for recording, 26-27, M G Road, Bangalore - 560 001. transmission or reproduction of sound or images; magnetic data Tel: +91 - 80 - 6546 2400 carriers, recording discs; compact discs, DVDs and other digital COIMBATORE BB1, Park Avenue, recording media; mechanisms for coin-operated apparatus; cash # 48, Race Course Road, Coimbatore - 641018. registers, calculating machines, data processing equipment, computers; Tel: +91 - 422 – 6552921 computer software; fire-extinguishing apparatus. • Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material EMAIL info@altacit.com (except apparatus); plastic materials for packaging (not included in other classes); printers type; printing blocks. WEBSITE www.altacit.com
    7. 7. CHENNAI3rd Floor, ‘Creative Enclave’, • The cross-rectifications were:148-150, Luz Church Road, Mylapore, Chennai - 600 004. 1. Times filed rectifications against FTUK’s registration of Tel: +91 - 44 - 2498 4821 the marks “Financial Times” and “FT” in classes 9 and 16. BANGALORE Suite 920, Level 9, Raheja Towers, 2. FTUK filed rectification against Time’s registration of 26-27, M G Road, Bangalore - 560 001. “Financial Times” under class 16. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com
    8. 8. ISSUES CHENNAI3rd Floor, ‘Creative Enclave’, First Application148-150, Luz Church Road, Mylapore, A. Descriptive and Use of Mark in India Chennai - 600 004. Tel: +91 - 44 - 2498 4821 TPHL’s contentions BANGALORE Suite 920, Level 9, •TPHL sought rectification on the grounds that the mark was Raheja Towers, 26-27, M G Road, descriptive and unless there is evidence of distinctiveness, the mark Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 must be removed from the register. Evidence of distinctiveness should COIMBATORE be on the basis of use of the mark in India. FT has only been able to BB1, Park Avenue, # 48, Race Course Road, show a circulation of 350-500 copies in India which is insignificant. Coimbatore - 641018. Tel: +91 - 422 – 6552921 •The newspaper industry earned revenue mainly through advertisements and not by circulation. Financial Times Limited’s low sales in India coupled with lack of evidence regarding advertisements for Indian goods show that the quantum of sales did not amount to use in India. •FTL has not been able to establish trans-border reputation in India. EMAIL contd.. info@altacit.com WEBSITE www.altacit.com
    9. 9. CHENNAI3rd Floor, ‘Creative Enclave’, • The syndication agreement entered into with FTL was only to148-150, Luz Church Road, Mylapore, indicate source of the syndicated articles for publication and Chennai - 600 004. Tel: +91 - 44 - 2498 4821 does not prove use of the mark. BANGALORE Suite 920, Level 9, • The decision regarding validity should be tested by the strict Raheja Towers, 26-27, M G Road, rule of evidence. Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 • Mere use of mark will not prove distinctiveness. COIMBATORE BB1, Park Avenue, # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com
    10. 10. CHENNAI3rd Floor, ‘Creative Enclave’, FTL’s contentions148-150, Luz Church Road, Mylapore, •TPHL could not deny FTL’s Indian presence and territorial reputation as it Chennai - 600 004. Tel: +91 - 44 - 2498 4821 was itself a FTL subscriber and had entered into syndication agreements BANGALORE with FTL. Suite 920, Level 9, Raheja Towers, •TPHL cannot allege that the mark is only descriptive and unless 26-27, M G Road, Bangalore - 560 001. distinctiveness is proved the mark must be removed from the register since Tel: +91 - 80 - 6546 2400 they have themselves applied for registration of the same mark. COIMBATORE BB1, Park Avenue, •The newspaper had existed for 124 years and enjoyed a formidable # 48, Race Course Road, Coimbatore - 641018. reputation. The extent of trans-border reputation would amount to Tel: +91 - 422 – 6552921 distinctiveness. The trans-border reputation was supported by its use. •The use of the newspaper cannot be determined by quantity alone, the quality, price and target audience must also be taken into consideration. •Just because a company’s goods are not sold in the open market does not mean that their goods cannot have acquired reputation in India. EMAIL info@altacit.com WEBSITE www.altacit.com
    11. 11. CHENNAI3rd Floor, ‘Creative Enclave’, Held148-150, Luz Church Road, Mylapore, •The court accepted FTL’s evidence of a subscribers list, proof of ‘A Chennai - 600 004. Tel: +91 - 44 - 2498 4821 Financial Times Conference” organised in 1981 and the syndicated BANGALORE agreement with TPHL. On the basis of this evidence it held that FTL had Suite 920, Level 9, Raheja Towers, proved trans-border reputation and its intention to enter India. 26-27, M G Road, Bangalore - 560 001. •It held that the mark had become distinctive of FTL. Quality was more Tel: +91 - 80 - 6546 2400 important than quantity, the newspaper was meant for a specific target COIMBATORE BB1, Park Avenue, audience. Therefore the minimal number of newspapers sent to India was # 48, Race Course Road, Coimbatore - 641018. not an issue. Tel: +91 - 422 – 6552921 • However, it was held that there was no evidence to suggest use from 1948. •TPHL’s application was removal of the mark was therefore allowed. EMAIL info@altacit.com WEBSITE www.altacit.com
    12. 12. CHENNAI3rd Floor, ‘Creative Enclave’, B. Press and Registration of Books Act, 1867 (PRB)148-150, Luz Church Road, TPHL’s contentions Mylapore, Chennai - 600 004. FTL has not complied with the provisions of the PRB which regulates the Tel: +91 - 44 - 2498 4821 publication of a newspaper in India and therefore is not entitled to have the mark BANGALORE Suite 920, Level 9, registered. Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 FTL’s contentions COIMBATORE BB1, Park Avenue, The Act was not applicable in this case. The PRB Act applies only to newspapers # 48, Race Course Road, Coimbatore - 641018. printed and published in India and circulation is not the same as printing and Tel: +91 - 422 – 6552921 publication. The Act does not cover circulation of newspapers. Held The PRB Act does not apply in the present case. S.6 of the PRB bars adoption of a title similar to an existing title and to that extent the PRB is applicable. When FTL applied for this mark, there was no other newspaper being published under the EMAIL same title so there is no violation of the PRB Act. FTL only circulates their paper info@altacit.com in India, once they start printing or publishing their paper they will have to comply WEBSITE with the law. www.altacit.com
    13. 13. CHENNAI3rd Floor, ‘Creative Enclave’, • Second Application:148-150, Luz Church Road, Mylapore, • FTUK filed rectification against Time’s registration of “Financial Chennai - 600 004. Tel: +91 - 44 - 2498 4821 Times” under class 16. This application was filed by TPHL under BANGALORE Suite 920, Level 9, the old act i.e. the Trade and Merchandise Marks Act, 1958. Raheja Towers, 26-27, M G Road, • S.56 (equivalent provision is S.57 in the new Act) of the Act Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 provides for cancellation of mark on the ground of any COIMBATORE BB1, Park Avenue, contravention or failure to observe the conditions entered on the # 48, Race Course Road, Coimbatore - 641018. register. Tel: +91 - 422 – 6552921 • S.56(2) gives 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. The High Court was the rectifying authority earlier, under the new Act it is the IPAB. EMAIL info@altacit.com WEBSITE www.altacit.com
    14. 14. CHENNAI3rd Floor, ‘Creative Enclave’, • The Board in deciding Time’s registration of “Financial148-150, Luz Church Road, Mylapore, Chennai - 600 004. Times” stated that: Tel: +91 - 44 - 2498 4821 ii. TPHL and FTL were in the same business and TPHL would BANGALORE Suite 920, Level 9, have been aware of the existence of FTL and had entered Raheja Towers, 26-27, M G Road, Bangalore - 560 001. into syndication agreements with FTUK for articles from the Tel: +91 - 80 - 6546 2400 Financial Times. COIMBATORE BB1, Park Avenue, iii. TPHL was not able to prove distinctive use of the mark, the # 48, Race Course Road, Coimbatore - 641018. circulation figures cannot be accepted as evidence in Tel: +91 - 422 – 6552921 furtherance of distinctive use since TPHL’s Financial Times was circulated as a complimentary copy with Economic Times, and therefore their version of the Financial Times had not established any reputation on its own. Therefore, the Board also cancelled Times registration. EMAIL info@altacit.com WEBSITE www.altacit.com
    15. 15. CHENNAI3rd Floor, ‘Creative Enclave’, • To conclude:148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 • The IPAB ordered the removal of Financial Times BANGALORE Limited’s mark from the register as it was not able to prove use from 1948. Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 • However it allowed FTL’s rectification COIMBATORE BB1, Park Avenue, application against the mark, ‘Financial Times’ # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 registered by Times Publishing House Ltd. • The position today therefore, is that no one has registration for the mark “Financial Times”. EMAIL info@altacit.com WEBSITE www.altacit.com
    16. 16. CHENNAI3rd Floor, ‘Creative Enclave’,148-150, Luz Church Road, Mylapore, Chennai - 600 004. Tel: +91 - 44 - 2498 4821 BANGALORE Suite 920, Level 9, Raheja Towers, 26-27, M G Road, Bangalore - 560 001. Tel: +91 - 80 - 6546 2400 COIMBATORE BB1, Park Avenue, THANK YOU # 48, Race Course Road, Coimbatore - 641018. Tel: +91 - 422 – 6552921 EMAIL info@altacit.com WEBSITE www.altacit.com

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