1. CHENNAI
3rd 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. USE AND REPUTATION
CHENNAI
3rd 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. USE AND REPUTATION
CHENNAI
3rd 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. Intellectual Property Appellate Board
CHENNAI
3rd 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 15th
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 September 2003 to hear appeals against the decisions of the
COIMBATORE
BB1, Park Avenue,
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. USE AND REPUTATION
CHENNAI
3rd Floor, ‘Creative Enclave’, • The case was an amalgamation of five related applications which are
148-150, 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. CHENNAI
3rd 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. CHENNAI
3rd 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 the
Tel: +91 - 44 - 2498 4821
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. ISSUES
CHENNAI
3rd Floor, ‘Creative Enclave’, First Application
148-150, 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 descriptive
Raheja Towers,
26-27, M G Road, and unless there is evidence of distinctiveness, the mark must be
Bangalore - 560 001.
Tel: +91 - 80 - 6546 2400 removed from the register. Evidence of distinctiveness should be on the
COIMBATORE basis of use of the mark in India. FT has only been able to show a
BB1, Park Avenue,
# 48, Race Course Road, 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. CHENNAI
3rd Floor, ‘Creative Enclave’, • The syndication agreement entered into with FTL was only to
148-150, 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. CHENNAI
3rd Floor, ‘Creative Enclave’, FTL’s contentions
148-150, 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. CHENNAI
3rd Floor, ‘Creative Enclave’, Held
148-150, 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. CHENNAI
3rd 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. CHENNAI
3rd 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. CHENNAI
3rd Floor, ‘Creative Enclave’,
• The Board in deciding Time’s registration of “Financial
148-150, Luz Church Road,
Mylapore,
Chennai - 600 004.
Times” stated that:
Tel: +91 - 44 - 2498 4821
i. 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, ii. 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. CHENNAI
3rd 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. CHENNAI
3rd 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