A month old order from the IPAB, available here, has revisited aspects that we touched on in an earlier post. The dispute had two large newspaper publications involved, namely Financial Times (FT) and Times Publishing House Ltd (TPHL).
The decision looks at five applications together, for rectification and cancellation of registration of “Financial Times”.
The IPAB at the very outset took note that TPHL had included the Rhizome Distilleries decision in its written submissions, but did not give consideration to its ruling, under the wide discretion that the statutory power of rectification gives the IPAB. In other words, the IPAB decided in the interest of justice, not to throw out the case of TPHL merely because they have invoked Ss 9 and 11 of the Act.
The Court substantiating its decision to entertain the case of TPHL stated that “[w]e have a duty to see whether the registration has been granted in accordance with law, whether the provisions of the Act have been violated or whether the public interest is affected by the said registration and while examining so, whether the entry in the register shall not remain.
We necessarily have to examine if the Registrar has performed his duty in accordance with the provisions of the Act". The grounds to file the rectification proceedings included descriptiveness, lack of distinctiveness, and that the mark was registered contrary to the provisions of the Press and Registration of Books Act, 1867 (PRB Act in short), which regulates the publication of a newspaper in India and also protects the grant of title.
According to TPHL, FT had not complied with the provisions of the PRB Act, and was not entitled to have the mark registered, or have the mark remaining on the register. According to TPHL, FT had not produced evidence to establish sufficient use, distinctiveness or trans-border reputation in India. They added that proof of trans-border reputation by itself will not dispense with the requirement of use of the mark in India without which the mark shall not remain in the register and ought not to have been granted registration.
They also stated that the evidence adduced before the City Civil Court, in a prior suit, clearly showed that FT had no intention of printing or publishing newspaper in India.
That apart, they stasted that there existed other contradictions between the statements of the witnesses before the Civil Court and the affidavit of the sole witness before the IPAB. FT stated that its circulation was not in violation of the PRB Act, since the scope of the Act was limited to printing and publishing, and did not cover ‘circulation’. They added that FT was established 125 years ago and had built an enviable reputation as one of the leading newspapers on economic affairs.
They stated that the mark had been coined for the first time in 1888 and it had acquired distinctiveness and the adoption of the said mark by TPHL is dishonest. They added that the use of the newspaper could not be determined by numbers alone, the price , quality, target audience, etc. are factors which must determine the question.
The Board looking at the overlap between the PRB Act and the legislation on Trade Marks observed that if an Examiner would be expected to look at whether every newspaper owner who seeks registration of his mark has complied with the provisions of the PRB Act, he would be transgressing his jurisdiction.
The IPAB however noted that in case the applicant chooses to register a descriptive mark, he would have to depict, that as on the date of application, the mark had acquired distinctiveness. The IPAB noted that the PRB had no authority to go into this aspect. Looking at other aspects, FT was found to have trans-border reputation, however the IPAB did not find evidence substantiating FT’s claimed use since 1948, as had been vouched by them. On this count, the Board ordered that the mark was liable to be removed from the register. The Board in arriving at its conclusion looked at a plethora of decisions.
Further, in careful consideration of the facts, the Board has come to careful conclusions on each of the applications. The decision, although may appear convoluted in terms of the number of applications it deals with, the same is definitely worth a read for all trademark practitioners!