Mumbai/New Delhi: Bennett, Coleman and Co. Ltd (BCCL) on Friday appealed the decision of the Delhi high court refusing to stall proceedings in a trademark infringement suit filed by The Financial Times Ltd of London in the same court. A division bench of the court admitted the appeal and listed the matter for final arguments on 3 January.
Justice Ravindra Bhat on 15 December refused to stay the proceedings in the trademark suit, which was filed by the Financial Times in 2001 against BCCL seeking protection of its registered trademark “FT” in India. The foreign newspaper contends the Indian company infringed this trademark by publishing a supplement with its business daily The Economic Times.
BCCL asked the Delhi high court to stay proceedings in the suit as it has filed a related legal challenge on the validity of the “FT” mark granted to Financial Times in the Intellectual Property Appellate Board, which BCCL is entitled to do under Indian trademark law.
This marks another development in the long-drawn battle for the brand name between the two newspaper giants spanning close to two decades. The Financial Times Ltd is a wholly-owned subsidiary of Pearson Plc. The UK publisher has been fighting the Times group to get clear rights to its “Financial Times” title to launch the paper in India. Meanwhile, BCCL, which owns The Times of India and The Economic Times newspaper brands, has registered Financial Times under Times Publishing Group, a subsidiary of BCCL. Mint competes with The Economic Times.
In its application to the Delhi high court, BCCL said that the “FT” trademark is incapable of distinctiveness and so is not qualified for registration. However, the court observed that the Indian publisher itself had applied for registering the trademark with India’s Trade Marks Registry. BCCL’s application is, however, pending with the Trade Marks office.
The Delhi high court in its 15 December order had said though an aggrieved party has the right to ask for stalling an infringement suit procedure while challenging the validity of the mark itself, the defendant in this case did not apply for rectification immediately after the grant, had chosen to do so in 2007 and has now moved an application to stay the case three years later in 2010.
Sumathi Chandrashekaran, a Delhi-based Intellectual Property Rights lawyer, who first posted the Delhi court order in the patent blog SpicyIP, said: “This is a particularly interesting order by Justice Ravindra Bhat because it discusses the finer points of the tenability (or reasonableness) of a trademark challenge when handling different issues in infringement suits.”
However, a senior BCCL official, speaking on condition of anonymity, said only one of its applications had been dismissed and its appeal has now been admitted. “Besides, the December 15 order was neither a loss nor a victory.” The actual matter is before a court in Bangalore and “The Financial Times title is registered with the office of the Registrar of Newspapers for India (RNI) and Times group still brings out the paper,” he said.
Khozem Merchant, president, Pearson India, the local office of Pearson Plc, declined comment. Financial Times’ lawyers were not available for comment. Mint tried to reach them on Thursday and Friday.
The battle between Financial Times and Times group over FT’s globally registered title and trademark began in 1993 when it first filed a civil suit against the infringement in Bangalore. FT lost and subsequently appealed to the Karnataka high court. This parallel appeal is a related plea to grant the Financial Times the right to use the title “The Financial Times” in India and will come up for hearing on 20 January, according to lawyers familiar with the matter.
The UK daily’s attempts to enter the India market have come a cropper in the past. After a content tie-up with Business Standard, it picked up a 14% stake in the paper when the Indian government allowed 26% foreign direct investment in newspapers. The partnership, however, ended in 2008.
Following its exit from Business Standard, there were unconfirmed reports that FT was planning to enter the Indian market through a partnership with the Network18 Group.
The Times Group registered the “Financial Times” title in 1991 in Delhi, according to the data available with RNI. In addition it registered several similar titles with RNI, including Asian Financial Times, Financial Times Asia, Daily Financial Times, Emerging Financial Times, Financial Times of Asia. FT, FT Asia, FT Network, FT South Asia, FT World, FT Worldwide, WFT, World Financial Times and Worldwide Financial Times, according to contentSutra quoting RNI data in 2009.