The battle could be reaching a conclusion as a bench of the Supreme Court starts hearing the case on 4 Feb
New Delhi: It’s a legal battle that has been going on for nearly two decades. It’s a tussle over intellectual property rights, the likes of which has never been witnessed in India. It’s a fight between two reputed publishing companies: the first, a publisher of a UK-based newspaper of international repute and the other, one of India’s biggest media conglomerates that publishes the most widely circulated English daily in the world and the second-most widely circulated financial daily.
The battle could be reaching a conclusion as a bench of the Supreme Court starts hearing the case on 4 February. A fortnight later, the dispute is expected to figure in discussions that are scheduled to take place between Prime Minister Manmohan Singh and his British counterpart David Cameron.
To many, BCCL has already won the battle since it has been successful in stalling FTL’s attempts to publish a facsimile edition of the Financial Times in India.
People familiar with developments at FTL, however, say the UK firm is challenging multiple legal actions brought by BCCL in a determined manner. They claim the Indian media conglomerate’s actions are aimed at “subverting" government policies that have liberalized the working of the country’s print sector. These people spoke on condition of anonymity.
What is clear is that irrespective of who eventually emerges victor as and when the set of legal disputes between FTL and BCCL is settled, it will set a precedent for foreign media companies wanting to operate in India. There is a view that no clear winner can emerge from the bruising battle because both sides have already spent approximately30 crore in legal fees over a period of 19 years.
One of the persons at FTL familiar with the developments contended that BCCL’s preoccupation with the UK company’s newspaper title is “obsessive" and “defies explanation" as the Indian media group can neither hope to gain politically nor commercially from its use of the “Financial Times" title. “Our (meaning the UK-based FT’s) proposed print run in India would be minuscule, while theirs (meaning BCCL’s) is already gargantuan," the person added.
Harish Salve, senior advocate, who is representing FTL in the Supreme Court, stated that the “possible" concern of The Times Group is that once FT enters India in any form, “it is the beginning of the end of their so-far successful endeavour of keeping competition at bay". He added: “I have no doubt in my mind that their opposition stems not from any great principle but from some perception of gain—politically or commercially or both." (See interview with Salve.)
Ravindra Dhariwal, chief executive officer of BCCL, declined to participate in this story, but he was quoted in Outlook (6 August 2012) as saying: “I don’t see why this has become such a big issue. We’ve been using this (Financial Times) brand name for ages now. As far as India is considered, we own the name FT in India under the PRB (Press and Registration of Books) Act and we don’t need to recognize FT UK."
FTL, incorporated in the UK in 1928, publishes several newspapers under the titles/trademarks “Financial Times" and/or “FT" that are sold in more than 20 countries across the globe, including India. This company’s predecessor had adopted the trademark “Financial Times" in 1888 when the newspaper was first published; the trademark together with the “FT" trademark has been registered in various jurisdictions.
FTL claims that in India, the “Financial Times" and “FT" trademarks have been used in newspapers sold and distributed by the UK firm since 1948. However, it was only in 1987 that FTL filed an application for registration of its trademark “Financial Times" in India.
In this country, trademarks are categorized into different classes: Class 9 relates to, among other things, recording, transmission or reproduction of sound or images, while Class 16 relates to, among other things, printed matter.
FTL applied for registration of the “Financial Times" trademark under both Class 9 and Class 16, while an application was filed for the registration of the trademark “FT" only under Class 16. Both trademarks were registered in India by the Registrar of Trade Marks under the Trade Marks Act, 1999.
In India, another law governs the rules and procedures for the grant of titles with respect to the publication of newspapers and periodicals and this is the PRB Act of 1867. Under this Act, no publication can be brought out without a title being allocated to it by the Registrar of Newspapers for India (RNI), the competent authority to do so under the PRB Act.
In 1993, TPH registered the “Financial Times" title under the PRB Act and also managed to register the same name under the Trade Marks Act as a Class 16 trademark in 2005. “The registrations were despite FTL having an earlier trademark registration in the same class," said the person quoted earlier.
Thereafter, a series of legal battles ensued, the most recent one under the jurisdiction of the Chennai- headquartered Intellectual Property Appellate Board (IPAB). After hearing arguments made by both the sides for a week in March 2012, on 4 April last year, the board struck off the trademark registrations of both FTL and TPH for different reasons.
As the July-September 2012 quarterly newsletter of K&S Partners, a Gurgaon-based firm of intellectual property attorneys, pointed out, “The interesting matrix of facts involved in these actions…(was) that FTL claimed use of the mark ‘Financial Times’ in India since 1948 in its trademark application filed in 1987. However, in the rectification action, it was not able to demonstrate such claimed use through cogent evidence at least till 1981."
“The evidence of use that was submitted by FTL to demonstrate its use in India prior to 1981 consisted of a mention of the…newspaper in the Indian Express in the year 1948, circulation of 350-500 copies in India, appointing an advertising agency in 1977 and (an) agent for distribution in 1992."
The person familiar with developments at FTL, however, contended that the newsletter of K&S Partners is inaccurate as the IPAB held that the UK publishing firm “could show use since 1952 and not 1981 as the K&S article has claimed".
The K&S Partners’s newsletter added: “The dilemma of the IPAB, therefore, was that in spite of the obvious reputation established by FTL as well as the consistent and genuine use in respect of the mark ‘Financial Times’ in India, there was no evidence adduced by FTL to demonstrate use of the said mark since 1948 as claimed in the application."
The IPAB found that: “The use (of the trademark) is neither spasmodic, nor is it clandestine, but it is genuine and consistent; maybe a tad exclusive. However, we repeat, there is no evidence of user from 1948. FTL had made its application stating that it had used the mark in India from 1948…(which) has not been proved and, therefore, we have to hold that the mark wrongly remains in the Register (of Trade Marks)…"
As for the rectification actions filed by FTL against TPH’s registration of “Financial Times" under Class 16, the IPAB took note that TPH had knowledge of FTL’s trademark on account of the publicity generated by a conference organized by the UK company in India in 1981 as well as through syndication agreements under which TPH was publishing articles provided by FTL. The board found these to be “strong evidence" that TPH not only knew about the existence of FTL but was also aware of its intention to enter India.
Accordingly, IPAB allowed the rectification action filed by FTL against TPH. As for the rectification sought by TPH of FTL’s Class 9 registration of the “Financial Times" trademark, the board allowed this by taking note that the evidence filed by FTL was in respect of Class 16 goods only.
Coming to the rectification action filed by TPH against FTL’s registration of the “FT" trademark under Class 16, this was dismissed by IPAB by taking into account the “evidence of reputation" enjoyed by the trademark “FT" despite the fact that the application for rectification was filed by TPH on the basis that it “proposed" to use the “FT" trademark.
The order was challenged by both sides in the Delhi high court where the dispute is currently pending.
The court had earlier stayed the order of IPAB under section 47 (1)(b) of the Trade Marks Act, which states that “up to a date three months prior to the date of the application, a continuous period of five years from the date on which the trademark is actually entered in the register, or longer had elapsed, during which the trade mark was registered and during which there was no bona fide use thereof, in relation to those goods or services by any proprietor thereof for the time being…"
The person familiar with developments at FTL argued that the April 2012 judgement of IPAB was significant because it held the following: that it was the first to adopt the “Financial Times" trademark; that when it applied for registration of its trademark in India, no other newspaper was being published under the name and hence, the grant of registration in FTL’s favour would not violate the provisions of the PRB Act; that FTL has proved trans-border reputation (even in 1948), its intention to enter India and that the trademark “Financial Times" has become distinctive of FTL; that there is evidence to indicate that the name “Financial Times" is associated in the minds of the Indian readers with the UK paper and not any other publication with the same name published from any other country; and that FTL’s syndication arrangements with other Indian publications and the fact that a sister concern of TPH in the BCCL group had considered entering into a joint venture with FTL indicated that TPH could now not “dispute the reputation" of FTL and adopt its trademark.
At the time these legal suits were initiated, the information and broadcasting (I&B) ministry did not permit foreign newspapers to be printed or published in India. In the early 1990s, The Economic Times published by BCCL had a syndication arrangement with FTL. The people in FTL say that BCCL was aware of the UK-based newspaper’s intention to enter India. Around that time, BCCL was part of a lobby that opposed the entry of foreign investors into India’s print industry. This was subsequently allowed to the tune of 26% in 2002.
In 2004, the Pearson group picked up close to 14% in the company that publishes the Business Standard and exited the venture four years later. The UK group also conducted talks with the Network18 Group headed by Raghav Bahl to launch the Financial Times in India but these negotiations remained inconclusive.
In 2005, the government allowed the publication of facsimile editions of foreign newspapers by Indian companies with or without foreign investment. In 2009, the ministry of commerce and industry permitted “with prior approval" foreign direct investment of up to 100% in printed publications provided the investor was also the owner of the original foreign newspaper which intended to publish its facsimile edition in India.
Thereafter, FTL incorporated an Indian entity called The Financial Times (India) Pvt. Ltd, which applied to the I&B ministry seeking permission to bring out facsimile editions of Financial Times under the titles “Financial Times Facsimile" and “FT Weekend Facsimile".
RNI issued title verification letters for these titles in favour of the Indian corporate entity floated by FTL.
Almost immediately thereafter, legal proceedings were initiated by TPH against FTL, first in Delhi and then in Bangalore. The Delhi high court did not grant any relief to TPH but the Karnataka high court granted a stay preventing FTL from bringing out its facsimile editions. FTL then moved the Supreme Court, challenging the stay granted by the Karnataka high court on the ground that it had no jurisdiction to do so.
In June 2011, the I&B ministry issued guidelines for syndication arrangements for newspapers. The same month, FTL entered into a syndication arrangement with The Indian Express and the The Financial Express. TPH instituted legal proceedings against this arrangement as well and obtained an interim injunction.
The person familiar with developments at FTL alleged: “The British publisher is being deliberately precluded from bringing out facsimile editions in India. This is a subversion of government policy. TPH is publishing a spoiler newspaper called Financial Times that is distributed in narrow bits of Delhi. But this newspaper is not readily available and TPH is printing the bare number to ensure that the circulation requirements are met as has been laid down by the RNI. It is difficult to fathom why TPH is acting in this way."
This person also claimed that even if the Financial Times of the UK is published in India, it cannot pose a threat to BCCL’s business daily, TheEconomic Times, which reportedly circulates around 700,000 copies each day.
“The proposed print run of the Financial Times would probably be in the region of 15,000 a day and the price of each copy would probably be much higher than the ₹ 3 per copy charged by the ET," he added, further alleging that TPH’s legal proceedings were “embarrassing" the Indian government.
Salve said that “with all the objectivity at my command, it is my perception that the litigation is contrived and yet another example of how clever ‘lawyering’ can use Indian courts with their attendant delays to great advantage" and added that it is for this reason that “getting caught in the Indian legal system has been always a nightmare for foreign investors".
Dwijen Rangnekar, associate professor, School of Law, University of Warwick, UK, pointed out that all intellectual property disputes are “framed by a variety of political, economic and representational issues". He said it was of “little surprise" that The Times Group “is keen on ‘sitting’ on the mark".
“While this is quite ‘similar’ to the difficult battles between the South and the North, here it is distinctly different as the adversaries on both sides are well resourced," he remarked.
Rangnekar observed that the IPAB decision took note of the prior history of licensing arrangements. “In fact, IPAB did say that it would be ever so difficult for TPH to claim ignorance of a rival’s trademark," he said, adding that The Times Group “was ‘clever’ to have registered the ‘FT’ name, thus ‘stealing’ a march over Financial Times of the UK…"
The law professor said that while the FTL-TPH tussle was a “complicated legal issue…it does tie in with the kind of problems that Southern users of ‘geographical indicators’ often face in ‘reclaiming’ their rights in Northern markets where their indications have been usurped".
In recent months, FTL and TPH/BCCL have extended their legal battle to printing advertisements seeking to “explain" their respective positions. After one advertisement promoting the BCCL’s Financial Times supplement produced in partnership with Reuters was published—with a masthead resembling the one used by the British newspaper—without mentioning the fact that the supplement had no connection with the UK company’s publication, FTL retaliated by placing its own advertisement containing a statement by John Ridding, CEO of the Financial Times, disclaiming any connection to the BCCL supplement.
Mint cited BCCL CEO Dhariwal as saying on 18 July 2012, that, “We have put out this ad before. I don’t know why people are reacting to it as if it is new."
The Mint report also said that in the past year BCCL had distributed the four-page Financial Times supplement free with TheTimes of India and would bring out a bigger publication using the same name. The report cited an unnamed person as saying: “It is not a major profit venture, but it is not loss-making either as a lot of local industries advertise in this paper."
Dhariwal chose not to respond to the questions raised on the plea that it would be “inappropriate" for him to comment on matters that are “sub judice". He was specifically asked to respond to allegations that TPH was “squatting" on the “Financial Times" title in order to satisfy regulations of the RNI and that its “vexatious litigation undermines bold initiatives to make the Indian media more plural by allowing foreign titles market access".
Meanwhile, hectic lobbying is currently on in the run-up to the British Prime Minister’s visit to India on 18 February. John Makinson, member of the board of directors of Pearson (who is also global CEO and chairman, Penguin International) and Khozem Merchant, president of the Pearson group’s India operations, recently met I&B minister Manish Tewari to present their views. Representations have also been sent to the Prime Minister of India by the UK publisher.
The last is yet to be heard about this unique tussle over the property rights of a newspaper title.
(Editor’s note: The products of HT Media Ltd, which publishes Mint, compete with those of Bennett, Coleman in some markets. Paranjoy Guha Thakurta is an independent journalist, educator and commentator on the media.)