Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
RAJIV SAHAI ENDLAW, J.
The Financial Times Ltd. - Petitioner
Versus
The Times Publishing House Ltd. - Respondent
W.P.(C) Nos. 2735, 2737, 2745 & 3483 of 2012
Decided On : 07-10-2016
The instant case involves a dispute over the registration of the trademark “Financial Times” in Class 16 and 9. The Intellectual Property Appellate Board (IPAB) had allowed the registration of the trademark in favor of the Times Publishing House Ltd. (TPHL) in Class 16 and dismissed the application of TPHL for an opportunity to cross-examine the deponent of the affidavit by way of evidence filed by the Financial Times Ltd. (FTL). TPHL challenged the IPAB's order before the Delhi High Court.
Fact of the Case:
FTL applied for registration of the trademark “Financial Times” in Class 16 in 1987. TPHL obtained a certificate under the Press and Registration of Books (PRB) Act, 1867 for the title “Financial Times” in 1990. TPHL applied for registration of “Financial Times” as a trademark in Class 16 in 1993. FTL obtained registration of the trademark “Financial Times” in Class 9 in 1993. TPHL filed proceedings in the High Court of Delhi for cancellation of the registration of the mark “Financial Times” in Class 16 in favor of FTL in 1994. FTL filed a suit in the City Civil Court at Bangalore, Karnataka for permanent injunction to restrain TPHL from infringing its registered trademark “Financial Times” in 1994. The City Civil Court dismissed FTL's suit in 2002. FTL filed an appeal to the High Court of Karnataka, which was pending. TPHL applied for registration of the trademark “FT” in Class 16 in 1994. TPHL filed ORA/67/2007/TM/DEL before the IPAB seeking cancellation of the registration of the mark “FT” in Class 16 in the name of FTL in 2007. TPHL filed W.P.(C) No.2735/2012 impugning the order of the IPAB allowing TRA/6/2005/TM/DEL (directing removal of the mark “Financial Times” in the name of FTL from Class 16 of the Register of Trade Marks). TPHL filed W.P.(C) No.2737/2012 impugning the order of IPAB allowing ORA/64/2007/TM/DEL (directing removal of the mark “Financial Times” in the name of FTL from Class 9 from the Register of Trade Marks). TPHL filed W.P.(C) No.2745/2012 –(a) impugning the order of the IPAB allowing ORA/112/2006/TM/DEL (directing removal of the mark “Financial Times” in the name of TPHL from Class 16 of the Register of Trade Marks); (b) impugning the findings of the IPAB against TPHL while allowing TRA/6/2005/TM/DEL; and, (c) seeking a declaration that IPAB was bound by the findings of the City Civil Court, Bangalore). TPHL filed W.P.(C) no.3483/2012 impugning the order of the IPAB of dismissal of ORA/67/2007/TM/DEL (denying cancellation of registration of mark “FT” in Class 16 in name of FTL).
Finding of the Court:
The Delhi High Court held that the IPAB did not err in disallowing the cross-examination sought by TPHL. The court found that the evidence before the IPAB and the City Civil Court, Bangalore was the same, and the differences in their findings were due to the different appreciation of the evidence. The court also held that the scope of interference in the IPAB's order allowing or disallowing cross-examination is very limited, confined to situations where the court finds itself, on the evidence on record before the IPAB, to return any finding and requires further information to be elucidated from the witness.
Issues: 1. Whether the IPAB erred in disallowing the cross-examination sought by TPHL? 2. Whether the scope of interference in the IPAB's order allowing or disallowing cross-examination is limited?
Ratio Decidendi: 1. The court held that the IPAB did not err in disallowing the cross-examination sought by TPHL. The court found that the evidence before the IPAB and the City Civil Court, Bangalore was the same, and the differences in their findings were due to the different appreciation of the evidence. The court also held that the scope of interference in the IPAB's order allowing or disallowing cross-examination is very limited, confined to situations where the court finds itself, on the evidence on record before the IPAB, to return any finding and requires further information to be elucidated from the witness. 2. The court held that the scope of interference in the IPAB's order allowing or disallowing cross-examination is very limited, confined to situations where the court finds itself, on the evidence on record before the IPAB, to return any finding and requires further information to be elucidated from the witness.
Final Decision: The Delhi High Court dismissed the petitions filed by TPHL challenging the IPAB's order allowing TRA/6/2005/TM/DEL (directing removal of the mark “Financial Times” in the name of FTL from Class 16 of the Register of Trade Marks), ORA/64/2007/TM/DEL (directing removal of the mark “Financial Times” in the name of FTL from Class 9 from the Register of Trade Marks), and ORA/67/2007/TM/DEL (denying cancellation of registration of mark “FT” in Class 16 in name of FTL). The court also dismissed the petition filed by TPHL seeking a declaration that IPAB was bound by the findings of the City Civil Court, Bangalore.
1. These four petitions, each under Article 226 of the Constitution of India, impugn the common order (No.91/2012) dated 4th April, 2012 of the Intellectual Property Appellate Board (IPAB) in the five proceedings between the Financial Times Ltd., London (FTL) and Times Publishing House Ltd., New Delhi (TPHL).
2. This judgment is concerned with the challenge made to the part of the said order of IPAB dismissing the application of TPHL for opportunity to cross-examine the deponent of the affidavit by way of evidence filed by FTL.
3. Before dealing with the aforesaid aspect, it is necessary to narrate the events leading to the said challenge.
3.1. On 9th March, 1987, FTL applied for registration of the trademark “Financial Times” in Class 16 of the Fourth Schedule to the Trade Marks Rules, 2002 in its favour.
3.2. On 23rd July, 1990, TPHL obtained a certificate under the Press and Registration of Books (PRB) Act, 1867 for the title “Financial Times” in its favour.
3.3. On 30th August, 1991, FTL obtained registration of trademark “Financial Times” in its favour in Class 9.
3.4. On 1st January, 1993, TPHL applied for registration of “Financial Times” as a trademark in its favour in Class 16.
3.5. On 29th October, 1993, the trademark “Financial Times” was registered in the name of FTL in Class 16.
3.6. On 2nd December, 1993, TPHL filed proceedings in the High Court of Delhi for cancellation of the registration of the mark “Financial Times” in Class 16 in favour of FTL.
3.7. On 3rd December, 1993, FTL filed a suit in the City Civil Court at Bangalore, Karnataka for permanent injunction to restrain TPHL from infringing its registered trademark “Financial Times” and/or from passing off its newspaper Financial Times as that of FTL.
3.8. On 16th February, 1994, FTL obtained registration of the trademark “FT” in its favour in class 16.
3.9. On 2nd March, 1994, the City Civil Court, Bangalore granted interim injunction restraining TPHL from using the trademark “Financial Times”.
3.10. On appeal of TPHL, on 19th April, 1994, the aforesaid interim stay was vacated by the High Court of Karnataka.
3.11. FTL preferred a Special Leave Petition to the Supreme Court; vide order dated 23rd September, 1994, TPHL was permitted to continue using the trademark “Financial Times”, subject to certain conditions.
3.12. Upon coming into force of the Trade Marks Act, 1999 (TMA), proceeding aforesaid filed by TPHL in High Court of Delhi for cancellation of registration of the mark “Financial Times” in the name of FTL in Class 16 is transferred to the IPAB and given No.TRA/6/2005/TM/DEL.
3.13. Vide judgment dated 24th September, 2002, the suit aforesaid filed by FTL in City Civil Court, Bangalore was dismissed by a detailed judgment; the first appeal preferred by FTL to the High Court of Karnataka is pending consideration.
3.14. On 22nd June, 2005, the mark “Financial Times” was registered in favour of TPHL in class 16.
3.15. However, on 10th October, 2005, the Registrar of Trademarks suo moto cancelled the registration aforesaid in favour of TPHL.
3.16. TPHL filed OA/4/2006/TM/DEL before the IPAB against the suo moto order of the Registrar of Trade Marks cancelling the registration aforesaid granted in favour of TPHL in Class 16.
3.17. On 14th August, 2006, FTL applied to the IPAB for cancellation of the registration in favour of TPHL of the mark “Financial Times” in Class 16 and the said proceeding was given No.ORA/112/2006/TM/DEL.
3.18. In April, 2007, TPHL applied to IPAB for cancellation of registration of mark “FT” in favour of FTL in Class 16 and the said proceeding was given No.ORA/67/2007/TM/DEL.
3.19. TPHL filed ORA/64/2007/TM/DEL before the IPAB seeking cancellation of registration of the mark “Financial Times” in the name of FTL in Class 9.
4. IPAB, by the impugned order dated 4th April, 2012:
i. Allowed TRA/6/2005/TM/DEL thereby cancelling the registration of mark “Financial Times” in Class 16 in name of FTL.
ii. Allowed ORA/112/2006/TM/DEL thereby cancelling t
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
