Intellectual Property; Financial Times Ltd. Vs. Times Publishing House Ltd. [Delhi High Court, 07-10-2016]

Intellectual Property The scope of interference in the order of Intellectual Property Appellate Board (IPAB) allowing or disallowing cross-examination, especially when it is made alongwith the final order would be very limited. On a perusal of the affidavits by way of evidence led by both Financial Times Ltd., London (FTL) and Times Publishing House Ltd., New Delhi (TPHL) before the IPAB, not find any error in the order of IPAB disallowing cross-examination sought by TPHL.

Financial Times Ltd. Vs. Times Publishing House Ltd.

IN THE HIGH COURT OF DELHI AT NEW DELHI

CORAM: HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW

Date of decision: 7th October, 2016

W.P.(C) No.2735/2012 THE FINANCIAL TIMES LTD. ….. Petitioner Through: Mr. P.S. Raman, Sr. Adv. with Mr. Aparajitha Vishwanath, Mr. Gaurav Mukherjee, Mr. J.V. Abhay, Mr. Raghav Pant, Mr. Avijit Deb, Ms. Ashima Obhan, Advs. Versus THE TIMES PUBLISHING HOUSE LTD. ….. Respondent Through: Mr. Hemant Singh, Mr. K. Datta, Mr. Shashi P. Ojha and Mr. Rahul Malhotra, Advs.

W.P.(C) No.2737/2012 THE FINANCIAL TIMES LTD. ….. Petitioner Through: Mr. P.S. Raman, Sr. Adv. with Mr. Aparajitha Vishwanath, Mr. Gaurav Mukherjee, Mr. J.V. Abhay, Mr. Raghav Pant, Mr. Avijit Deb, Ms. Ashima Obhan, Advs. Versus TIMES PUBLISHING HOUSE LTD. ….. Respondent Through: Mr. Hemant Singh, Mr. K. Datta, Mr. Shashi P. Ojha and Mr. Rahul Malhotra, Advs.

W.P.(C) No.2745/2012 TIMES PUBLISHING HOUSE LTD. ….. Petitioner Through: Mr. Hemant Singh, Mr. K. Datta, Mr. Shashi P. Ojha and Mr. Rahul Malhotra, Advs. Versus THE FINANCIAL TIMES LTD. ….. Respondent Through: Mr. P.S. Raman, Sr. Adv. with Mr. Aparajitha Vishwanath, Mr. Gaurav Mukherjee, Mr. J.V. Abhay, Mr. Raghav Pant, Mr. Avijit Deb, Ms. Ashima Obhan, Advs.

W.P.(C) No.3483/2012 TIMES PUBLISHING HOUSE LIMITED ….. Petitioner Through: Mr. Hemant Singh, Mr. K. Datta, Mr. Shashi P. Ojha and Mr. Rahul Malhotra, Advs. Versus THE FINANCIAL TIMES LTD. ….. Respondent Through: Mr. P.S. Raman, Sr. Adv. with Mr. Aparajitha Vishwanath, Mr. Gaurav Mukherjee, Mr. J.V. Abhay, Mr. Raghav Pant, Mr. Avijit Deb, Ms. Ashima Obhan, Advs.

1. These four petitions, each under Article 226 of the Constitution of India, impugn the common order (No.91/2012) dated 4 th 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 the registration of mark ” Financial Times ” in Class 16 in name of TPHL.

iii) Allowed OA/4/2006/TM/DEL thereby setting aside the suo moto order of Registrar cancelling the registration in name of TPHL of the mark ” Financial Times ” in Class 16.

iv) Allowed ORA/64/2007/TM/DEL thereby cancelling registration of mark ” Financial Times ” in Class 9 in name of FTL.

v) Dismissed ORA/67/2007/TM/DEL whereby TPHL had sought cancellation of the mark „FT‟ in Class 16 in the name of FTL.

5.1 FTL has filed W.P.(C) No.2735/2012 impugning the order aforesaid 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).

5.2 FTL has filed W.P.(C) No.2737/2012 impugning the order aforesaid 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).

5.3 TPHL has filed W.P.(C) No.2745/2012 (a) impugning the order aforesaid 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). 5.4 TPHL has filed W.P.(C) no.3483/2012 impugning the order aforesaid 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).

6. Needless to state, all the petitions were entertained and vide interim order, the operation in entirety of the order aforesaid of the IPAB was stayed.

7. Hearing of arguments in the petitions was commenced on 30th October, 2015. It was inter alia the contention of the counsel for TPHL that the dismissal by the IPAB (at the foot of the impugned order dated 4th April, 2012) of MP No.157/2010 filed by TPHL in TRA/6/2005/TM/DEL, seeking opportunity to cross-examine the witness of FTL whose affidavit by way of evidence was filed before the IPAB, was bad and there was thus a need for remand of the matter to the IPAB with an opportunity to TPHL to cross- examine the witness of FTL and a direction to thereafter decide afresh.

8. Being of the view that in the event of the said argument of the counsel for TPHL being accepted, the matter will have to be remanded and the decision on the challenge to the other findings of the IPAB should await, with consent, the counsels were heard on the said aspect and order on the said aspect reserved on 18th February, 2016. Being further of the view that in the event of not agreeing with the said contention of the counsel for TPHL, further hearing of the petitions be not delayed owing to the challenge being made by TPHL thereto, it was further observed while reserving order that in the event of the said contention of TPHL being rejected, further hearing would go on and the order rejecting the said argument of TPHL would come into effect along with the final order on the petitions.

9. The counsel for TPHL argued: