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High Court of Delhi
S. MURALIDHAR, J.
Bloomberg Finance LP
Versus
Prafull Saklecha & Others
IA No. 17968 of 2012 in CS (OS) No. 2963 of 2012
Decided on : 11-10-2013
BLOOMBERG - SUIT FOR INJUNCTION - INFRINGEMENT OF REGISTERED TRADEMARK - PASSING OFF - WELL KNOWN MARK - USE OF REGISTERED TRADEMARK AS PART OF CORPORATE NAME - SECTION 29(4) AND 29(5) OF THE TRADEMARKS ACT, 1999 - DISTINCTION - INTERPRETATION - BALANCE OF CONVENIENCE - IRREPARABLE HARDSHIP - INTERIM INJUNCTION GRANTED.
Fact of the Case:
Plaintiff, a multinational financial news corporation, filed a suit for infringement of its registered trademark 'BLOOMBERG' and passing off against Defendants, who had adopted 'BLOOMBERG' as part of their corporate names. Plaintiff claimed that 'BLOOMBERG' was a well-known mark and enjoyed a trans-border reputation as well as a reputation in India. Defendants contended that the mark was not distinctive and that their use of it was honest and in good faith.
Finding of the Court:
The Court held that the Plaintiff had made out a prima facie case for grant of an interim injunction restraining the Defendants from infringing the Plaintiff's registered mark and passing off their goods and services as that of the Plaintiff. The Court found that the mark 'BLOOMBERG' was distinctive and well-known, and that the Defendants' use of it as part of their corporate names was likely to cause confusion in the minds of the public. The Court also found that the balance of convenience was in favor of the Plaintiff and that the denial of the interim injunction would result in irreparable hardship and severe prejudice being caused to the Plaintiff.
Issues: 1. Whether the Plaintiff had made out a prima facie case for grant of an interim injunction restraining the Defendants from infringing the Plaintiff's registered mark and passing off their goods and services as that of the Plaintiff. 2. Whether the mark 'BLOOMBERG' was distinctive and well-known. 3. Whether the Defendants' use of the mark 'BLOOMBERG' as part of their corporate names was likely to cause confusion in the minds of the public. 4. Whether the balance of convenience was in favor of the Plaintiff. 5. Whether the denial of the interim injunction would result in irreparable hardship and severe prejudice being caused to the Plaintiff.
Ratio Decidendi: 1. Section 29(4) of the Trademarks Act, 1999 offers a wider trademark protection without the concomitant likelihood of confusion requirement, as it is in respect of dissimilar or unrelated products and services. 2. Section 29(5) of the Trademarks Act, 1999 is not exhaustive of all situations of uses of the registered mark as part of the corporate name. 3. The use of a registered trademark as part of the corporate name is an infringement under Section 29(5) of the Trademarks Act, 1999, even if the business of the infringer is in goods or services other than those for which the mark is registered, if the conditions attached to Section 29(4) are fulfilled. 4. A passing off action is maintainable in the case of a well-known mark even if the goods and services being dealt with by the parties are not similar.
Final Decision: The Court granted an interim injunction restraining the Defendants from infringing the Plaintiff's registered mark and passing off their goods and services as that of the Plaintiff. The Defendants were given six weeks time to make consequential changes to their corporate names by omitting the use of BLOOMBERG as part of their corporate names.
1. The question that arises for consideration in this application under Order XXXIX Rules 1 & 2 of the Code of Civil Procedure, 1908 (‘CPC’) filed by Bloomberg Finance LP, the Plaintiff in CS (OS) No. 2963 of 2012, is whether the Plaintiff has, for the purposes of grant of an interim injunction, been able to make out a prima facie case that the adoption of ‘BLOOMBERG’ as the prominent part of the corporate names of Defendant Nos. 3 to 25, constitutes infringement or passing off of the Plaintiff’s registered trade mark ‘BLOOMBERG’.
The averments in the plaint
2. The Plaintiff, Bloomberg Finance LP, is stated to be a multinational financial news corporation founded in 1982 by Mr. Michael R. Bloomberg, the 108th Mayor of New York City, USA. The Plaintiff states that it operates in India through its subsidiary/associate company, Bloomberg Data Services (India) Private Limited having its office in New Delhi. The Plaintiff states that it constitutes one-third of the 16 billion dollar global financial data market. The Plaintiff further states that it provides influential decision makers worldwide with data, analytics, news and insight to give them a critical edge. It has over 15,000 employees in 192 locations including 2,300 reporters in 140 news bureaus worldwide. The Plaintiff’s BLOOMBERG trademark is stated to be used in over 100 countries. It is stated that in India, the Plaintiff has been using BLOOMBERG trade mark since 1996. The Indian counterparts, i.e., Bloomberg Data Services (India) Private Limited (formed on 10th October 1996) and Bloomberg Television Production Services (India) Private Limited (formed on 15th September 2005) have their offices in Mumbai, Bangalore and New Delhi.
3. It is stated that the Plaintiff reaches millions of people worldwide through a variety of international, multilingual media outlets, including BLOOMBERG TELEVISION and BLOOMBERG RADIO programming BLOOMBERG NEWS and the website www.bloomberg.com. It is stated that in India, ‘Bloomberg UTV’ was launched in 2008 as a 24-hour English language business and financial broadcast news outlet by UTV Software Communications in strategic partnership with Bloomberg Television. It is stated that the mark ‘BLOOMBERG’ is globally recognized and it is exclusively associated and identified with the Plaintiff and its products and services. The Trademark World Magazine of April 2004 identifies the trademark ‘BLOOMBERG’ to be the 19th most well known/famous trade mark in the world.
4. In para 5 of the plaint the trade mark registration granted in favour of the predecessor-in-interest of the Plaintiff for the trade mark BLOOMBERG in Classes 9, 16, 35, 36, 38, 41 and 42 of the Fourth Schedule to the Trade Marks Rules, 2002 (‘TM Rules’) read with the relevant provisions of the Trade Marks Act, 1999 (‘TM Act 1999’) have been set out. It is stated that the Indian trademarks were assigned to Bloomberg Finance LP on 14th November 2007. The Plaintiff filed applications with the Trade Marks Registry (‘TM Registry’), Kolkata for recording the assignment. It is further stated that there are another 12 trademark applications for the ‘BLOOMBERG TV INDIA’ mark in different classes which have been assigned by UTV to the Plaintiff. The Plaintiff has taken steps for recordal of those assignments. The relevant documents in this regard have been filed with the plaint. The details of the trade mark registrations granted in favour of the Plaintiff in other countries of the world have been set out in para 7 of the plaint.
5. The Plaintiff states that the domain name ‘bloomberg.com’ was registered by it on 29th September 1993 and has been continuously used by it since then. It is stated that the Plaintiff is also the proprietor of over 1000 domain names incorporating the expression ‘Bloomberg’ or a misspelling thereof. It is stated that the Plaintiff owns at least six “country code Top Level Domains’ (ccTLDs) in India using the expression ‘Bloomberg’.
6. Defendant Nos. 3 to 2
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