2013 Supreme(Del) 1355

IN THE HIGH COURT OF DELHI
S. Muralidhar, J.
Bloomberg Finance LP
Vs.
Prafull Saklecha & Ors.
IA No. 17968 of 2012 in CS (OS) No. 2963 of 2012
Decided On: 11.10.2013

Section 29(5) of the Trade Marks Act, 1999 is not exhaustive of all situations of uses of the registered mark as part of the corporate name and that Section 29(4) of the Act can be invoked even if the registered mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, provided the conditions attached to Section 29(4) are fulfilled.

Headnote:

TRADEMARK - INFRINGEMENT - PASSING OFF - WELL KNOWN MARK - BLOOMBERG - ADOPTION OF BLOOMBERG AS PART OF CORPORATE NAME - WHETHER INFRINGEMENT OR PASSING OFF - SECTIONS 29(1), 29(2), 29(3), 29(4), 29(5) OF THE TRADE MARKS ACT, 1999 - INTERPRETATION - APPLICATION.

Fact of the Case:

Plaintiff, Bloomberg Finance LP, a multinational financial news corporation founded in 1982 by Mr. Michael R. Bloomberg, the 108th Mayor of New York City, USA, filed a suit for infringement and passing off of its registered trademark 'BLOOMBERG' against Defendants Nos. 3 to 25, companies incorporated in India using the name 'BLOOMBERG'. The Plaintiff claimed that the adoption of 'BLOOMBERG' as the prominent part of the corporate names of Defendant Nos. 3 to 25 constituted infringement or passing off of the Plaintiffs registered trade mark 'BLOOMBERG'. The Defendants contended that the use of the impugned mark/name was aimed at diverting the business of the Plaintiff and was irreparably damaging the reputation and goodwill of the Plaintiff by tarnishing the trademark 'BLOOMBERG'.

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 registered mark of the Plaintiff and passing off their goods and services as that of the Plaintiff. The Court found that the elements of Section 29(4) of the Trade Marks Act, 1999 were prima facie established and that the Plaintiff had a well-known mark that enjoyed both a trans-border reputation as well as a reputation in India. The Court also found that the Defendants' explanation for adopting BLOOMBERG as part of their corporate name was not convincing and that the adoption of the impugned mark by the Defendants was likely to create confusion in the minds of the public that the Defendants were associated with the Plaintiff. The Court further held that the balance of convenience in restraining the continued use of Bloomberg by the Defendants as the prominent feature of their corporate names was entirely in favour of the Plaintiff and that the denial of the interim injunction as prayed for was likely to result in irreparable hardship and severe prejudice being caused to the Plaintiff.

Issues: Whether the adoption of 'BLOOMBERG' as the prominent part of the corporate names of Defendant Nos. 3 to 25 constituted infringement or passing off of the Plaintiffs registered trade mark 'BLOOMBERG'.

Ratio Decidendi: The Court held that Section 29(5) of the Trade Marks Act, 1999 is not exhaustive of all situations of uses of the registered mark as part of the corporate name and that Section 29(4) of the Act can be invoked even if the registered mark is used as part of the corporate name but the business of the infringer is in goods or services other than those for which the mark is registered, provided the conditions attached to Section 29(4) are fulfilled. The Court further held that 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 continuing to use BLOOMBERG as part of the corporate names of Defendants 3 to 25 and from incorporating any new company, entity either in the form of proprietorship or partnership or in any other form of business organization by using the trademark which is identical of deceptively similar to Plaintiff's well known trademark BLOOMBERG which may cause infringement of the Plaintiff's trademark BLOOMBERG. The Defendants were also restrained from using and continuing to use the 'Bloomberg' either as a part of their trademark, corporate name, domain name, or in advertising material, as a part of reference on the Internet or in any other manner whatsoever and thereby passing off their goods and services or businesses as that of the Plaintiffs.