TaxTMI 
TaxTMI 
2013 (10) TMI 1602
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....tated 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....
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....oomberg Entertainment Private Limited. Defendant Nos. 6 to 23 are other Indian companies whose names incorporate 'Bloomberg' as a prominent feature of the corporate name. Defendant No. 24 is Bloomberg Airways Private Limited and Defendant No. 25 is Bloomberg Green Ventures Private Limited. Defendant No. 1, Mr. Prafull Saklecha, and Defendant No. 2, Mrs. Sunita Saklecha, are directors of many of the Defendant 'Bloomberg' companies. Defendant Nos. 26 to 36 are either the directors or managing directors of several of Indian Bloomberg companies arrayed as Defendant Nos. 3 to 25. 7. It is stated that in early January 2012, the Plaintiff learnt that the Defendant No. 4, Bloomberg Realty (India) Private Limited, was carrying on business from Indore, Madhya Pradesh; that Defendant Nos. 1 and 2 had formed the other Indian 'Bloomberg' companies and had changed the name of another company, Smart Developers Private Limited, to Bloomberg Developers Private Limited. The Plaintiff states that all the above steps were taken between January 2011 and June 2012. It is further stated that on conducting a search of the records of the TM Registry, it was found that Bloomberg Developers Private Limite....
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....the provisions of Sections 65, 66 and 66-C of the Information Technology Act, 2005 ('IT Act') read with Section 120(B), 511 and 411 of the Indian Penal Code ('IPC') alleging 'stolen information' and 'illegal hacking'. In two petitions filed by the Plaintiff seeking quashing of the criminal case, the Karnataka High Court has passed ex parte interim order staying the proceedings. The Plaintiff on 14th August 2012 is stated to have published a trademark caution notice in all editions of 'The Economic Times', 'The Hindu' and 'Dainik Bhaskar'. It is stated that the Defendants had created and were operating a website at www.bloombergrealty.in. The Plaintiff also found the websites, www.bloombergentertainment.com claiming and advertising the Defendants' involvement in the entertainment and media industries, and www.bloomberginfotech.com offering webmail services under the name 'bloomail'. Dated screen shots of relevant web pages have also been enclosed with the plaint. 12. The case of the Plaintiff is that Defendants have tried to misappropriate the BLOOMBERG mark in USA and other jurisdictions. Some time towards the end of July 2012, the Plaintiff learnt that Bloomberg Realty (India) ....
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....on is bound to confuse and mislead the investors and public. The Defendants have slavishly adopted the trademark/corporate name of the Plaintiff and have created 23 paper companies. The Defendants' intention is to disrupt the trademark rights of the Plaintiff and reap illegal benefits from the Plaintiff's well known BLOOMBERG trademark and name. 16. It was in the above circumstances, the present suit was filed seeking inter alia to restrain the Defendants from using the trade mark which is identical or deceptively similar to the Plaintiff's well known mark 'BLOOMBERG' and which may cause infringement of the Plaintiff's trademark 'BLOOMBERG', which may constitute passing off their goods and services of the Defendants as that of the Plaintiff which may cause dilution of the trademark 'BLOOMBERG' and other damages in the sum of Rs. 1 crore. Interim Order in the suit 17. On 27th September 2012, Defendant Nos. 1 to 36 appeared through counsel and in their presence the following order was passed by the Court: "There is appearance on behalf of Defendant No. 1 as well as Defendants No. 2 to 36. The learned counsel appearing for Defendant No. 5 states on instructi....
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....atement that the Defendants' adoption of the mark/word/expression 'Bloomberg' "is honest and in good faith after combining the English word 'Bloom', which means to produce flowers and the word Berg which means mountains. Defendants states that the word BLOOMBERG is a word of Jewish and/or German and/or Scandinavian origin which means 'flower hills' or 'mountains of flowers' and/or a common surname in western world." Accordingly, Defendant No. 3 states that with a view to enhance prominence/ distinctiveness to its trade mark and/or trade name 'Bloomberg', Defendant No. 3 "has created an artistic work label/device depicting a 'flower in bloom' and along with the letters/word Bloomberg, it forms a leading and essential feature of their trade mark. Thus, Defendant No. 3 is the owner, proprietor of the trade mark consisting of the mark/logo/label having word/expression/mark 'Bloomberg' and an imaginary depiction of 'flower in bloom' as its leading and essential feature." 21. In para 8 it is stated that Defendant No. 3 has changed its name from 'Smart Developers Pvt. Ltd.' to 'Bloomberg Developers Pvt. Ltd' in or about August 2011 and the Registrar of Companies ('ROC') is stated to ha....
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....the business activities of the Plaintiff are confined to commercial activities relating to financial news and information; the business activities, goods and/or services for which the marks are used by the Plaintiff and the Defendants are different and not related to each other's field of activities; that the Defendants are prior users of the said mark 'BLOOMBERG; that the use of the said trademark is bonafide and honest; that the Defendants have incurred huge expenditure for advertisement and marketing in relation to their various business activities under the said trademark and they are entitled to use the said mark during the course of their trade in India. Averments in the replication 25. In the replication filed by the Plaintiff, the averments of the plaint have been reiterated. It is contended that explanation given by the Defendants for adopting the mark 'BLOOMBERG' was "dishonest, fantastic and highly imaginative tale and exposed the fact that the Defendants have nexus with the adopting of the word 'BLOOMBERG'. It is submitted that the trade mark 'BLOOMBERG' is the personal name of Mr. Michael R. Bloomberg, but the Defendants do not have any surname after BLOOMBERG no....
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....OOMBERG as part of the corporate name of the Defendants group of companies. According to him, Section 29 (5) of the TM Act, 1999 was exhaustive of the issue and if the Plaintiff was not able to make out a case under Section 29 (5) of TM Act, 1999 then clearly it was not entitled to any interim injunction. Reliance was placed by Mr. Agarwal on the decision of the Division Bench of the High Court of Bombay in Raymond Limited v. Raymond Pharmaceuticals Pvt. Ltd. 2010 (44) PTC 25 (Bom.) (DB) and of the learned Single Judge of this Court in ITC Limited v. Philip Morris Products Sa 2010 (42) PTC 572 (Del). 29. Before proceeding to discuss the above contentions this Court proposes to briefly recapitulate the factual position. The Plaintiff is the assignee of the registered trademark 'BLOOMBERG' in Classes 9,16, 35, 36,38, 41 and 42 but not Class 43 which relates to construction and real estate. The Plaintiff's application for recordal of the assignment of the registered mark, is pending with the TM Registry. The application by the Plaintiff for cancellation of the registration of the mark 'BLOOMBERG' in Class 43 in favour of Defendant No. 3 is pending. The interim order passed by this ....
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....e falling under clause (c) of sub- section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which- (a) is identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect f which the trade mark is registered. (6) For the purposes of this section, a person uses a registered mark, if, in particular, he2013:DHC:5285 CS(OS) No. 2963 of 2012 Page 19 of ....
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....ed mark is similar to the registered mark and the goods and the services for which is used is identical with or similar to the goods and services for which the registered mark is used. Under Section 29 (2) (c) infringement occurs where the impugned trade mark is identical to the registered trade mark and the goods or services for which the impugned mark is used is also identical to the goods/services covered by the registered trade mark. 34. An additional requirement in the above three situations for infringement to result is that the use of the impugned trademark "is likely to cause confusion on the part of the public" or "is likely to have an association with the registered trade mark". Under Section 29 (3) when the impugned trademark is identical to the registered trademark and the goods/services for which it is used are also identical to the goods or services for which the registration has been granted then "the Court shall presume that it is likely to cause confusion on the part of the public". 35. Therefore, under Section 29 (1), (2) and (3) for infringement to result (i) the impugned mark has to be either similar to or identical with the registered mark and (ii) the go....
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.... mandated the necessity of showing that (a) the mark has a reputation in India (b) that the mark has a distinctive character (c) the use by the infringer is without due cause. In other words, the legislative intent is to afford a stronger protection to a mark that has a reputation without the registered proprietor of such mark having to demonstrate the likelihood of confusion arising from the use of an identical or similar mark in relation to dissimilar goods and services. The words 'detriment' in the context of the 'distinctive character' of the mark brings in the concept of 'dilution' and 'blurring'. In the context of 'repute' they are also relatable to the concept of 'tarnishment' and 'degradation'. The words "takes 'unfair advantage" refers to 'free-riding' on the goodwill attached to mark which enjoys a reputation. The disjunctive 'or' between the words 'distinctive character' and 'repute' is designedly inserted to cater to a situation where a mark may not have a distinctive character and yet may have a reputation. 38. Section 2 (zg) of the TM Act defines a 'well known trade mark' in relation to any goods or services to mean 'a mark which has become so to the substantial se....
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.... in the same goods or services in respect of which the trade mark is registered. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction restraining order the infringer should straightway follow. This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. For the purpose of Section 29 (5) of the TM Act 1999, there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern. 42. However, in a situation where the first element is present and not the second then obviously the requirement of Section 29 (5) is not fulfilled. The question is whether in such a situation the owner or proprietor of the registered trade mark is precluded from seeking a remedy under Section 29 (4) of TM Act, 1999 if the conditions attached to Section 29 (4) are fulfilled. 43. In the considered view of this Court, given the object and purpose of Section 29 (1) to (4), Section 29 (5) cannot....
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....istered under the Copyright Act, 1957 ('CA 1957'). RPPL contended that 'Raymond' was a common word and that the business and product of RL and RPPL are totally different. 45.2 After the learned Single Judge refused the injunction, RL appealed to the Division Bench of the Bombay High Court which noted that under the TMM Act, 1958 there was no provision corresponding to Section 29 (5) of TM Act, 1999. After analysing the provisions it concluded: "It is clear that Section 29 deals with different situations when an act on the part of the Defendant would amount to infringement of the registered trade mark. A registered trade mark can be adopted by a Defendant as its trade name in two situations, (i) when the Defendant is dealing in the goods in respect of which the trademark is registered and (ii) when the Defendant is not dealing in the goods in respect of which the trade mark is registered. The Legislature obviously was aware of this situation, still the Legislature provided that only when the Defendant adopts the registered trade mark as a part of its trade name, and deals in goods in respect of which the trade mark is registered, then only it will amount to infringement.....
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....dants the one in ITC Limited v. Philip Morris Products Sa. The facts were that ITC had launched its hotel business in 1975 and was since then using the 'WELCOMGROUP' logo. ITC alleged that the Defendant Philip Morris Products Sa, had been manufacturing and dealing in tobacco/cigarette by using the 'Marlboro' logo which was identical or similar to ITC's NAMASTE 'WELCOMGROUP' mark/logo. Philip Morris contended that registration of the Namaste logo did not confer any exclusive right in favour of ITC "since the logo as a stand-alone ingredient of the overall trademark is unregistered". It pointed out that ITC used the W-NAMASTE logo only for the hotels run by it under the banner of "WELCOMGROUP". ITC used different logos for the hotels run by it under the banners Sheraton, Fortune and 'Welcome heritage.' Philip Morris argued that their "Roof" device logo had been used not only for the limited edition festive packs but also for marketing their products on different occasions. 46.2 In the above background, the Court discussed Section 29 (4) in the context of 'dilution' and observed: "(1) The "likelihood of Confusion" test which is the essential basis of Trademark law, is not ....
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....ciation of the offending mark, with that of the Plaintiff's is one of the vital essentials for securing relief in any claim for dilution." On the facts of the case it was concluded that "the two trademarks are neither identical, nor similar to each other" and that Defendants mark "is quite different, and has its own artistic elements." Secondly it was held that the Plaintiffs' W-NAMASTE logo was connected mainly with hotels, resorts, restaurants and the hospitality sector generally and that "there is nothing suggestive that such association extends to mid to high priced cigarette." Thirdly, it was found that the Plaintiffs‟ mark is not a "stand alone" mark; it was used with the words WELCOMGROUP, or the name of the resort or service. Moreover, it was part of the overall marks and devices in relation to each hotel, restaurant, resort or service it offers, to the consumer. In the above context, it was held that "there is no evidence to show how the W-NAMASTE logo is likely to be affected prejudicially, or that the Defendants' use of their mark would result in detriment to the Plaintiff's mark." 47. The ratio of the decision in ITC Limited, relevant to the instant case is Sec....
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....sed as under: (a) Section 29 (5) of the TM Act 1999 relates to a situation where (i) the infringer uses the registered trademark "as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern" and (ii) the business concern or trade is in the same goods or services in respect of which the trade mark is registered. (b) This is in the nature of a per se or a 'no-fault' provision which offers a higher degree of protection where both the above elements are shown to exist. If the owner/proprietor of the registered trade mark is able to show that both the above elements exist then an injunction order restraining order the infringer should straightway follow. For the purpose of Section 29 (5) of the TM Act 1999 there is no requirement to show that the mark has a distinctive character or that any confusion is likely to result from the use by the infringer of the registered mark as part of its trade name or name of the business concern. (c) However, in a situation where the first element is present and not the second then obviously the requirement of Section 29 (5) is not fulfilled. Where the registered tr....
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....f Bloomberg companies show that they have a wide range of operations all over the world of which the key area is providing financial services/data and information. The broadcasting of the Plaintiff's 24 hour English Bloomberg TV channel in India since 2008 is an important factor for determining the question whether it has a presence and reputation in India. Television channels do offer a high degree of visibility and recognition. There is material to show prima facie that the Plaintiff's mark is well-known and that it has both a trans-border reputation as well as a reputation in India. This aspect will no doubt have to be examined at depth after the trial is concluded. 54. The explanation offered by the Defendants for adopting BLOOMBERG as part of the corporate name of their companies is prima facie not convincing at all. On the one hand the Defendants have themselves applied for and obtained registration for the said mark and therefore cannot doubt it distinctiveness. On the other hand, they appear to suggest that they independently thought of the said mark for their building and construction business when in fact the name BLOOMBERG can hardly be said to be a common name in Ind....
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....restrain the Defendants from infringing the Plaintiff's marks. While the case of the Plaintiff that the registration obtained by the Defendants is of doubtful validity will require a detailed examination, the manner of the Defendant obtaining such registration after a cease and desist notice was issued to it lends prima facie merit to the contention of the Plaintiff. In support of such submission the Plaintiff has in its written submissions referred to the decision of the Single Judge in Clinique Laboratories v. Gufic Ltd. 2009 (41) PTC 41 (Del) as well as the decision in Gufic Ltd. v. Clinique Laboratories 2010 (43) PTC 788 (Del) which did not interfere with the decision under appeal to the extent it held that where the Court is prima facie of the view that the registration of the Defendant was invalid an interim injunction restraining infringement could be granted. 59. For the aforementioned reasons, the Court is of the view that the elements of Section 29 (4) have prima facie been established and that the Plaintiff has made out a prima facie case for grant of an interim injunction restraining the Defendants from infringing the registered mark of the Plaintiff. Passing Off ....
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....hange their corporate name in 2011. The Plaintiff has also been able to prima facie show that the continued use of its mark BLOOMBERG by the Defendants as the prominent part of their corporate name, with every Defendant company name starting with 'Bloomberg', will severely prejudice and cause damage to the reputation and goodwill attached to the Plaintiff's registered mark. 62. The fact that the Plaintiff and the Defendants are operating in different lines of businesses is not a good defence in an action brought by the proprietor of a well-known mark. As has been explained in several decisions (see for e.g., Adidas Solomon and Adidas Benelux (2003) ECR-I-2357), even if the fields of operation are different, it is possible that the average consumer makes a link with the prominent well-known mark. The well-known mark comes to signify certain qualities that transcend the goods and services for which it is registered. Increasingly, with the free flow of goods and services offered under well-known brands internationally, the possibility of confusion being caused in the minds of the average consumer in countries other than the country of origin has to be acknowledged. 63. For the a....