Recently, the Delhi High Court (“High Court”) has decided
a trade mark dispute (Bloomberg Finance
LLP v. Prafull Sak lecha & Ors.) wherein the court had to analyse
whether section 29(5) of Trade Marks Act, 1999 (“TM Act”) is exhaustive for all situations of uses of the registered mark as part of the corporate name . That is, if conditions laid down under section 29(5) of TM Act are not
satisfied, can the plaintiff still seek a remedy under section 29(4) of the
Act. In the present case, a suit was filed by Bloomberg Finance LLP, the plaintiff, to restrain the defendants
from using term ‘Bloomberg’ as a part of their corporate names.
 |
| (Image courtesy: Westpalmbeachlaw.com) |
According to section 29(5) of the TM Act, a
registered trade mark is infringed if (i) it has been used in relation to a
trade, and (ii) it has been used in relation to goods or services in respect of
which the trade mark registered. On the other hand, section 29(4) of the TM Act
provides for a situation where a mark is infringed when it ‘is used in relation
to goods or services which are not similar to those for which the trade mark is
registered’. In this post, I am highlighting only the issues related to the
interpretation of section 29(4) and section 29(5) of the TM Act and not the other parts.
Facts:
The
plaintiff corporation had been operating under the name 'Bloomberg' since it establishment by Michael R. Bloomberg. In 2008, ‘Bloomberg UTV’ was launched as a 24-hour English
news outlet in India. The trade mark
‘Bloomberg’ had also been identified as 19th well known trade mark by
Trademark World Magazine (April, 2004). On becoming aware of the fact that defendants
had formed some ‘Bloomberg’ companies and had changed the name another company,
Smart Developers Private Limited, to Bloomberg Developers Private Limited [all
this happened between 2011 and 2012], the plaintiff sent a cease and desist notice
to defendants no. 3 and 4. Following this notice, while defendant filed a request
for an expedite examination of its trade mark application [for Bloomberg Developers
Private Limited, Class 43], the plaintiff also filed applications under section
22 of the Companies Act, 1956 for changing the name of defendant nos. 3 to 25. According to the plaintiff, defendants had tried to misappropriate the BLOOMBERG mark in USA and other jurisdictions. In
the suit, the plaintiff had sought to restrain the Defendants from using the
trade mark which is identical or deceptively similar to the Plaintiff’s well
known mark ‘BLOOMBERG’. Vide an interim order, dated 27.09.2012, defendants
were restrained from further using the name ‘BLOOMBERG’.
Contentions:
According to the defendants, their adoption of the
mark ‘Bloomberg’ was honest and in good faith. On behalf of them, it was
contended that ‘Bloomberg’ is derived from English word ‘Bloom’, which means to
produce flowers and the word 'Berg' which means mountains. While the plaintiff is
the registered proprietor of the trade mark ‘Bloomberg’ in Classes 9, 16, 35,
36, 38, 41 and 42, the defendants had sought trade mark registration for class
43. It was contended that since the business activities of the Plaintiff are confined
to commercial activities relating to financial news and information, marks used by the Plaintiff and the Defendants
are not related to each other’s field of activities. That is,
while the mark used by the plaintiff operated in television broadcast,
financial news/data, the mark used by the defendant operated in the business of
real estate and construction.
On the other hand, it was contended by the
plaintiff that trade mark ‘BLOOMBERG’ is the personal name of Michael R.
Bloomberg. According to them, defendants’ usage of the term ‘Bloomberg’ for
their real estate business would adversely affect the reputation and the
distinctive character of plaintiff’s trade mark. It was contended that section
29(4) of the TM Act was enacted to deal with such situations.
On behalf of the defendants, it was further contended that section 29(5) of the TM Act is
exhaustive of the situations as present in this case. And since the plaintiff had not been able to satisfy the conditions laid down under section 29(5), it cannot seek any remedy.
Findings
of the Court:
While considering the claim of the plaintiff, the
High Court referred to Section 29(4) of the TM Act. According to the High
Court, section 29(4) is distinct from section 29 (1) to (3), i.e., the element
of having to demonstrate the likelihood of confusion is absent in the
former section. The court was of the opinion that the legislative intent behind the
enactment of section 29(4) was to afford a stronger protection without requiring the claimant to satisfy
the ‘likelihood of confusion’ test. Explaining the ingredients of section
29(4), it was held by the court that:
“......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.”
For the purpose of Section 29 (4), the use of a
mark as part of a corporate name would also attract infringement. Interpreting
section 29(4) of the TM Act, it was held by the court that:
“.........if
the registered mark is used by a person, who is not the registered proprietor
of such mark or a permitted user, as part of the corporate name under which he trades
then also infringement would also result. What is however important is that the
registered trade mark must be shown to
have a reputation in India and should be shown to have been used by the infringer
‘without due cause”. Further, it should be shown that such adoption or use
has resulted in the infringer taking unfair advantage of the registered mark or
is detrimental to the distinctive character or repute of the registered trade
mark.”
To the contention that section 29(5) is exhaustive
for the situations as present in this case, it was held by the court that Section
29 (5) cannot be intended to be exhaustive of all situations of uses of the
registered mark as part of the corporate name. That is, Section 29 (5) cannot
be said to render Section 29 (4) of the TM Act, 1999 otiose. According to the court, legislature could have
not refrained from providing remedy for a situation where there is a usage of a
trade mark but the business is carried out in different fields. ‘Where Section
29 (5) offers a high degree of protection where both the elements envisaged in
that provision exist, it is not meant to preclude the owner of a registered
mark remediless when only the first and not the second element exist'.
On behalf of the defendant, reliance was also
placed on Raymond Limited v. Raymond Pharmaceuticals
Pvt. Ltd. 2010 (44) PTC 25 (Bom.) (DB). In this case, it was held by the Bombay
High Court that the Defendant would not be liable for infringement if there is
an adoption of the Plaintiff’s trade mark for the goods different from that of
the plaintiff’s. According to the (Delhi) High Court, decision in Raymond Limited (supra) cannot said to
be the conclusive of the interpretation to be placed on Section 29 (5) read
with Section 29 (4) of the TM Act 1999. It was held by the (Delhi) High Court
that Bombay High Court did not have the occasion to consider a vital difference
between section 29(4) and 29(5). For example, reputation, unfair advantage etc.
Referred
cases: In Mahendra
& Mahendra Paper Mills Limited v. Mahindra & Mahindra Limited
(2002) 2 SCC 147, rejecting the contention of the defendant that its products were
in no way similar to that of the plaintiffs and did not overlap with the
business of any of the companies enlisted by the Plaintiffs, it was held by the
court that defendant had committed the fraud of passing off. Following this
decision, Bombay High Court, in Kalpataru
Properties Private Limited v. Kalpataru Hospitality & Facility Management
2011 (48) PTC 135 (Bom.), held that ‘a passing off action was maintainable
in the case of a well known mark even if the goods and services being dealt
with by the parties are not similar’. In another decision Red Hat Inc. v. Mr. Hemant Gupta 2013 1
AD (Delhi) 130, it was held by the (Delhi) High Court that could seek a remedy
for an infringement under section 29 (4) as well as section 29 (5) of the TM
Act 1999.
Having discussed the above position of law, it was held by the (Delhi) High Court
that while section 29(5) is in the nature of a per se or a ‘no-fault’ provision
which offers a higher degree of protection, it cannot be exhaustive
of all situations of uses of the registered mark as part of the corporate name.
No comments :
Post a Comment