The judgment in Bloomberg Finance LP v Prafull Saklecha delivered by Justice Muralidhar earlier this month has widened the scope of anti dilution protection of trademarks in India, thus lending more clarity to the concept. To quickly recapitulate, Section 29(4) of the Indian Trade marks Act, 1999 embodies the concept of Trademark Dilution. (Click here and here for detailed analysis of trademark dilution in the Act). A trademark is diluted when its uniqueness is lost owing to its unauthorised use in relation to products that are not identical or similar to the product of the trademark owner. In relation to lesser known yet identifiable brands, the test of likelihood of confusion applies as laid down by the Supreme Court in T.V Venugopal v. Ushodaya Enterprises. Dilution of trademark essentially happens in relation to a ‘mark with reputation’ as per section 29(4) of the Indian Trademarks Act. Prior to the present judgment, there was ambiguity surrounding the meaning of the term ‘mark with a reputation’ as against a well known trademark. Justice Muralidhar has rendered a judgment which allows marks which do not qualify as well known trademarks to also enjoy anti-dilution protection.
Facts: The present suit was filed in the Delhi High Court seeking an injunction to restrain the defendants from using the mark Bloomberg as a part of their corporate name. After hearing both sides, the Court ruled in favour of the plaintiff and injuncted the defendants from using the mark Bloomberg. . The plaintiff is the media behemoth Bloomberg Finance LP which has been successfully running a 24/7 financial news channel since 2008 in India, and claims to be using the mark Bloomberg in India since 1996. The plaintiffs contended that the use of the mark by the defendants constituted infringement and passing-off, thereby diluting the brand Bloomberg. The defendants were using the word Bloomberg in their company’s names, operating in the fields of construction and realty, food, entertainment, etc. The Court held that the essential elements for dilution were prima facie established. The plaintiff’s mark was a well known mark in India, and the defendants had taken unfair advantage of the mark. Thus, the Court granted injuncted the defendants from using the mark Bloomberg absolutely.
Use of mark as Corporate Name
The present case was essentially was one of corporate name infringement. The plaintiffs pleaded infringement of the mark under Section 29(4). The defendants contended that the case fell neither under section 29(4) nor under section 29(5), therefore, the act did not constitute infringement. The Court however rubbished the defendants’ contention stating that section 29(5) could not be held exhaustive of all situations of uses of the registered mark as part of the corporate name. It stated the qualifications for an act to result in infringement under section 29(4) and said that under section 2(m) a mark is defined as “a device brand, heading, label, ticket, name….” Therefore for the purpose of Section 29 (4), the use of a mark as part of a corporate name would also attract infringement. Section 29 (5) cannot be said to render Section 29 (4) of the TM Act, 1999 otiose. To further this, the Court held that the legislature may not be said to have intended not to provide a remedy where the registered trade 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.
The judgment is consistent with the Division Bench ruling of the Delhi HC in Ford Motor Co. v. C.R. Borman and the SC in T.V Venugopal v. Ushodaya Enterprises to the extent of non-application of the likelihood of confusion test to cases of trademark dilution. Justice Muralidhar in the present case whilst did not refer to the aforementioned binding precedents, he stated in a matter-of-fact manner that the element of having to demonstrate the likelihood of confusion is absent in section 29(4) as against section 29(1)-(3).
Well known mark v. Mark with reputation
The Courts in the precedents had categorically exempted the application of the test, and held that section 29(4) applied only to those trademarks which have earned a reputation in India. However, as Mihir Naniwadekar pointed out, the Ford ruling was unclear with respect to specifying a legal test for determining as to when a mark can be said to have acquired a “reputation” in India. Further, the Court in Ford Motor case had equated the term ‘mark with reputation’ used in section 29(4) with the concept of ‘Well known trademark’ as prescribed by the Act. Discussing the case, Mihir Naniwadekar and Dr. Gangjee had opined that the term ‘mark with reputation’ still remained shrouded in ambiguity. The Court in the present case went a little further and clarified that it may not be necessary for the proprietor of a registered mark to show that it is a ‘well-known trademark’, although if in fact it is, it makes it easier to satisfy the ‘reputation’ requirement of Section 29 (4) of the TM Act. Therefore, it is safe to say that even if a mark does not qualify as a well known trademark it may be entitled to anti-dilution protection. In comparison with other jurisdictions, the US Trademark Dilution Revision Act requires a mark to be well known to enjoy protection. In the EU, the element of reputation is left to the Courts to determine because the Community Trade Mark Regulation does not provide meaning of reputation. Some jurisdictions which do not require a mark to be well known are Colombia, Peru, Ecuador, etc. Thus, the Court has marginally expanded the scope of application of trademark dilution in India.
Bloomberg, DP Ahuja and Hacking
On a related note, Bloomberg Finance LP and its legal representatives D P Ahuja & Co also have investigations of cyber hacking pending against them. Bloomberg Developers( the defendants in the above case) made accusations of alleged hacking of its email accounts against Bloomberg Finance. A criminal complaint was lodged and the Karnataka HC dismissed a petition praying for quashing of the criminal complaint in March earlier this year. The accounts were allegedly hacked during the course of arbitration proceedings pursuant to the aforementioned trademark dispute, and confidential documents of the opposite party were claimed to be submitted by Bloomberg Finance LP to the arbitration panel. We are given to understand that investigation by the Cyber Cell against Bloomberg Finance LP and D P Ahuja resumed and was underway(as of March 2013). If any of you have updates on this case for us, please do let us know.
I would like to thank Mr. Sushant Singh, one of our readers for bringing the case to our notice.
Image from here.