IN THE HIGH COURT OF DELHI AT NEW DELHI IA No.17968 of 2012 in CS (OS) No.2963 of 2012 Reserved on: August 30, 2013 Decision on: October 11, 2013 BLOOMBERG FINANCE LP ..... Plaintiff Through: Mr. Akhil Sibal with Mr. Sushant Singh, Mr. Nikhil Chawla, Ms. Geetika Kapur and Mr. Akal, Advocates. versus PRAFULL SAKLECHA & ORS. ..... Defendants Through: Mr. Sudhir Chandra Agarwal and Mr. Kirti Uppal, Senior Advocates with Mr. Sanjeev Nasir and Mr. N.K. Kantawala, Advocates. CORAM: JUSTICE S. MURALIDHARJUDGMENT
1110.2013 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 programming TELEVISION BLOOMBERG and NEWS BLOOMBERG and the RADIO 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 25 are companies incorporated in India using the name ‘BLOOMBERG’. Defendant No.3 is Bloomberg Developers Private Limited, Defendant No.4 is Bloomberg Realty (India) Private Limited and Defendant No.5 is Bloomberg 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 Limited, Defendant No.3, had filed a number of trademark applications for registration of ‘Bloomberg’.
8. The Plaintiff sent a cease and desist letter on 20th January 2012 to Defendant Nos. 3 and 4 and their associate companies. On 8th February and 10th February 2013 a reply was received from ALMT Legal, trademark attorneys of the Defendants stating that they were in the process of receiving instructions and preparing a detailed reply. The Plaintiff opposed the advertised trademark applications of the Defendants for registration of BLOOMBERG. The details of the oppositions filed by the Plaintiff have been set out in para 13 (a) of the plaint.
9. In para 13 (b) of the plaint it is stated that the Trademark registration No.2263031 dated 9th January 2012 of Defendant No.3, Bloomberg Developers Private Limited was granted in Class 43. It is stated that immediately after receiving the Plaintiff’s cease and desist notice on 25th January 2012, the Defendants 30th January 2012 applied to the TM Registry for expedited examination of their aforementioned trade mark application. The Plaintiff filed a cancellation application on 2nd August 2012 and a representation to the Controller General of Patents, Designs and Trade Marks formally protesting against the acceptance of conflicting trademarks under Sections 9 and 11 of the TM Act 1999.
10. It is stated that the Plaintiff also filed 23 applications under Section 22 of the Companies Act, 1956 (‘CA’) for change of name of Defendant Nos. 3 to 25 before the Regional Directors (RDs), Western Region and North Western Region (NWR). The details of the said applications have been set out in para 13 (c) of the plaint. The Plaintiff has also taken steps before the National Arbitration Forum (‘NAF’) under the Uniform Domain Name Dispute Resolution Policy (‘UDNDRPL’) and before the National Internet Exchange of India (‘NIXI’) under the .IN Domain Name Dispute Resolution Policy (‘INDRP’) for transfer of several ‘bloomberg’ domain names registered in the names of Defendant Nos. 1 and 2 and/or their associates to the Plaintiff. These details have been set out in para 13 (d) and (e) of the plaint.
11. It is stated in para 14 of the plaint that on 13th June 2012, the Defendant No.3 through Defendant No.26, filed a private complaint against the Plaintiff before the 1st Additional Chief Metropolitan Magistrate, Bangalore, under 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) Private Limited was advertising and promoting itself in USA, under the guise of sponsoring a conference to be hosted by the NGI Foundation in New York in September 2012. The Defendant No.4 used slogans such as ‘Think Big Think Bloomberg’ and freely referred to itself as part of the ‘Bloomberg Group’. The Plaintiff filed a trademark infringement and cyber squatting suit against Defendant No.3 Bloomberg Realty (India) Private Limited et al in the United States District Court, Southern District of New York and obtained a temporary restraining order.
13. The immediate provocation for filing the present suit is that Defendant No.1 through Defendant No.5, Bloomberg Entertainment Private Limited, associated himself with a Hindi film ‘Deewana Mein Deewana’ on 28th September 2012. It is stated that the association of the Defendants with cinema and digital media would be detrimental to the Plaintiff’s reputation and goodwill and a film released under the banner of a ‘Bloomberg’ company is bound to mislead the public, giving the false impression that the Plaintiff is involved in the said film.
14. The Plaintiff states that although the Defendants have openly stated on their websites and elsewhere that they aim “to be one of the global business conglomerates” and have in various proceedings claimed a net worth of one billion dollars, the paid up capital of the Defendant companies was not commensurate with such claims. A majority of the Defendant companies have not conducted any real business. The Plaintiff further states that the Defendants are trying to unfairly capitalize on the strength and value of the BLOOMBERG mark for their own financial gain. The Defendants have used the Plaintiff’s registered trademark as their trade name without the authority or consent from the Plaintiff. It is stated that ‘BLOOMBERG’ has no meaning other than to identify Michael R. Bloomberg and his former company. There is no acceptable explanation put forward by the Defendants for adopting ‘Bloomberg’ as part of their business name.
15. The Plaintiff contends that the Defendants’ use of the impugned mark/name is aimed at diverting the business of the Plaintiff and is irreparably damaging the reputation and goodwill of the Plaintiff by tarnishing the trademark ‘BLOOMBERG’. It is stated that any entity using the BLOOMBERG trademarks and brand of the Plaintiff without authorization 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 instructions that Defendant No.5 will not use the name ‘BLOOMBERG’ in any manner while releasing the movie ‘DEEWANA MAIN DEEWANA’. The Defendants are restrained till further orders, from getting any new company registered if the word ‘BLOOMBERG’ forms a part of the name of that company. No new domain name will be got registered by the Defendants if the word ‘BLOOMBERG’ forms a part of domain name. Written statement be filed within four weeks. Replication can be filed within four weeks thereafter. The parties to appear before the Joint Registrar on 26th November 2012 for admission/denial of documents. The matter be listed before Court on 21st March 2013 for framing of issues and disposal of pending IA.”
The averments in the written statement 18. In the written statement filed by Defendants, it is stated that Defendant No.3, which was initially incorporated on 12th January 2006 as ‘Smart Developers Pvt. Ltd.’ along with its subsidiaries including Defendant Nos. 4 to 25 are conducting business activities in the fields of “real estate, housing, infrastructure and logistics, airways, reality hospitals, cements, foods and beverages, hotels, housing infrastructure and logistics, oil and gas, power and steel, solar venture, entertainment and movie productions etc.”
It is claimed that the promoters have expended approximately Rs. 100 crore to set up the legal entities and conduct business in various fields in India. It is stated that the projected growth of Defendant No.3 and its subsidiaries is estimated at around USD20billion in the next five years.
19. It is further stated that in 2010, Defendant No.3 started a brand building exercise. It is claimed that “most of their building projects including their promoters were named after the names of flowers and stood tall as the bills and mountains and the promoters of the Defendant companies conceived, coined and adopted the distinctive mark “BLOOMBERG along with an artistic work/label/device depicting a ‘flower in bloom’ of which the ‘flower in bloom’ forms leading and essential feature for and in respect of various goods and/or services with a view to distinguish it from others. The ‘flower in bloom’ is an imaginary depiction in a flower in bloom and does not have any reference to any quality, character or strength of the goods/services.”
20. It is claimed in para 4 of the written statement 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 have issued the fresh certificate of incorporation on 24th August 2011. It is stated that in the action initiated by the Plaintiff under Section 22 CA for change the name of Defendant No.3, the RD has passed an ex parte order dated 3rd October 2012 directing Defendant No.3 to change its trade name. The said decision has been challenged by Defendant No.3 before the High Court of Madhya Pradesh at Indore in Writ Petition No.11184 of 2012 which is stated to be pending.
22. The details of the applications made by Defendants for registration of the trademark in Class 43 and the grant of registration is set out in para 9 of the written statement. It is stated that the registration was granted after expiry of the statutory deadline for filing opposition proceedings by any third parties. Consequently, it is contended that the Plaintiff or any other registered proprietor of the identical and/or deceptively similar trademark are not entitled to file any suit for infringement.
23. According to the Defendants, the Plaintiff is not the registered proprietor or subsequent registered proprietor of the trade mark ‘BLOOMBERG’ under the TM Act, 1999. According to the Plaintiff, as well as based on the online records of the TM Registry, ‘Bloomberg LP’ is the registered proprietor of the trademark ‘Bloomberg’ in Classes 9, 16, 35, 36, 38, 41 and 42. It is contended that the suit filed by the Plaintiff is not maintainable. It is stated that the Defendants are initiating rectification proceedings before the Intellectual Property Appellate Board (‘IPAB’) against the registration granted for the trademark ‘BLOOMBERG’ in favour of the Plaintiff.
24. The Defendants claim that the Plaintiff has suppressed material facts regarding the application filed by it for registration of trademark; the Plaintiff has failed miserably to define the exact cause of action against the Defendants; that on the date of institution of the present suit, the said trade mark of Defendant No.3 was distinctive and the same had acquired reputation and goodwill in relation to service of goods for which it was registered and was being used by the Defendants; that the Plaintiff does not have exclusive rights under the TM Act 1999 in India against the Defendants; that the trade mark ‘BLOOMBERG’ of the Plaintiff was not common in India; that the Plaintiff is not a legal entity registered in India; that 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 nor does the word BLOOMBERG find any mention in the dictionary and therefore, they had to stretch their imagination to find a combination of the Jewish word ‘Berg’ with the English word ‘Bloom’ in order to arrive at the mark ‘BLOOMBEG’. It is pointed out by the Plaintiff that the writ petition filed by the Defendants challenging the order of the RD (NWR) in the proceedings initiated by the Plaintiff under Section 22 CA had been dismissed by the High Court of Madhya Pradesh at Indore. The other averments in the plaint have been reiterated in the replication. Submissions of counsel 26. During the course of the submissions, Mr. Sudhir Chandra Agarwal, learned Senior counsel for the Defendants, submitted that since the Plaintiff’s business was confined to television broadcast, financial news/data and the Defendants were in the business of real estate and construction since 2011, the Defendants are prepared to give an undertaking that they would not enter into either the movie business or TV news or financial data; that they would use ‘BLOOMBERG’ as part of the trade name/mark only for the real estate business; that the Defendants will give up all other corporate names that have been registered using the word ‘BLOOMBERG’ and that the Defendants will issue a disclaimer that they not are associated in any way with the Plaintiff.
27. Mr. Akhil Sibal, learned counsel for the Plaintiff submitted, on instructions, that the Defendants continuing the use the word ‘BLOOMBERG’ for their real estate business would adversely affect the reputation and the distinctive character of the registered mark of the Plaintiff. Mr. Sibal referred to certain documents filed by the Plaintiff which showed that the adverse publicity attracted by the Defendants activities in the construction industry was tarnishing the goodwill attached to the Plaintiff’s mark. Referring to Section 29 (4) of the TM Act, 1999 Mr. Sibal pointed out that the said provision was enacted precisely to deal with the situation at hand. Mr. Sibal referred to the statutory provisions and decisions, which will be discussed presently, and reiterated the case of the Plaintiff as found in the pleadings and urged that the interim injunction as prayed for should be granted in favour of the Plaintiff.
28. Mr. Sudhir Chandra Agarwal, contended that the present dispute was essentially about the adoption of the mark BLOOMBERG 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) PTC25(Bom.) (DB) and of the learned Single Judge of this Court in ITC Limited v. Philip Morris Products Sa 2010 (42) PTC572(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 Court on 27th September 2012 restrained Defendant No.5 from using the name ‘BLOOMBERG’ in any manner while releasing the movie ‘Deewana Mein Deewana’ and the Defendants from getting any new company registered with the word ‘BLOOMBERG’ forming part of the name and from getting a new domain name registered using the word ‘BLOOMBERG’ as part of the domain name. Analysis of the statutory provisions 30. It is settled law that an applicant for recordal of assignment of a registered mark in its favour can, pending such application being granted, assert all rights of the registered proprietor [See Modi Threads v. Som Soot Gola Factory AIR1992Del 4 and Sun Pharmaceuticals Ltd. v. Cipla Ltd. 2009 (34) PTC347(Del)].. However, the suit present is both for an injunction against infringement as also against passing off. Therefore the Court first proposes to deal with the issue of infringement and thereafter passing off.
31. As regards infringement, Section 29 of the TM Act 1999 sets out the different situations in which infringement of a registered mark can result. Section 29 of the TM Act 1999 reads as under:
29. Infringement of registered trademarks. (1) 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 is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. (2) 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 because of(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or (b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or (c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. (3) In any case 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 (a) affixes it to goods or the packaging thereof; (b) offers or exposes goods for sale, puts them on the market, or stocks them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark; (c) imports or exports goods under the mark; or (d) uses the registered trade mark on business papers or in advertising. (7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied d the mark, knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee. (8) A registered trade mark is infringed by any advertising of that trade mark if such advertising(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or (b) is detrimental to its distinctive character; or (c) is against the reputation of the trade mark. (9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall be construed accordingly.
32. Section 29 of the TM Act contemplates the owner/proprietor of the registered trade mark alleging infringement of the said mark by another person who is neither a registered proprietor in relation to the goods and services for which the mark is registered, nor has permission to use such mark in the course of his trade. Under Section 29 (1) infringement results if the mark is “identical with or deceptively similar to” the registered trade mark and is in relation to the goods and services for which the trademark has been registered. The use of infringing or impugned mark must render it “likely to be taken as being used as a trade mark”.
33. Under Section 29 (2) (a) infringement occurs where the impugned mark is identical with the registered trademark and the goods or service for which the impugned mark is being used is similar to the goods and services covered by the registered mark. Under Section 29 (2) (b) infringement occurs where the impugned 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 goods or services for which the impugned mark is sued has to also either be identical with or similar to the goods or services for which registration has been granted. The scenario is different as regards Section 29 (4) of the TM Act 1999. For infringement to result under Section 29 (4), the following conditions are required to be fulfilled: (i) the person using the impugned mark is neither a registered proprietor in relation to the goods and services for which the mark is registered nor is using it by way of permitted use (ii) the impugned mark must be used in the course of trade (ii) the impugned mark has to be either similar to or identical with the registered mark (iii) the impugned mark is used for goods or services different from those for which registration has been granted; (iv) the registered trade mark has a reputation in India; (iv) the use of the impugned mark is without due cause, and takes unfair advantage of or is detrimental to, (a) the distinctive character of the registered trade mark; or (b) the reputation of the registered trade mark.
36. The expression ‘mark’ has been defined in Section 2 (m) of the TM Act to include “a device brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.”
(emphasis supplied) Therefore, for the purpose of Section 29 (4), the use of a mark as part of a corporate name would also attract infringement. In other words, 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.
37. Section 29 (4) is also distinct from Section 29 (1) to (3) of the TM Act in another important aspect. The element of having to demonstrate the likelihood of confusion is absent. Perhaps to balance out this element, the legislature has 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 segment of the public which uses such goods or receives such services that the use of such mark in relation to other goods or service would be likely to be taken as indicating a connection in the course of trade or rendering of services between those goods or services and a person using the mark in relation to the first- mentioned goods or services.’ Under Section 11 (9) (i) and (v), for the purposes of registration of a well-known mark it is not necessary for such mark to have been used in India or be well-known to the public at large in India. It must be well known t a substantial segment of the relevant public.
39. It may not be necessary for the proprietor of a registered mark to show that it is a ‘well-known trademark’ as defined in Section 2 (zg) although if in fact it is, it makes it easier to satisfy the ‘reputation’ requirement of Section 29 (4) of the TM Act. The presumption of distinctiveness attached to a registered mark is a rebuttable one. At the interim stage, either of these elements should be shown prima facie to exist. Whether in fact these elements are satisfied would depend on the evidence led by the parties at trial.
40. It may be noticed at this stage that even prior to the TM Act 1999 the Supreme Court in N.R. Dongre v. Whirlpool Corporation 1996 PTC (16) recognised the concept of cross-border reputation when it upheld the decision of the Division Bench of this Court which granted a temporary injunction in favour of a Plaintiff based abroad. The Division Bench of this Court followed the decision in Apple Computer Inc. vs. Apple Leasing & Industries 1992 (1) Arbitration Law Reporter 93, and held that it was not necessary to insist that a particular plaintiff must carry on business in a jurisdiction before improper use of its name or mark can be restrained by the court. The main consideration was “the likelihood of confusion and consequential injury to the plaintiff and the need to protect the public from deception. Where such confusion is prima facie shown to exist, protection should be given by courts to the name or mark”.
41. Turning to Section 29 (5) of the TM Act 1999, it is seen that it 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. 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 be intended to be exhaustive of all situations of uses of the registered mark as part of the corporate name. Section 29 (5) cannot be said to render Section 29 (4) of the TM Act, 1999 otiose. In other words, 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.
44. The Statement of Objects and Reasons of the TM Act 1999 explain that sub-section (5) of Section 29 “seeks to prevent a person from adopting someone else’s trade mark as part of that person’s trade name or business name by explicitly providing that such action shall also constitute an infringement under this Act. This provision will bring this clause in harmony with the proposed amendments to Sections 20 and 22 of the Companies Act, 1956.”
Sections 20 and 22 of the CA have been amended to provide that where the name of a company resembles a registered trade mark, then the registration of the company in that name can be refused. The ROC is expected to gather information from the TM Registry. Under Section 22 (5) of the CA, the owner of the registered trade mark can apply to have the name of a company that is purportedly infringing the mark cancelled. All of this only strengthens the conclusion that 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 exists. The decision in Raymond Ltd. 45.1 In this context it is necessary to discuss at some length the judgment of the Bombay High Court in Raymond Limited on which considerable reliance was placed by the Defendants. Raymond Limited (‘RL’) filed a suit complaining of infringement by the Defendant Raymond Pharmaceuticals Private Limited (‘RPPL’) of the Plaintiff’s registered trademark by using it as part of its corporate name. On 27th June 1983 the Plaintiff obtained registration for the trade mark ‘Raymond’ under Class 25 in respect of textile piece goods including shirting, suiting and saris, dress materials etc. under the Trade and Merchandise Marks Act, 1958 (‘TMM Act 1958’). The Plaintiff also had a registration for the word ‘Raymond’ written in stylized manner and registered under the Copyright Act, 1957 (‘CA1957