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The era of globalisation and internationalisation of trade and commerce has developed certain complex socio legal issues with regard to well known Trade Marks. Trade Marks are territorial in nature, but in the light of globalisation and internationalisation there is need to protect well known trade marks against their dilution beyond geographical limits. A trade mark is said to have diluted when by the use of similar or identical trade mark in another non competing markets, it loses its capacity to signify a single source vis-a-vis its distinctiveness. Thus trade mark dilution is a wrong committed against the owner of a famous trade mark which decreases or tarnishes the uniqueness of the impugned mark owing to its unauthorised use in relation to the goods or services that are not similar or identical to the goods or services of the owner of the trade mark.
In India, protection against dilution of trademark is available not only to the well known trade mark but also to the ‘marks with reputation’. Section 29 (4) of the Trade Marks Act, 1999 provides for the protection against the dilution of ‘trademarks with a reputation’. The Supreme Court of India in the case T.V Venugopal v. Ushodaya Enterprises laid down the test of likelihood of confusion in relation to lesser known but identifiable marks i.e. marks with reputation. However there was ambiguity regarding the meaning of the term ‘mark with a reputation’ as against ‘well known mark’. This concept is clarified recently by the Delhi High Court in the Case of Bloomberg Finance LP v Prafull Saklecha which has widened the scope of anti dilution protection of trademarks in India. Justice Muralidhar has rendered this judgment allowing the marks which are not well known marks to also enjoy the anti dilution protection.
Critical Analysis of the Bloomberg Finance Lp v. Prafull Saklecha:
Facts of the case:-
The plaintiff filed the present suit in the High Court of Delhi seeking for injunction against the defendants from using the mark ‘Bloomberg’ as part of their Corporate name. The plaintiff has been running 24/7 financial news channel since 2008 in India and claims to be using the mark Bloomberg in India, and claims to be using the mark Bloomberg in India since 1996. The defendants are companies incorporated in India using the name ‘Bloomberg’ as part name of their corporate. 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. 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 plaintiff argued that the plaintiff’s mark ‘Bloomberg’ was a well known mark in India and the defendants had taken unfair advantage of the mark by using it as a part name of their Corporate. It was further argued 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. The plaintiffs contended that the use of the mark by the defendants constituted infringement and passing-off, thereby diluting the brand Bloomberg.
The defendants on the other hand argued 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. It was further contended that the case fell neither under section 29(4) nor under section 29(5), therefore, the act did not constitute infringement. Further many more arguments were advanced by the defendants, but here it does not seem to be important to discuss in order to confine it to the anti dilution perspective only.
The Court held that the essential elements for dilution were prima facie established. The Plaintiff has been able to prima facie show that the mark BLOOMBERG is a well-known mark and enjoys both a trans-border reputation as well as a reputation in India. The court disregarded the defendant’s argument stating that the section 29(5) could not be held 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). Thus the court held that the legislature may not be said to have intended not to provide any remedy if a registered mark is used as a part name of the Corporate. Hence the court granted injunction against the defendant from using the mark ‘Bloomberg’ absolutely.
The judgment in this case is in consonance with the Supreme Court ruling in T. Venugopal v. Ushodaya Enterprises and Delhi High Court ruling in the case Ford Motor Co. V. C.R. Borman to the extent that non-application of the likelihood of confusion test to the case of trade marks dilution. However Justice Muralidhar stated that the element of having to demonstrate the likelihood of confusion is absent in Section 29 (4) as against 29 (1) to (3). The Supreme Court and High Court periodically in the precedents have exempted the test of likelihood of confusion and held that the section 29 (4) applies only to those trademarks which have earned a reputation in India. However, until this case the term ‘mark with reputation’ remained shrouded and was under ambiguity. Prior land mark precedents including Ford Motor Co. Case were not clear with respect of specifying the legal test for determining as to when and how mark can be said to have acquired ‘reputation’ in India. The court in this case went further and clarified that it may not necessary to prove that the impugned registered mark is a well known mark, even in fact if it is. This makes easier to suffice the requirement as to the ‘reputation of the mark’ under section 29(4) of the Trade Marks Act, 1999.
Lastly, while comparing the phenomenon of dilution of trade mark with US and Europe, the US Trade Dilution Revision Act demands the mark to be a well known mark to enjoy protection whereas in Europe the Courts are left with the discretionary powers in order to determine the criteria or element of reputation as Community Trade Mark regulation does not provide meaning for reputation.
Thus the ruling as laid down in the case of Bloomberg case by Justice Muralidhar is laudable which has widened the scope of Section 29 (4) by allowing the anti dilution protection to trademarks with reputation in India and making it easier to suffice the ‘reputation’ requirement under section 29 (4) of Trade Marks Act, 1999.
About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com