Bloomberg Finance LP versus Prafull Saklecha & Others

Facts

Bloomberg Finance LP (BFL) filed a suit for trade mark infringement and passing off against 36 parties alleging that they had incorporated 23 companies using the mark/name BLOOMBERG as their corporate name for different services. BFL upon becoming aware of the defendants' activities in January 2012 sent a cease and desist letter requesting that the defendants stop using the Bloomberg name as part of their corporate name. In addition, it filed complaints with Registrar Of Companies against 23 companies alleging trade mark infringement and requested that they change the name. BFL alleged that towards the end of July 2012, it came to the BFL’s attention that one of the defendants, Bloomberg Realty (India) Pvt. Ltd., was sponsoring a conference in the United States, and was referring to itself as being part of the Bloomberg Group. BFL brought an action for trademark infringement and cyber-squatting against ‘Bloomberg Realty’ and obtained a temporary restraining order from the US District Court for the Southern District of New York. However, the defendant continued to use the Bloomberg name and mark in India, and even associated themselves with a Hindi feature film through Bloomberg Entertainment Private Limited. BFL believed that such an association with the media and film industry was detrimental to its reputation, as a film released by a 'Bloomberg' company was likely to mislead the public as to their involvement. Aggrieved by the defendant’s continued use, BFL filed the suit at the Delhi High Court.

Court’s decision

While examining issues at hand, the court was of the view that there are two distinct situations in case where a mark has been copied and used as part of the corporate name/trading style by a third party:

1. Where the business/goods and services of the infringer differ from those of the registered owner of the trademark, the latter can seek a remedy under Section 29(4) of the Trademarks Act, which requires the plaintiff to establish that:


• Its mark has a reputation in India;
• Its mark is used by the defendant without due cause; and
• Such use of the mark by the defendant takes unfair advantage of the plaintiff’s mark and is detrimental to the distinctiveness and reputation of the plaintiff’s mark.


2. Where the business/goods and services of the infringer are the same as those of the registered owner of the trademark, Section 29(5) of the Trademarks Act would apply to use of a mark as part of corporate name and it will be a clear case of infringement and statutory provisions under this section will be attracted.

According to the court, the documents and materials on record were sufficient to show that:

1. the mark BLOOMBERG has been adopted by BFL, which has operations worldwide, and Bloomberg is a well-known brand name;


2. the defendants' explanations for the for the adoption of the BLOOMBERG mark were not convincing;
3. the fact that the defendants’ registered a number of companies under the name Bloomberg within a short period of time indicated that they were trying to cash on the goodwill of BFL for their own financial benefits by presenting themselves as being part of a large corporate conglomerate, when in fact a number of the defendant companies were not conducting substantial business; and
4. The association of the BFL’s mark with the construction and real estate industry would be detrimental to the distinctive character of the mark, thus leading to its dilution.

In light of the above, the court confirmed the injunction issued in September 2012, and further expanded its scope by restraining the defendants from using the word ‘Bloomberg’ as part of their corporate name and incorporating new companies or entities with names or words identical or deceptively similar to the plaintiff’s mark.