Trademark Dilution: Understanding, Forms, And Legal Implications Under The Trademarks Act Of 1999
Introduction
The Trademarks Act of 1999 introduced trademark dilution. The use of trademarks helps a company set itself apart from its rivals’ products and services. A fundamental principle of trademark law permits the owner of a well-known trademark to forbid third parties from using it in a manner that would lessen its distinctiveness. A feature of trademark law known as trademark dilution gives the brand owner exclusive rights to the mark, providing them a strong and recognisable trademark. A fundamental rule of trademark law permits the owner of a well-known trademark to forbid third parties from using it in a manner which would diminish its distinctive character. In accordance with a provision of trademark law known as trademark dilution, the owner of a brand may.
What is Trademark Dilution?
Trademark Dilution occurs when a third party uses the business mark or trade name which is sufficiently similar to a famous mark which likely to weaken the distinctive quality of that particular businesses mark.
FORMS OF DILUTION
- BLURRING: Dilution by blurring occurs when there is unauthorized use of any popular trademark which causes harm to the famous mark as this mark is likely to being associated with similar mark created by an unauthorized party.
the trademark will lose some of its power of association with the products for which it was originally meant.
A speculative example may be the adoption of INSTAGRAM as a mark on soap, leading consumers who had only previously connected the mark with the products of the tech giant to suddenly also associate it with soap.
- TARNISHMENT
Unauthorized use of famous mark which is offensive, inappropriate in connection with a similar mark or trade name.Tarnishmentmainly occurs when the product is contrary to the corporate values of the trademark owner and another form is to offend or criticize the trademark’s owner.
“The TDRA also stated that certain actions are not actionable as dilution by blurring or tarnishment, including:
- any fair use of a famous mark by another person other than as a designation of source for the person’s own goods or services, including for advertising or promotion that permits consumers to compare goods or services; or
- identification and parodying, criticising, or commenting upon the famous mark owner or the owner’s goods or services;
- Any use of a mark that is not for profit”[i]
[Image Sources: Shutterstock]
DOCTRINE OF DILUTION
Dilution was recognized by Indian Courts as early as the early 1990s.
In “Sunder Parmanand Lalwani and others v. Caltex (India) Ltd” the High Court of Bombay determined that using the name “Caltex” for watches would cause customers to become confused and be misled since they link this mark with well-known gasoline and other oil goods.
The single judge panel in Daimler Benz Aktiegesellschaft v. Hybo Hindustan had to decide, among other things, whether the defendant could use the mark “BENZ” on underpants.
The issue here was can the word Benz and three pointed star in a ring which associated with luxury car maker, Mercedes Benz could be used by the defendant under the mark ‘BENZ’ on undergarment.
The court held that-
“The trademarks law is not intended to protect a person who deliberately sets out to take the benefit of somebody else’s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name ‘Benz’ should not be objected to.”
Nobody should be permitted to attach a globally renowned name to products that have no relation to the commodities that gave rise to that name and undermine the reputation of a highly expensive and exceptionally well-engineered vehicle brand by linking it to underwear.
Section 29(4) of the Trade Mark Act of 1999 states that:
The trademark needs to be registered and well-known in India.
Only when the individual makes use of the following mark does trademark infringement take place in the form of dilution:
Similar or identical to a registered trademark with established goodwill in India
Use relates to products or services other than those covered by the registration.
To prove infringement by dilution, the following outcomes must be proven:
When the user of the mark is shown to unfairly exploit a reputable mark or a mark with individuality
when the mark undermines another mark’s reputation or distinctiveness in any way.
The court in the well-known case of Trademark dilution and its Indian cause of action are thoroughly explained in ITC v. Philip Morris Products SA &Ors. Section 29(4) of the Trade Marks Act of 1999 was interpreted by the High Court. Dilution can occur if the following conditions are met:
- “The impugned mark is identical or similar to the well-known mark
- The well know or the injured mark has a reputation in India
- The use of the impugned mark is without due cause
- The use of the impugned mark leads to taking of unfair advantage of or is detrimental to the distinctive character or reputation of the registered trademark.”
The situation in India is significantly more serious since, according to the definition given in Indian regulations, the conditions for recognition among the relevant section of the society are not particularly tight and fairly liberal. The WIPO/Paris Union Joint Recommendation and Indian law both stipulate that for a trademark to be considered it must be well-known in at least one segment of the public as determined by a court or registrar’s order.
These requirements significantly narrow the scope of the mark’s recognition, which weakens the protective measures required to uphold the mark in accordance with the dilution principles.
Again, another section in the Trademark Act, 1999 regarding the matter under thought is section 29, which expresses that an registered trademark having good will in India is encroached on account of utilization of an similar or dissimilar by an individual who utilizes it over the span of business, if such utilization is without due reason and “takes unfair advantage of”or is hindering the exclusivity or good will of the registered trademark.[ii]
Conclusion
Hence, an appropriate rule or determining factor for well-known trademarks is required with a specific end goal to evade irregularity and vagueness. The vagueness in the meaning of well-known trademarks has likewise disturbed the implementation of section 11. Though a separate trademark law isn’t necessary just making the required amendments to the present Trade Marks Act, 1999 should be adequate and may even be better.
Author: Kaustubh Kumar, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing
REFERENCE
- ITC LIMITED v. PHILIP MORRIS PRODUCTS SA & ORS.2010 (42) PTC 572 (Del.)
- Section 29(4)(c) of The Trade Marks Act,1999.
- Trademark dilution laws in India: Fotislaw (2022) Fotis. Available at: https://fotislaw.com/lawtify/trademark-dilution-law-india/.
- https://www.intepat.com/blog/trademark/trademark-dilution-india/
- AIR 1994 Delhi 239, 1994 RLR 79
[i] Richard Stim, A. (2015) What is trademark dilution?, www.nolo.com.
[ii] The Trademark Act, 1999, India, s. 29(4).
