Introduction

A trademark is more than a logo, a name or a symbol — it represents the expectations of quality, reliability and trust that a brand creates in the minds of consumers. It allows customers to identify the source of goods or services and to differentiate one manufacturer or provider from another. In the global economy, trademarks are one of the key assets of a company. Not only do they aid in recognition, but they also establish emotional bonds with the consumer. Certain marks, like Coca-Cola, garner exceptional flavour and goodwill through their long- term and extensive use and public recognition. “Well-known trademarks” under Sect 2(1)(zg) of the Trade Marks Act, 1999 are a special class of marks. Consider TATA, COCA-COLA and APPLE which are all brands that have become generic terms with massive business and symbolic meaning.

The notion of a well-known trademark is an adaptation to the necessity of conferring greater protection to marks that enjoy exceptional reputation. These marks are protected not only within the particular class of goods or services under which it has been registered, but also in across all classes. The rationale is simple — the more famous a mark, the greater its vulnerability to damage by misuse. The unauthorized use of a mark, that as it happens may be similar or even identical, can erode its distinctiveness and goodwill even if customers aren’t confused directly as to the source of the goods or services this is called trademark dilution.

Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods/services of a party when that party is not the authorized user, but is using the mark on goods or services that are not similar or competitive. There is no need, as in typical infringement, to demonstrate that confusion, or actual competition exists. Instead, its analysis centres on the distinctiveness or fame of the mark whose reputation is allegedly being blurred or sullied. For instance, putting a famous trademark like “KODAK” on shoes or “MICROSOFT” on notebooks wouldn’t trick consumers, but would diminish the distinctiveness of those marks. Accordingly, dilution protection is designed to protect the uniqueness and business value of famous trademarks.

Concept and Types of Trademark Dilution

The “dilution” doctrine was first acknowledged in early twentieth century U.S. jurisprudence, later codified in the Federal Trademark Dilution Act, 1995, and amended by the Trademark Dilution Revision Act, 2006. This principle was gradually being imported in different jurisdictions including the European Union and India, allowing owners of famous trademarks to protect the mark from unauthorized use, even in dissimilar fields. India has introduced the concept in its legislation via the Trade Marks Act, 1999 and specifically through section 29 (4) which states that the use of a registered trade mark is prohibited on an article or in relation to a service that is not similar to that for which it is registered, if such use takes unfair advantage of or is likely to take unfair advantage of or causes detriment to the distinctive character or repute of the registered trade mark.

Dilution can be in the form of blurring or it can be diminished in the form of tarnishment.

Dilution by Blurring:

Blurring is the whittling away of the uniqueness of a famous mark by using it on unrelated material. It causes the mark to lose its unique position in the mind of the public. For example, if the word “Kodak” were applied to bicycles or shoes, this would erode the so-called “Kodak”/“photography” link, blurring its distinctiveness. This form of dilution dissipates the consumers’ mental linkage to the original brand.

Dilution by Tarnishment:

Dilution by tarnishment occurs when the image of a famous mark is harmed by being linked to inferior products or products that are sexually explicit or otherwise offensive. If you start using a well-known mark such as “Mercedes” on poor quality products or related to vulgar or offensive material, the value of business and trademarks is undeniably going to be harmed. Tarnishment also has an immediate impact on the positive feelings that consumers have about a brand and consequently it can lower consumer demand.

The rationale underlying protection against dilution is to maintain the prestige, exclusivity and selling power of famous marks. With businesses becoming international and new digital platforms opening up their risk of dilution expands as well, therefore trademark law must be constantly evolving. Thus, deflecting both blurring and tarnishment of a mark best enables its distinctiveness and reputation to remain unscathed, preserving consumer confidence and brand integrity consistently in all markets.

Legal Framework for Trademark Dilution in India

India has adopted robust legislation in order to protect trademarks from dilution and to ensure the protection of the good will and reputation of those marks that are well known, without such protection being misused. The Trade Marks Act, 1999 is the primary legislation in this regard. It is consistent with international requirements, especially as provided in the TRIPS Agreement, to prevent the weakening and misuse of well-known marks for all fields of goods and/or services.

[Image Sources: Shutterstock]

Three essential provisions Section 2(1)(zg), Sections 11(6) – (10), and Section 29(4) are delineated in the Trade Marks Act, 1999, which forms the backbone for protection of well- known marks in India.

Section 2(1)(zg) – Well Known Trade Mark: This is a definition provision which states that a well-known trademark is a mark which is recognized as such by a significant public, wherein its use in connection with other products or services would lead to association with the owner of the original mark. This expansive interpretation ensures that a well-known mark enjoys protection across different categories for items or services that may relate to the goods or services for which it was originally registered. Sections 11(6)–(10) — Determining Well- Known Marks:

These subsections enable the Registrar of Trade Marks to recognize the “well-known” status of a mark and consider the degree of publicity, the length of use and geographic area of use, among other factors.

Brief Judicial Review on Case Laws of Trademark Dilution in India Daimler Benz AG v. Hybo Hindustan (1994 Ptc 287 Del)

This judgement is considered one among the first and the most leading judgments on

protection against dilution in India. Plaintiff Daimler Benz AG, the luxury automobile maker known for its "Mercedes-benz" brand, brought suit against defendant for using the mark "Benz" on men’s underwear.

The Delhi High Court further observed that the mark “Benz” is not an ordinary trade mark but a mark of quality, excellence and international repute. The use of such a high flown mark in connection with any other goods would lead to the dilution of the distinctiveness and tarnish the image.

The ruling reinforced that global marks need to be protected even on unrelated products, as their misappropriation erodes the global nature of the mark and its goodwill."

ITC Limited v. Philip Morris Products SA (2009 (40) PTC 715 Del)

ITC Ltd, holder of the “Insignia” trade mark in respect of one of its brands of cigarettes filed a complaint against Phillip Morris for the use of “Marlboro Insignia. The Delhi High Court has been ruledout the defendant [Not named in this ruling] from using its mark and held that the defendant’s use of the mark was parasitic on the well-known mark of ITC and was an act of free riding. The court discussed the relevant provisions of Section 29(4) of the Trade Marks Act, 1999 and held that dilution of a famous mark occurs when the distinctiveness or the reputation of a well-known mark is diluted even in the absence of any confusion or any competition amongst the products. This expanded the meaning of dilution under Indian law.

Conclusion

Protection of well-known marks, faces a serious threat in India in the form of Trademark Dilution. Although traditional trademark laws were largely developed to address the prevention of consumer confusion, the dilution theory concerns protection of the uniqueness and goodwill of a famous mark away from the matter, or even away from the type of goods or services on which would relate. The fundamental of trademark dilution is to preserve the unique character of a famous mark from being diluted or blurred, tarnished or unjustly exploited for commercial benefits.

The Indian legislative frame work in place in this regard i.e. the Trade Marks Act, 1999, has adequately dealt with the issue of dilution and established itself to be compliant with international standards like having recourse to those laid down in the TRIPS Agreement as well as the WIPO guidelines. It also provides for the right to prevent the use of a mark identical or similar to a well-known registered trademark in India without authorization and for the protection of the well-known mark against such use even for different goods or services (Section 29(4) of the Act). This provision is a sea change from earlier laws in that it recognizes that the reputation and uniqueness of a mark in the market place is important.

The Indian judiciary has been instrumental in the development of the doctrine of dilution. In historic decisions like Daimler Benz Aktiegesellschaft v. Hybo Hindustan (1994) and ITC Limited v. Philip Morris Products SA (2010), the courts have reiterated that use of well-known marks by third parties, even in instances where no direct confusion is likely to result, has the potential of diluting the distinctiveness of such marks or causing hurt to their reputation. These cases reflect a judge's care and concern that a mark, if it's famous, should remain to be the only one and valuable.

Author :- Akanksha Rana, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.