Understanding the Laws on Trademark Dilution in India

04 May 2022

Trademark Dilution in India

The provisions on dilution were introduced for the first time into the Indian Law with the passing of the Trade Marks Act of 1999, which came into force in 2003. Even though the statutory provisions in India came into effect in 2003, it doesn’t conclude that there was no protection granted to the well-known mark against any kind of misappropriation in respect of dissimilar good as the cases of dilution were dealt under the remedy of passing off by the Indian Courts. Long back, even before The Agreement on Trade-Related Apects of Intellectual Property Rights(TRIPS) became effective in January 1996, most cases were handled under the head of torts as a claim of ‘passing off’

In year 1969, the High Court of Bombay in Sunder Parmanand Lalwani and others v Caltex (india) Ltd, declared that, use of ‘Caltex’ for watches would mislead and cause confusion among the consumers since this mark was associated by consumers and public at large with the famous petrol and various oil products.

Similarly, in the case of Daimler Benz Aktiegesellschaft v. Hybo Hindustan, Delhi High Court dealt on a matter concerning dilution. Though the court did not expound on the concept of dilution but it allowed injunctive relief to the plaintiff. It was held that ‘Benz’ is an internationally reputed mark signifying the finest engineered cars in the world and holds a symbol of status and quality. Therefore, the use of the mark ‘Benz’ on underwear, would clearly dilute the reliability of the mark. Hence, court granted the globally famous German automaker an injunction against the use of the mark ‘Benz’ along with a ‘three-pointed human being in a ring’ by the defendants on the undergarments. Therefore, it can be observed how even Indian Courts even in the absence of statutory compulsion protected the well-known marks effectively.

The concept of dilution in the Trade Marks Act, 1999 has been dealt under sections 29 (4) along with other relevant sections in correspondence to section 29(4). Though the act doesn’t as such deal with the term ‘dilution’ but sets a standard by which a plaintiff can establish dilution of his trademark, in relation to dissimilar goods or products.

Trademark Dilution is a concept in trademark law, which gives the owner of the famous trademark holder the power to forbid others from using the mark in a way that would lessen its uniqueness.

As per section 29(4) of the Trade Mark Act, 1999 to constitute the case of dilution:

  1. The trade mark must be registered and should have a reputation in India
  2. Trademark infringement occurs in the form of dilution only when the person uses the mark which is:
  • Identical or similar to the registered trademark which already hold reputation in India
  • Use is on different goods or services than those covered by the registration.

The following results must be established in order to establish infringement by dilution: 

  1. When the person using the mark is found to take unfair advantage of the reputed mark or a mark with distinctiveness
  2. When the mark is causing any kind of harm to the distinctive mark or reputed mark.

In The famous case of ITC v Philip Morris Products SA & Ors, the court provides a detailed understanding of the trademark dilution and its cause of action in India.  The High Court while referring to section 29(4) of the Trade Marks Act, 1999 held that a cause of dilution can arise if the following essentials are established:

  1. The impugned mark is identical or similar to the well-known mark
  2. The well know or the injured mark has a reputation in India
  3. The use of the impugned mark is without due cause
  4. 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.

Exceptions to dilution of trademarks:

However, there is some exception when doing such things wouldn’t amount to dilution, such as:

  1. Any fair use, whether a nominative or descriptive fair use or facilitation of such fair use, of a famous mark by another person other.
  2. Advertising or promotion, that permits consumers to compare goods or services
  3. Identifying and parodying, criticizing, or commenting upon the famous mark owner of the goods or services
  4. All sorts of news reporting and news commentary
  5. Any mark which includes parodies, criticism, or comments – in the case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, where the defendant manufactured apparel for dogs under the mark ‘Chewy Vuitton’ which was a parody of the plaintiff’s famous brand ‘Louis Vuitton’ apparels. It was held that there was no dilution by the defendant as it was a mere parody.

In today’s world, the rights of the famous trademark holders are prone to be infringed by people in order to reign in the global market on the fame of such famous marks. Therefore, enacting the legislation strictly prohibiting such action of infringements was necessary. Accordingly, many major countries have evolved to come up with strong legislations governing all such matters. In this article, we were able to get an overview of Laws on the trademark dilution with reference to three countries. Although the criteria of protection may differ, there is one common thing among these three countries, their aim is to safeguard the rights to the reputed or famous trademark. If you need any legal assistance to safe guard your trademark reach out to the intellectual property lawyers at Fotislaw.