UNIVERSITY OF PETROLEUM & ENERGY STUDIES

COLLEGE OF LEGAL STUDIES

B.A., LL.B. (Hons.)

SEMESTER VIII

ACADEMIC YEAR: 2013-18 SESSIONS: JANUARY - MAY

PROJECT

FOR

Intellectual Property Rights

Topic:- Doctrine of Dilution of Trademarks

NAME: APARNA SENGAR(23)

ANUSHKA TRIVEDI (21)

 TABLE OF CONTENTS

1. INTRODUCTION
2. EVOLUTION OF THE CONCEPT OF TRADEMARK OF
DILUTION IN INDIA
3. CASE OF ITC LTD. V. PHILIP MORRIS PRODUCTS SA &
ORS.
4. INDIAN CASE LAW: A CRITICAL APPRAISAL
5. NATIONAL AND INTERNATIONAL LAW PERSPECTIVE
6. CONCLUSION
 INTRODUCTION

Trademark law aims at saving consumers from any likelihood of confusion which may arise due
to deceptively similar marks and protect the trader's reputation in order to assist him in marketing
his goods. A trademark can be characterized of words, symbols, packaging or combination of
colors or anything by which a company can differentiate its goods from those available in the
market.1 The most crucial constituent of a trademark is the exclusive right of its owner to use it
to differentiate its own goods and services from those of others. 2 Trademark serves to be a sign
of reliable source and quality and also aids consumers in identification of the products they
prefer from a wide range of other similar products.3 Frank I. Schechter is credited with proposing
the concept of trademark dilution for the first time in the year 1927. Schechter in an article he
wrote for the Harvard Law Review explicated that the true purpose of a trademark is ‘to identify
a product as satisfactory and thereby to stimulate further purchases by the consuming public.’
Schechter also argued for preservation of uniqueness of a trademark 4 and noted that every time a
trademark is used by another, even when used on non-competing goods, injury occurs to a
trademark owner. Trademark dilution is a kind of trademark infringement which applies only to
famous trademarks. Unlike traditional trademark law, the primary consideration of trademark
dilution is that the hard work and financial investment of the owner in building the reputation
through use of a distinctive trademark is protected. Trademark dilution is a manifestation of the
growing demand for providing greater protection to trademarks that have become famous.5
Trademark dilution applies to situations where the plaintiff’s trademark is famous and the
defendant’s trademark for unrelated goods is similar to that of the plaintiff.

Dilution of a famous trademark, can take place in two ways: first, ‘dilution by blurring’ which
harms the distinctiveness of a trademark 6 due to its association in the minds of consumers as to
the resemblance between two marks, one of them being a well-known mark. That is to say, the

1
The Trademarks Act, 1999, s. 2 (m).
2
Ralph S. Brown, Jr., “Advertising and the Public Interest: Legal Protection of Trade Symbols”, Yale Law Journal,
Vol. 57, 1948, at p. 1206.
3
T.G. Agitha, “Trademark Dilution: Indian Approach”, Journal of Indian Law Institute, Vol. 50 Isssue 3, 2008, at p.
341;
4
Moseley v. Victoria Secret Catalogue Inc., 537 U.S. 418 (2003).
5
Supra Note 4
6
Daimler Benzaktiegesellschaft & Anr. v. Eagle Flask Industries Ltd., ILR (1995) 2 Del 817
link between the mark and the goods becomes indistinct and; second ‘dilution by tarnishment’,
which is where the use of the trademark harms the reputation due to the negative connections
arising out of the resemblance between a famous trademark and some other mark. Tarnishment
is said to take place when substandard quality of goods is associated with a similar mark. It is
important to note that for a case of dilution to be made, the mark has to be famous, and that use
of the dissimilar good has to cause harm to its hard-earned repute. The anti-dilution provisions in
India, although not worded in such a manner, offer protection against the above listed types of
dilution through Section 29(4) of the Trademarks Act, 1999.7 The test of ‘Likelihood of
Confusion’ has been at the root and is widely regarded as the foundation of the trademark law for
ages.8 However, the debate and controversy has been going on for quite some time as in case of
trademark dilution there is a departure from the traditional trademark law as trademark dilution
dismisses the test of ‘Likelihood of Confusion’. This paper explores this departure from
application of the classical trademark laws and the related confusions in greater detail. Further,
this project, analyses the Delhi High Court’s holding in the case of ITC Ltd. v. Philip Morris
Ltd.9 It is one of the most significant cases dealing with trademark dilution where the court
analyzed the concept of trademark dilution and noted that the ‘likelihood of confusion’ test
cannot be part of a test for dilution. While concurring with the judgment rendered by the court in
the ITC case, the author will reiterate with supporting arguments that the test evolved for
infringement actions are inapplicable to cases falling under the purview of Section 29(4) of the
Trademarks Act, 1999.

Trademark dilution is a trademark law concept giving the owner of a famous

trademark standing to forbid others from using that mark in a way that would lessen its
uniqueness. In most cases, trademark dilution involves an unauthorized use of another's
trademark on products that do not compete with, and have little connection with, those of the
trademark owner. For example, a famous trademark used by one company to refer to hair care
products might be diluted if another company began using a similar mark to refer to breakfast
cereals or spark plugs.[1] Dilution is a basis of trademark infringement that only applies to famous
marks. With non-famous marks, the owner of the mark must show that the allegedly infringing

7
The Trademarks Act, 1999, s. 29(4)
8
The Trade Marks Act, 1999, s. 11(1); Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449; H. C Dixon &
Sons Ltd. v. Geo Richardson & Co. Ltd., 50 RPC 36 (374)
9
ITC Ltd. v. Philip Morris Ltd., 166 (2010) DLT 177
use creates a likelihood of confusion as to the source of the product or service being identified by
the allegedly infringing use. With non-famous marks, it is highly unlikely a likelihood of
confusion will be found if the products or services are in unrelated markets. However, with
famous marks, any use by another person of the mark has the potential for confusion, since a
famous mark is so well known among the consuming public that people will assume affiliation
with the owner of the mark regardless of the product or service being sold under the infringing
use.

Trademark law traditionally concerned itself with situations where an unauthorized party sold
goods that are directly competitive with or at least related to those sold by the trademark owner.
A trademark is diluted when the use of similar or identical trademarks in other non-competing
markets means that the trademark in and of itself will lose its capacity to signify a single source.
In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that
do not confuse consumers regarding who has made a product. Instead, dilution protection law
aims to protect sufficiently strong trademarks from losing their singular association in the public
mind with a particular product, perhaps imagined if the trademark were to be encountered
independently of any product (e.g., just the word Pepsi spoken, or on a billboard).

Trademark dilution is that facet of trademark infringement, wherein the owner of a well-known
trademark has the power to prevent others from using the mark on the ground that such use is
likely to lessen the reputation, image or uniqueness of the trademark. In other words, by
trademark dilution, we mean the loss of distinctiveness and identity of the brand. In most cases,
trademark dilution involves an unauthorized use of another's trademark on products which do not
compete with, and have little connection with, those of the trademark owner. For example, when
we speak of Benz we associate it with a luxury car but when somebody else uses a similar mark
Benz for an under garment then the mark will remind a consumer of two products and lead to
dilution of the renowned trademark Benz.

Dilution is a kind of trademark infringement which applies only to famous marks. Dilution of
famous or well-known marks is a wrong committed against the proprietor of the trademarks and
also against the consumers who would associate the mark with two entirely different products
when they think of a well-known trademark. Dilution theory regards trademark not only as a
commercial signature but also as a ‘silent salesman’ who directly comes in contact with the
consumers. A strict adherence to traditional territorial concept of trademarks, in present world
circumstances becomes an economic concern to those big business houses looking to venture and
conquer the entire globe.

EVOLUTION OF TRADEMARK DILUTION IN INDIA

Trademarks protect source identifications (marks of trade), which are used by manufacturers and
merchants to identify and distinguish their goods from those of competitors.10

There are paradoxes as to evolution of the doctrine of trademark dilution. It is generally believed
that the doctrine of "trademark dilution" was for the first time adopted by a German court in
1925 wherein the manufacturer of a mouthwash "Odol" was able to obtain cancellation of the
same mark being used in relation to a railroad and steel company. However, others believe that
the doctrine was espoused in England in 1898, in the case of Eastman Photographic Material
Co. v. John Griffiths Cycle Corp.11 in which the court did not allow the camera maker to
successfully enjoy the use of ‘Kodak’ bicycles, even though they did not directly complete with
Kodak cameras. This case, also known as the Kodak doctrine, marked the first significant shift
from traditional trademark protection.12

However, it was Frank Schechter who actually launched the concept of trademark dilution vide
his paper13 in 1927. It marked a turning point in the history of trademark law as it dilution was a
concept which was not motivated by an interest in protection of consumers. According to
Schechter, the true function of a trademark is ‘to identify a product as satisfactory and thereby to
stimulate further purchases by the consuming public.’ He rejected the theory that the exclusive
role of a trademark was to serve as a source identifier and argued that injury occurs to a
trademark owner whenever a trademark is used by another, even when used on non-competing
goods.14

10
Anna Wong, Big Business in Their Belfry: Congress to Dumb Down Dilution, 6 LOY. L. & TECH. ANN. 43, 45
(2006)
11
15 RPC 105 (High Ct. of Justice, Ch. 1898)
12
Brajendu Bhaskar, “Trademarks Dilution Doctrine: The Scenario Post TRDA, 2005” 1 NUJS L. Rev. 640 (2008)
13
Frank I. Schechter “Rational Basis of Trademark Protection” 40(6) Harv. L. Rev. 813 (1927) available at:
http://www.jstor.org/discover/10.2307/1330367?uid=3738256&uid=2129&uid=2&uid=70&uid=4&sid=211
00737655691 (Visited on 12th March, 2012)
14
Id. at 825.
He further explained that an injury to the trademark owner occurs when there is a gradual
whittling away or dispersion of the identity and hold upon the public mind of the mark or name
by its use upon non-competing goods. The initial statutory laws on dilution started with
Massachusetts in 1940s, but due to inconsistent, dissimilar and varied language of the statutory
provisions of the states, the courts could apply them only limitedly, irregularly and
inconsistently. Such a sorry state of affairs called for the uniformity in the law and greater
protection for trademark owners. To bring such uniformity and consistency in the protection of
trademarks from dilution, and to meet the international obligations under the TRIPS Agreement,
the US Congress amending Section 43 of Lanham Act 15 passed the Federal Trademark Dilution
Act, 1995 (FTDA), thereby bringing into picture a federal cause of action for trademark dilution.
FTDA defines the term ‘dilution’ as the lessening of the capacity of a famous mark to identify
and distinguish goods or services, regardless of the presence or absence of-

1) competition between the owner of the famous mark and other parties, or

2) likelihood of confusion, mistake or deception.

The Act applies when an unauthorized use of a trademark attempts to trade upon the goodwill
established by a famous mark, thereby diluting the mark’s distinctive quality. The protection
under the Act applies only to trademark owner and not the consumers. The FTDA after its
enactment was interpreted by numerous federal circuit courts. However, the interpretations by
the courts differed from one another leading to contradictions, inconsistencies and confusions.
The phrase ‘causes dilution of the distinctive quality of the mark’ led the courts to determine

15
8 S. 43(1)(c), Lanham Act, 1946: Remedies for dilution of famous marks
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court
deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if
such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to
obtain such other relief as is provided in this subsection.
In determining whether a mark is distinctive and famous, a court may consider factors such as, but not limited to-
(A) the degree of inherent or acquired distinctiveness of the mark;
(B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used;
(C) the duration and extent of advertising and publicity of the mark;
(D) the geographical extent of the trading area in which the mark is used;
(E) the channels of trade for the goods or services with which the mark is used;
(F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks' owner and the
person against whom the injunction is sought;
(G) the nature and extent of use of the same or similar marks by third parties; and
(H) whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the
principal register.
whether the Act required proving actual harm for a cause of action to arise. While the Fourth,
Fifth and Ninth Circuit courts gave a strict interpretation of the Act and required proving of the
actual harm before granting an injunction, the Second, Sixth and Seventh Circuit courts treated
the Act liberally, and held that the language of the provision did not require an actual harm for
relief. The attempt to settle the conflicting views of the circuit courts as to the standard of harm
required to obtain injunctive relief was made by the US Supreme Court in Moseley v. Victoria
Secret Catalogue Inc16. The Supreme Court rejected the lenient constructions adopted by the
Second, Sixth, and Seventh Circuits and embraced the stricter ones given by the Fourth and Fifth
Circuits, thereby making it clear that actual dilution is an essential element for a claim under
FTDA.

Later, in 2005, the US Congress challenged the Supreme Court’s ruling in Victoria Secret case
and advocated the proposal of new dilution legislation. Subsequently, the Trademark Dilution
Revision Act, 2006 (TDRA) was passed. The new legislation replaced both the FTDA definition
of trademark dilution and the provision on dilution remedies by a revamped 15 U.S.C. § 1125(c),
merging the new definition of trademark dilution with the new language on remedies. The
language states that the owner of a famous mark shall be entitled to an injunction against another
person who, at any time after the owner’s mark has become famous, commences use of a mark
or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment.
A plain reading of this provision makes it clear that likely dilution can occur irrespective of the
presence or absence of actual or likely confusion, of competition, or of actual economic injury.
As per the definition in TDRA, Dilution as a facet of trademark invasion can occur in two forms:
by blurring and by tarnishment.17

Dilution by blurring is said to have taken place when the ability of a well-known mark to identify
its product is marred due to its association in the minds of consumers as to the similarity between
two marks, one of them being a famous one. It results in partially affecting the descriptive link
between the mark of the prior user and its goods. In other words, the link between the mark and
the goods becomes blurred. It, thus, amounts to reduction in the commercial value of the
trademark. Dilution by tarnishment, on the other hand, is said to have occurred when the
4 37 U.S. 418 (2003).
16

Kathleen Goodberlet, “THE TRADEMARK DILUTION REVISION ACT OF 2006: Prospective Changes To
17

Dilution Definition, Claim Analyses, And Standard Of Harm” 6(2) J. High Tech L. 270 (2007) available at:
www.law.suffolk.edu/highlights/stuorgs/jhtl/.../Goodberlet.pdf (Visited on 12th March, 2012).
goodwill of a well-known mark is affected by negative connections arising out of similarity
between the aforesaid trademark and some other mark. Tarnishment of a well-known mark
occurs when it is diluted due to low quality or inferior variety of goods being associated with a
similar mark.

Registration of trademark

In the US, protectable and exclusive rights to a trademark are not conditioned on the registration
of that mark.18 Instead, an owner can automatically acquire trademark rights in a geographical
area of use simply by using or displaying a mark in connection with goods for sale or in
advertising of services.19 However, even in the US, nationwide trademark rights can be attained
by registering the mark in the U.S. Patent and Trademark Office (hereinafter USPTO).
Applications for registration of the trademark are subject to an examination by the USPTO and
registration can be refused if, among other reasons, the marks are functional, immoral,
scandalous, merely descriptive or deceptively mis-descriptive, or consist of a U.S. flag or coat of
arms.20 Anyone with a commercial interest in a mark can oppose federal registration. Unlike
copyright or patent rights, trademark rights do not expire; protection continues indefinitely as
long as the mark is not abandoned or becomes a generic term. Federal law presumes that a mark
is abandoned after three consecutive years of non-use.21

Violation of trademark and evolution of doctrine of dilution

The English common law is believed to be the source of trademark infringement and unfair
competition laws in the United States. 22 The current federal trademark legislation is situated in
the Lanham Act, 1946. Unlike the other intellectual property rights, which derive from the Patent
and Copyright clause of the US Constitution, 23 trademark law emanates from the Commerce

18
WILLIAM M. BORCHARD, A TRADEMARK IS NOT A COPYRIGHT OR A PATENT 2, 3 (Cowan,
Liebowitz & Latman, P.C. ed., 2005).
19
Id. In India, the law with respect to registration of a trademark is a little different. Though the registration of a
trademark in India is contingent on whether the person claiming to be the proprietor of the trademark used or
proposed to be used by him desires to get it registered, it is explicitly settled that there shall be no remedy available
for infringement of an unregistered trademark. See § 18 & § 27, Trade Marks Act, 1999.
20
BORCHARD, supra note 5, 4.
21
Id.
22
Moseley, supra note 3 (citing Hanover Star Milling Co. v. Metcalf, 240 U.S. 403, 413 (1916) for the proposition
that United States trademark law is grounded in the English common law and is codified in the federal trademark
statute, The Trade Mark Act, also known as the Lanham Act, 1946).
23
Anna Wong, supra note 4.
Clause and rests on a policy of protecting consumers from fraud and deceit. 24 Trademark
protection was designed to shield consumers from being misled by the use of infringing marks
and also to protect producers from unfair practices.25 Federal trademark law protects against the
likelihood of confusion, and also protects the owners of a highly distinctive or famous mark
against dilution even if there is no likelihood of confusion. Trademark infringement forms part of
the broader law of unfair competition. Infringement occurs when another uses the same or a
confusingly similar term, on the same or closely related goods or services. Unlike the traditional
trademark law which is rooted in the concern for protecting consumers, dilution statutes aim at
protecting and benefiting a seller’s investment in the mark.

Initially, the only available federal trademark remedy was trademark infringement, and the
likelihood of consumer confusion was the essential to a successful trademark infringement
claim.26 However, trademark protection was only designed to protect against trademark
infringement in competing markets; thus, trademark protection did not include a remedy for use
of a mark on non-competing goods. The first instance in modern times of a court providing
‘likelihood of confusion’ remedy in a non-competing product and service happened in England
in 1898, in the case of Eastman Photographic Material Co. v. John Griffiths Cycle Corp.27 In this
case, the court allowed the camera maker to successfully enjoin the use of ‘Kodak’ bicycles,
even though they did not directly complete with Kodak cameras. This case marked the first
significant shift from traditional trademark protection.

Trademark dilution refers to conduct that lessens the capacity of a famous mark to distinguish its
goods or services.28 This conduct alters the public perception of a trademarked product that over
time can devalue a famous mark and mislead the consuming public. Thus, dilution does not rely
on the traditional infringement tests of likelihood of confusion, deception, or mistake; rather

24
Id.
25
Moseley v. Victoria supra note 12 [citing Qualitex Co. v. Jacobson supra note 7]. See also, Monica Wallace,
Using the Past to Predict the Future: Refocusing the Analysis of a Federal Dilution Claim, 73 U. CIN. L. REV. 945,
951 (2005); Michael Adams, The Dilution Solution: The History and Evolution of Trademark Dilution, 12 DE-
PAUL-LCA J. ART & ENT. L. & POL’Y 143, 145 (2002).
26
Monica Wallace, supra note 16.
27
15 R.P.C. 105 (High Ct. of Justice, Ch. 1898), as cited in Monica Wallace, supra note 16.
28
See The Trade Mark Act, 1946, (also known as The Lanham Act) 15 U.S.C. § 1127 (2000). However, the Lanham
Act defines dilution without mentioning dilution by blurring or tarnishment.
dilution results when the unauthorized use of a famous mark reduces the public opinion that the
mark signifies something unique, singular, or particular.29

Nature and scope of Section 29(4) of the Act

First and foremost, for the application of Section 29(4), the trademark should be registered and
should have a reputation in India. Thus, a different terminology “a reputed trademark” is used
here instead of “well-known trademark” which is defined in the Act. The intent of the legislature
is not clear as to why there has been a substitution. However, courts have tried to bring a
distinction between the two in a few cases that have come before them, though not successfully.

As per the ingredients of Section 29(4), trademark infringement in the form of dilution is said to
have occurred if the person in the course of trade or business uses the mark which is:

1. identical with or similar to the registered trademark having reputation in India; and
2. such use is on different goods or services than those covered by the registration.

Such use of the mark would constitute infringement in the form of dilution if it is found that the
use of offending mark produces the following results:

1. without due cause takes unfair advantage of the distinctive character or reputation of
registered trademark,
2. without due cause is detrimental to the distinctive character or repute of the registered
trademark.30

THE CASE OF ITC LTD. V. PHILIP MORRIS PRODUCTS SA & ORS.

ITC Ltd. v. Philip Morris decided by Justice Ravindra Bhat is the first comprehensive discussion
of the legislative and policy components of Section 29(4) of the Act. The case is noted to be the
first instance where an Indian court took the decisive step of articulating the requisites that are to
be satisfied to constitute trademark dilution. The details of the case are described below:

Facts of the case

29
H.R. Rep. No. 109-23, 4 (2005).
30
http://www.rslr.in/rslr-blog/trademark-dilution-in-india (Last visisted 1st April 2017).
 In the present case, the two marks in question belonged to two companies with well-established
reputations in India. The plaintiff, ITC Ltd., argue that in the year 2008, Philip Morris had begun
using a hollow flaming roof design similar to the “WELCOMEGROUP” mark that ITC had been
using in respect of its hospitality business for many years. ITC Ltd. claimed that Philip Morris
has done away with its traditional roof design used for marketing Marlboro cigarettes in India
and has been using a mark similar to theirs. 31 ITC Ltd. contended that the persistent use of the
mark on the covers of the Marlboro cigarettes, had the effect of diluting the distinctiveness of
ITC’s trademark, and thereby sought relief on the basis of Section 29(4) of the Trademarks Act,
1999.

As the court rightly pointed out, the absence of presumption of infringement under Section 29 (4)
of the Act of 1999 unlike the preceding clauses of Section 29 clearly indicates the legislative
intent requiring a higher standard of proof in cases falling under Section 29 (4) of the Act of
1999. In this case, the Court sought to use trademark dilution doctrine as a means to enhance the
potency of Trademark protection; thereby, the court has made the requisite standards higher to
establish dilution and in doing so the court has noted that the degree of the protection provided is
proportionate to the distinctiveness of the mark. All the plaintiff seeks is the preservation of the
value his brand has achieved. It is pertinent to note that the provision of trademark dilution as
provided under Section 29 (4) of the Act of 1999 was a new concept in the 1999 Act and was not
present in the Act of 1958. Moreover, test evolved for infringement actions under traditional
trademark regime are inapplicable to cases falling under the purview of Section 29(4) of the Act
of 1999.

Section 29 (4) of the Act of 1999 provides for 3 elements that must be cumulatively satisfied: A.
The mark in question has to be identical or similar to the registered trademark. Under this
element, the plaintiff is required to show some linkage of mental association of his mark with the
offending one in the mind of the consumer. In the ITC case, the court pointed out that the ‘class
of consumers’ is also relevant to determine any possible link. Moreover, the courts in India have
time and again stressed immensely upon the requirement of ‘high’ or ‘nation-wide’ reputation
for a mark to be considered distinctive. The same was stressed upon sought to be established by
ITC in this case. The author is of the view that the court should consider the time period for

31
Sumatha Chandrashekaran, ‘ITC loses TM Dilution case against Philip Morris.
which the plaintiff used his mark before the defendant began using the similar mark. Moreover,
with respect to the reputation of the brand, or the mark operating in a geographical area, ‘nation-
wide’ reputation must not be a requisite as it places an additional and unnecessary requirement.
The use of the mark should be upon some unrelated or dissimilar products or services. This
element primarily serves to distinguish the traditional trademark remedies as codified under
Section 29 (1) to (3) of the Act of 1999 from Section 29 (4) of the Act which provides for the
doctrine of trademark dilution in the Indian Trademarks Act of 1999. This element goes along
with the need for the mark to be distinct. The use of the mark has to be without due cause and
the results have to detrimental to the reputation of the registered trademark. This element can be
said to be a combination of three factors. Mark has to have a reputation, Use of the mark has to
be without due cause. Such use has to be detrimental to the distinctiveness of the mark. As
already stated above, there is no settled rule for establishing the fame or the reputation of a mark.
In the ITC case, the Court has observed that the mark must have a “reputation in India” which, as
the author has pointed out already in the paper, is not a correct parameter as it places unnecessary
requirement. The Court in the ITC case made it clear that only the ‘likelihood of dilution’ has to
be proved even though the language of the provision in Section 29 (4) does not explicitly state
the same and in a way suggests that actual dilution has to be proven. The ITC case served to
address this ambiguity in detail and noted that proving actual dilution is not necessary.
Therefore, as it is clear from the above analysis, the ITC case is the first broad discussion of the
legislative and policy components of Section 29(4) of the Act of 1999. Additionally, this case
also marks to be the first instance where an Indian court took the decisive step of charting out the
basic essentials that are to be satisfied there under. The court, for the very first time, stated that
the test evolved for the traditional trademark infringement actions were not applicable to cases
falling under Section 29(4) of the Act of 1999, and consequently detached the likelihood of
confusion test from all actions falling under this clause. The ITC case served to address various
ambiguities and confusion with regards to the new provision of trademark dilution under the Act
of 1999, as has been made clear in above parts of the piece. The ITC case provides a firm ground
from where the trademark dilution jurisprudence can further develop in India. For these above
stated reasons, the ITC judgment can be said to be a very significant judgment in the Indian
Trademark Regime.

INDIAN CASE LAW - A CRITICAL APPRAISAL

 In view of the above analysis of the doctrine of dilution, it is interesting to have a critical
overview 'of purpose the Indian case law on the subject, for the of examining how careful the
Indian judiciary , in approaching this new concept against the backdrop of Indian economic and
industrial arrears that there judiciary is often too unconcerned and insensitive to undertake
further deliberations as to the need for or desirability of such expansion in there Indian context or
as to how far the society is benefited from or affected by such expansion. This situation has to be
-juxtaposed with the situation in the US, where the concept has gained its present shape and
where anti-dilution raw is existing for more than half a century' As already seen, the judiciary is
very cautious, in the US in identifying cases of trademark dilution and fixing responsibility. 32 It
is interesting to note that though a number of states in the US enacted anti-dilution laws starting
in 1947, until the enactment of the Federal trademark Dilution Act in 1996 dilution was not a
hotly debated issue by the bar and the .judiciary in the US. Even after the enactment of the
Federal trademark Dilution Act, 1996, the courts insisted for actual dirution and this paved way
for the Trademark Dilution Revision Act, 2006. However, still there are apprehensions about the
judiciary's reaction to the revised law. The precise reason for this apprehension is said to be the
distaste of the judges "for rights that appear unconnected to the protection of consumers. For a
correct appreciation of Indian case raw it is worthy to have a look at the attitude of the American
judiciary under FTDA and the new TDRA. The courts appear to be well aware of their
responsibility to be careful in not broadening the statutory provisions so as ,to prohibit all uses of
a distinctive mark that the owners prefers not be made', even while upholding dilution. 33 They
interpreted each and every requirement under the statute very strictly. For example, in Star
Markets, LTD., v. Texaco, Inc.34 the court held that a mark must be especially famous and
distinctive to merit protection under the Act because a violation of the Act triggers extensive
relief - preventing all others from using the mark. So the court held that the degree of
distinctiveness required under the Act is higher than that is needed to be proved in impingement
cases.35 In determining the fame of the mark, the court made detailed enquiry as to each of the
eight factors that are to be considered by the court as stipulated by the Act and concluded that the
plaintiff's mark is not famous as required under the Act. Similarly, the two major types of

32
Read Clarisa Long, .,Dilution, 106 Cctt L ilev 1029 (2006)
33
Deere & Co. v. llT.D products, Inc. 4l F.3d 39 (lgg4).
34
4 950 F.Supp. r030.
35
I.P. l.und Trading ApS and Kroin Inc., v. Kohler Co. and Robern, [nc.,
dilution, blurrirrg and tarnishment are also strictly interpreted by the US courts. Blurring, as has
already been dealt, typically involves "the whittling away of an established trademark's selling
power through its unauthorized use by others upon dissimilar products."36 "Tarnishment"
generally arises when the plaintiff's trademark is linked to products of shoddy quality or is
portrayed in an un wholesome or unsavory context likely to evoke unflattering thoughts about
the owner's product. In such situations, the trademark's reputation and commercial value might
be diminished because the public will associate the lack of quality' or lack of prestige in the
defendant’s, goods with the plaintiff is unrelated goods or because the defendant's use reduces
the trademark's reputation and standing in the eyes of consumers as a wholesome identifier of the
owner's products or services. In Mead Datacentral v. Toyota Sweet J, in his concurring opinion,
has laid down a six factor test to determine dilution by blurring. In Ringling Bros.-Barnum &
Bailey Combined Shows, Inc., v. Utah Division of travel Development the court felt that the
Mead-factor analysis is not appropriate for assessing a claim under the federal Act and, of the
factors, only mark similarity and, possibly, degree of "renown" of the senior mark would appear
to have trust worthy relevance under the federal Act. It rejected the argument of Ringling that
dilution by blurring occurs whenever a junior mark is either identical to or sufficiently similar to
the famous mark that persons viewing the two instinctively will make a “mental association,”
between the two. The court felt that such an interpretation of the concept 'category would have
the effect of creating property rights in gross in the narrow of marks protected by dilution
doctrine, making then comparable - without their time-limits - to those protected by patent and
copyright law.37

Another Indian case in which remedy was granted under trademark dilution is Aktiebolaget
volvo v. Volvo steels Limited.38 In this case sales of plaintiffs' products in India were absolutely
insignificant and the activities and products of the plaintiffs and the defendants were different
and distinct. The court, after having a discussion on the law of passing off and some cases
running into pages came to an abrupt conclusion that it is a case for protection against dilution of
the plaintiffs' brand name .Volvo'. As in all other cases, where the court has upheld the presence
of trademark dilution, the court in this case also did not discuss or analyses the scope or meaning
or extent of the concept of dilution. It is interesting to note that in this case, despite the fact that
36
Mead Datacentral v. Toyota 875 F.2d 1026.
37
pitt L Rev 789,802(1997).
38
1998 PTC (18) 47 (Bom) (DB).
there were virtually no sales of plaintiffs' products in India -- which means that the mark was not
competent enough to meal even the well-known mark requirements - the court found dilution of
the plaintiffs' trademark. In other words, the court never looked into the nature of the
distinctiveness of the mark which is of paramount importance in cases of dilution. The court
thought it enough for the plaintiff to have reputation and goodwill throughout the world in a
prima-facie presence in India to meet the dilution requirement. Instead of searching for the
reputation of the plaintiffs' mark, the court questioned the reasons for the defendants, adopting
the word 'Volvo'. It is not clear how this becomes relevant when the plaintiff s mark itself is not
famous enough among the general consuming public in India so as to indicate a connection or
association in the minds of the public between the plaintiff and the mark.

NATIONAL AND INTERNATIONAL LAW PERSPECTIVE

Indian Courts had recognized trademark dilution, as early as the early 1990s, but without
providing any analysis of the doctrine in their judgments. In Daimler Benz Aktiegesellschaft vs
Hybo Hindustan 39 one of the issues before the single judge bench was whether the defendant
could use the mark ‘BENZ’ on underwear. Interestingly, the Hon’ble Judge applied the
doctrine of dilution without using the word ‘dilution’ even once in the entire judgment, which
consisted of less than 1,700 words. However, the Hon’ble Judge used the word ‘dilute’ once,
towards the end of the judgment while stating ‘In my view, the defendant cannot dilute, that by
user of the name “Benz” with respect to a product like under-wears.’ The judgment focused
only on the great injustice that would be done if the defendant were allowed to continue to use
the mark and absolutely no analysis of dilution or any related legal princip The Court, while
referring to section 29 (4) of the Trade Marks Act, 1999 (the Act), recognized the essentials for
dilution as under:

(1) The impugned mark must be identical or similar to the injured mark;

(2) The one claiming injury due to dilution must prove that her/his mark has a reputation in
India;

(3) The use of the impugned mark is without due cause;

39
AIR 1994 Delhi 239.
(4) The use of the impugned mark (amounts to) taking unfair advantage of or is detrimental to,
the distinctive character or repute of the registered trade mark.

Here, the Indian Courts have taken a more lenient view than U.S. Courts. The judgment merely
states that the mark must have ‘a reputation in India’, whereas according to US law the mark
must necessarily be famous. The reputation of the mark is of great significance. The user of a
mark that is even averagely well known cannot claim dilution of that mark. Distinction needs to
be made between a ‘famous’ mark and a mark with ‘reputation’. The reasoning behind this is
simple, dilution rights being indeterminate in nature, the standard of fame required to claim them
must be high as well. A mark which is not highly distinct cannot be diluted. It is also unclear
whether a mark which has reputation in a particular sector of the public or only in a particular
area within India would also be entitled to protection from dilution, within that sector or area. In
U.S.A. there is a specific legislation dealing with the subject known as the Trademark Dilution
Revision Act (TDRA) of 2006. This Act has stated that while determining whether the impugned
mark satisfies the ‘required degrees of recognition’ it shall take into account the following
factors:

(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether
advertised or publicized by the owner or third parties.

(ii) The amount, volume, and geographic extent of sales of goods or services offered under the
mark.

(iii) The extent of actual recognition of the mark.

(iv) Whether the mark was registered under certain previous Acts or in certain registers

This TDRA also states that it is not necessary that one must prove actual dilution in order to
make a claim of dilution. The Act came after the U.S. Supreme Court and a district court refused
to grant an injunction in the ‘Victoria’s Secret Case’ (V Secret Catalogue Inc v. Moseley)40 on the

40
 537 U.S. 418 (2003).
grounds of lack of evidence of blurring or tarnishment. Mere likelihood of dilution is adequate to
prevent another from using the impugned mark.
The Delhi High Court while stating essentials of a claim of dilution simply stated that the mark
must be detrimental to the distinctive character or reputation of the registered trade mark. The
factor of burden of proof was not dwelled upon. Furthermore, Section 24 of the Act states that
the mark must take unfair advantage or be detrimental to the registered mark. The scope of this
provision is very wide. Section 2(3) of the TDRA lays down exceptions to trademark dilution as
under:

“The following shall not be actionable as dilution by blurring or dilution by tarnishment under
this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such 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 use in connection with–
(i) advertising or promotion that permits consumers to compare goods or services; or
(ii) (ii) identifying and parodying, criticizing, or commenting upon the famous mark
owner r the goods or services of the famous mark owner.
(B) All forms of news reporting and news commentary.
(C) Any non-commercial use of a mark.”
Such an exception cannot be drawn from Section 24 of the Act and the word ‘detrimental’ can
mean to include even parodies, criticism or comments. The exception of parodies was used in
Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC,41 where the defendant’s manufactures
apparels for dogs under the mark ‘Chewy Vuitton’ which was parodying the famous brand of
‘Louis Vuitton’ apparels. It was held in that case that ‘Chewy Vuitton’ did not dilute the
trademark ‘Louis Vuitton’ because it was merely a parody of ‘Louis Vuitton’. le was made.

CONCLUSION

41
507 F.3d 252.
To conclude, as it is clear, trademark dilution doctrine is an attempt at providing and ensuring
greater protection to trademarks that have become famous. The remedy of trademark dilution is
designed for situations where the plaintiff’s trademark is famous and the defendant’s trademark
for dissimilar goods is like that of the plaintiff. It is a departure from traditional trademark law
as, unlike traditional trademark law, the primary consideration behind the concept of trademark
dilution is to protect the hard work and financial investment of the owner in order to build the
reputation and distinctiveness of the trademark. In India, the trademark dilution provisions were
first brought in by the enactment of the Act of 1999. The paper describes that before the
Trademarks Act of 1999 was enacted, the Indian courts applied remedy of passing off to reach
findings of dilution. Before the Act of 1999 was enacted, Indian High Courts often found itself
confused between the concepts of ‘dilution’ and ‘passing off’. Even after the enactment of the
Act of 1999 the court rendered decisions as per flawed understanding of the trademark dilution
concept. It is in this backdrop that the ITC v. Philip Morris case can be considered to be of
extreme importance with regards to the Indian trademark law regime as it was in this case that
the court sought to address various ambiguities and confusion pertaining to this particular
provision. The ITC Case can be stated to be of huge significance because this case, inter alia,
finally put to rest the debate over the applicability of the ‘likelihood of confusion test’ by
rejecting it as not being an essential for dilution to be established. The author believes that ITC
judgment provides a firm ground from where the trademark dilution jurisprudence can further be
built upon.

BIBLIOGRAPHY
1. Trademark Dilution: Indian Approach – T.G. Aghita.
2. Trademark Dilution Doctrine: The Scenario Post TDRA - Brajendu Bhaskar.
3. Trademark Dilution in India – Palak Jain.
4. Trademark Dilution: Yea or Nay – Raja Selvan.
5. Trademark Dilution and Indian Courts – The Law Teacher.
6. Dilution of Trademark: The Concept understood – Tarun Jain.
7. Dilution of Trademarks: An Introduction – Sankalp Jain.
8. Doctrine of Dilution of Trademark: A comparative study on the Indian and American
Jurisprudence - Vishnu Konoorayar K Lalnunthangi.