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 The Polymorphism of Trademark Dilution in India

Dev Gangjee*

I. INTRODUCTION .................................................................................. 611

II. DILUTION UNDER PASSING OFF ......................................................... 612
A . Passing Off in India ................................................................... 612
B. Evolution: DissimilarGoods and Trans-BorderReputation...... 614
C. Dilution as Injury or Damage..................................................... 616
III. DILUTION UNDER THE TRADE MARKS ACT OF 1999 ............................ 621
A. Dilution Under the Act: The Bare Bones ..................................... 622
B. Setting Appropriate Thresholds:DissimilarGoods
and Fam e ................................................................................... 624
C. The Requirements for Blurring................................................... 627
IV . CONCLU SION ..................................................................................... 630

I. INTRODUCTION

This Article begins with a puzzle. Statutory provisions relating to

trademark dilution were introduced for the first time into Indian law with
the Trade Marks Act of 1999,1 which came into effect in 2003.2 Yet since their
inception, these provisions have remained on the shelf, largely untouched for
half a decade. By contrast, dilution features prominently in litigation based
upon the common law tort of passing off, to prevent the unauthorized use of a
trademark in a wide range of circumstances. In Part II, this Article offers an
explanation for why this polymorphism for dilution exists in India. It goes on
to consider whether the statutory framework and the common law approach
to dilution may diverge in characterizing this species of harm to a trademark.
The Indian legislative provisions on dilution mirror equivalent provisions in
the United Kingdom's Trade Marks Act of 1994, which in turn incorporate
developments under the harmonized European trademarks regime. 3 Indian

* Lecturer, London School of Economics and Research Associate, Oxford Intellectual Property
Research Centre. I am grateful to SARAI, New Delhi for assistance with this research.
1 The Trademarks Act, No. 47 of 1999 [hereinafter The Act of 1999], reprinted in ASHUANI
BANSAL, LAW OF TRADEMARKS IN INDIA 460 (2001).
2 Notification No. SO 1048(E), GAZETTE OF INDIA, Sept. 15, 2003.
3 For an overview of dilution in the European Union, see Ilanah Simon Fhima, The Fame
Standard in the United States and European Union Compared, 17 TRANSNAT'L L. & CONTEMP.
PROBS. 631 (2008).
 TRANSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

courts also previously have demonstrated an affinity for principles of U.S.

trademark law. Therefore, Part III concludes by selectively considering the
extent to which EU and U.S. experiences with dilution meaningfully could
inform the future development of the Indian statutory regime.

II. DILUTION UNDER PASSING OFF

In light of its common law heritage, India protects valuable commercial

designations through a combination of the registered trademark system 4 and
the tort of passing off.5 These two systems are complementary, and in
practice both actions are usually twinned, with courts considering arguments
under each type of action in the same dispute. This doctrinal juxtaposition in
the reported trademark decisions reveals that, while dilution has flourished
within the context of passing off actions, it appears to have floundered as a
statutory form of infringement. This Part attempts to explain the imbalance
as follows: (1) it introduces the three key ingredients of passing off (goodwill,
misrepresentation, and damage); (2) it maps the tort's evolution by
emphasizing its engagement with infringing signs on dissimilar goods as well
as the notion of a trans-border reputation; and (3) it identifies dilution as a
species of damage or injury in such cases. Therefore, dilution is located
within one limb of passing off, always following a finding of confusion or
deception. It is not an independent basis for a cause of action in tort, despite
some loose usage to the contrary. This qualified version of dilution forms the
basis for the comparison with the new statutory regime, discussed in Part III.

A. PassingOff in India
The goodwill associated with both registered and unregistered
trademarks is protected by way of a passing off action in India. On several
occasions the Indian Supreme Court explicitly has acknowledged the common
law origins of this tort. One such recent affirmation states that "[t]he doctrine
of passing off is a common law remedy whereby a person is prevented from
trying to wrongfully utilize the reputation and goodwill of another by trying
to deceive the public through passing off his goods." 6 Drawing upon Lord

4 For details, see Indian Trademarks Registry, Comptroller General of Patent Designs and
Trademarks: Frequently Asked Questions, http://ipindia.nic.inltmr-new[FREQUENTLYASKED
_QUESTIONS.htm (last visited Mar. 28, 2008).
5 At this stage an introductory aside on Indian trademark law resources is useful. India's
preeminent trademark treatise is P. NARAYANAN, LAW OF TRADE MARKS AND PASSING OFF (6th
ed. 2004). For a condensed, yet crisp and analytically astute overview, see V.J. TARAPOREVALA,
LAW OF INTELLECTUAL PROPERTY 253-420 (2005). The two leading electronic databases on Indian
case laws are Manupatra, http://www.manupatra.comasp/home.asp (last visited Apr. 14, 2008),
and Indlaw, http://www.indlaw.com/ (last visited Apr. 14, 2008). Several courts also have begun
to publish their decisions electronically. See Indian Courts, http://www.indiancourts.nic.in (last
visited Mar. 31, 2008).
6 Ramdev Food Prod. Pvt., Ltd. v. Arvindbhai Rambhai Patel & Ors., A.I.R. 2006 S.C. 3304, 50.
Fall 2008] TRADEMARK DILUTION IN INDIA

Diplock's formulation in Warnink v. Townend,7 the test for passing off is set
out by the Supreme Court in Cadila Healthcareas follows:
The passing off action depends upon the principle that nobody
has a right to represent his goods as the goods of some body
[else] .... [T]he modern tort of passing off has five elements
i.e. (1) a misrepresentation (2) made by a trader in the course
of trade, (3) to prospective customers of his or ultimate
consumers of goods or services supplied by him, (4) which is
calculated to injure the business or goodwill of another trader
(in the sense that this is a reasonably foreseeable
consequence) and (5) which causes actual damage to a
business or goodwill of the trader by whom the action is
brought or (in a quia timet action) will probably do so. 8
Cadila Healthcare subsequently has emerged as the reference point for
describing the requirements for a passing off action. 9 In addition to the five
element test, the Supreme Court also has referred to the more familiar
"classical trinity" alternative test of goodwill, misrepresentation, and
damage, articulated in Satyam Infoway. 1° Despite the existence of a statutory
regime for registered trademarks, passing off has remained an independent
cause of action:
It must be remembered that an infringement action is
available where there is violation of a specific property right
acquired under and recognised by the statute. In a passing off
action, however, the plaintiffs right is independent of such a
statutory right to a trade mark and is against the conduct of
the defendant which leads to or is intended or calculated to
lead to deception.1 1
Consequently, passing off has coexisted alongside the registration
systems introduced in the Trade Marks Act (No. 5) of 1940, the Trade and
Merchandise Marks Act (No. 43) of 1958, and under the present Act as well,
where it specifically is preserved in Section 27(2). Over several decades,
Indian courts have developed a considerable body of case law in this area,
and historically, the three principal limbs of the tort have been interrelated.
Passing off seeks to prevent only those marketplace misrepresentations that

7 Erven Warnink B.V. v. J Townend & Sons (Hull), Ltd., (1979) 2 All E.R. 927, 932-33 (H.L.)
(U.K.).
8 Cadila Healthcare, Ltd. v. Cadila Pharm., Ltd., A.I.R. 2001 S.C. 1952, 10 (Kirpal, J.).
9 Heinz Italia & Anor v. Dabur India, Ltd., P.T.C. 2007 S.C. 1, 1 10; Bhavnesh Mohanlal Amin &
Anr. v. Nirma Chems. Works, Ltd. & Anr., P.T.C. 2005 S.C. 497, 7 11.
10 Satyam Infoway, Ltd. v. Sifynet Solutions Pvt., Ltd., A.I.R. 2004 S.C. 3540, TT 13-15 (Ruma
Pal, J.).
11R.K. Patel & Co. & Ors. v. Shri Rajdhar Kalu Patil & Ors., 2007 Bom. L.R. 739, 7 22 (Kakade,
J.).
 TRANSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

are injurious to a trader's goodwill. Thus, not all misrepresentations come

within its ambit, and not every occasion where there is damage to goodwill
affords a remedy. These cumulative criteria traditionally have served to limit
the operation of passing off, although doctrinal innovations have expanded its
scope more recently.

B. Evolution: DissimilarGoods and Trans-BorderReputation

Damage or harm is an essential ingredient for passing off, and this
traditionally has been identified as a loss of sales resulting from a successful
misrepresentation. In the paradigm case, customers would think they were
buying Producer A's products whereas they would actually be getting
Producer B's, leading to a loss of sales for Producer A. This loss is difficult to
establish in two situations where a misrepresentation may nevertheless
exist. The first of these is where the plaintiff and defendant operate in
different product markets, and the second is where they operate in different
geographical markets. In the first situation, the requirement that the
disputants share a "common field of activity"12 has eroded across common law
jurisdictions, and passing off can be established successfully even in
situations where non-competing goods or services are at issue. Thus the
proprietor of the trademark CALTEX on petroleum products could proceed
13
successfully against a defendant misleadingly using CALTEX on watches.
The real question in each case is whether, as a result of
misrepresentation, there is a real likelihood of confusion of the public and
consequent damage to the plaintiff.14 The focus shifts from comparing the
commercial activities of parties under a formalistic rubric to estimating the
state of mind of the relevant public in deciding whether or not it will be
confused. 15 However, it is the issue of disparate geographical markets that
has proved more challenging. If a party has no official commercial
establishment in India, how does it satisfy the goodwill requirement and
what is the relevant injury or harm? Indian courts have responded with the
doctrine of trans-border reputation, thus paving the way for an increased
acceptance of dilutionary harm.
While canvassing the diversity of responses across the common law world
on this topic, Christopher Wadlow observes that the "problem of the foreign
claimant whose goods or business may be known in a particular jurisdiction

12 The much maligned authority for this requirement was McCulloch v. May, (1948) 65 R.P.C. 58
(U.K.).
13 Sunder Parmanand Lalwani v. Caltex (India), Ltd., 1969 A.I.R. 24 (Bom.).

14 Honda Motors Co. v. Charanjit Singh & Ors., 2003 P.T.C. 26 (Del.) 1 (HONDA on pressure
cookers); Daimler Benz v. Hybo Hindustan, 1994 A.I.R. 239 (Del.) (BENZ on underwear).
15Apart from dilution, the injury in such cases can also be characterized as a loss of control over
the reputation for quality for one's products. A convenient summary of the Indian authorities
which reject the common field of activity requirement is found in Larsen & Toubro, Ltd. v.
Lachmi Narain Trades, 2008 P.T.C. 36 (Del.) 223.
Fall 2008] TRADEMARK DILUTION IN INDIA

although he has no business there is one of the most intractable in the law of
passing off."16 The problem sets up along the following lines: Passing off
protects the invasion of a property interest by misrepresentation. As opposed
to the mark itself, it is the "property in the business or goodwill likely to be
injured by the misrepresentation"17 that is protected. In turn, goodwill is the
umbrella term for "the attractive force which brings in custom."1s
It is well-established that goodwill is territorial in nature. Therefore, the
test for whether a foreign claimant may proceed in England in a passing off
action necessitates an investigation of whether his business has goodwill in
England. The leading English authority on this issue is the Budweiser
decision of the Court of Appeal. 19 Despite the "spillover" effect of advertising
from the United States, the American beer was restricted to military and
diplomatic establishments and was not available to the British public at the
date of entry of defendants' beer into the British market. The necessary
goodwill, as opposed to mere reputation, therefore did not exist since the
plaintiff had no British customers at the relevant time. Thus, the present
position is that the claimant must have goodwill in England. This is a
narrower criterion than mere reputation but a broader proposition than the
"place of business in England" requirement, since it potentially recognizes the
presence of customers despite the absence of a place of business. It generally
is acknowledged that Indian courts are willing to go further than this
position where the claimant has established a trans-border or "spillover"
reputation that exists in India.
On several occasions, Indian courts have declined to follow Budweiser
and have preferred what is described as a "middle course" between the more
rigid English position and the more liberal approach in other common law
jurisdictions. As the Delhi High Court has observed:
We feel that we must follow a middle course. We must readily
support decisions which seek to promote commercial morality
and discourage unethical trade practices [resulting in] a
situation where Indian purchasers . . . start presuming
franchise like connection[s] between foreign products and
Indian products, which either cause confusion or which
appear to be deceptively similar. Indian courts have
consistently and rigidly disapproved the attempts by Indian
trade and industry to bask in the warmth of, and make illicit
profit from, a reputation not earned legitimately by their own

16 CHRISTOPHER WADLOW, THE LAW OF PASSING OFF: UNFAIR COMPETITION BY MIS-

REPRESENTATION 154 (3d ed. 2004).
17A.G. Spalding & Bros. v. A.W. Gamage, Ltd., (1915) 32 R.P.C. 273, 284 (H.L.) (U.K.) (Parker,
L.J.).
18 Comm'r of Inland Revenue v. Muller & Co. (Margarine), Ltd., [1901] A.C. 217, 224 (H.L.)
(U.K.) (Macnaghten, L.).
19Anheuser-Busch v. Budejovicky Budvar NP, [1984] F.S.R. 413 (CA) (U.K.).
 TRANSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

effort but built by others elsewhere, by the shortcut of

trickery and passing off, and thus protected not only private
rights but commercial morality . . . . This approach is
essential to protect the interests of Indian users.... But this
approach must be confined to the same or similar products or
at the most closely related products and services. This
approach cannot be extended to totally different kinds of
products. In this latter area in order to protect national
economic interest English rigidity appears to be essential. 20
Accordingly, a trading or business presence in India is not required in
order to satisfy the goodwill requirement under the first limb of passing off.
The concept of a trans-border reputation has emerged to fill this gap. While
some courts have acknowledged the need for evidence of either customers in
India or actual sales, others have found that an international reputation
which extends to India per se is sufficient. Several decisions refer to the
international reach of modern media and advertising channels, while this
reputational presence is all the more likely to be sufficient where (a) there is
evidence of bad faith in the defendant's choice of the disputed trademark
(e.g., failed negotiations between the parties prior to the defendant adopting
the mark) and (b) the public is likely to be misled into thinking there is a
commercial connection between the parties. 21 Mere reputation appears to
have supplanted the traditional concept of goodwill. Both of these
developments-the demise of the "common field of activity" requirement and
the adequacy of a trans-border reputation per se-have accentuated the need
for identifying an alternative species of harm to the loss of sales. The
response to this need is dilution.

C. Dilution as Injury or Damage

Dilution as a category of injury or damage was most prominently
identified in English "extended passing off' decisions in a series of drinks
cases, such as Elderflower Champagne. In an action brought by French
champagne producers who opposed the use of the designation on an
effervescent non-alcoholic "Elderflower Champagne" drink, the Court of
Appeal initially identified the existence of the most conventional category of

20 Rob Mathys v. Synthes, 1997 P.T.C. 17 (Del. D.B.) 669, 180.

21 These principles can be distilled from the following (and not entirely consistent) leading
decisions: Blue Cross & Blue Shield Ass'n v. Blue Shield Health Clinic, 1990 I.P.L.R. 92 (Del.);
Apple Computer v. Apple Leasing, 1993 I.P.L.R. 63 (Del.); Calvin Klein, Inc. v. Int'l Apparel
Syndicate, 1995 I.P.L.R. 83 (Cal.); Haw Par Bros. Int'l, Ltd. v. Tiger Balm Co. (P) & Ors., 1995
A.I.P.C. 8 (Mad. D.B.); WHIRLPOOL Trade Mark, [1997] F.S.R. 905 (Del. D.B. and S.C.) (India);
Time Warner Entm't Co., L.P. v. A.K Das, 1997 P.T.C. 17 (Del.) 453; Aktiebolaget Volvo v. Volvo
Steel, Ltd., 1998 P.T.C. 18 (Born. D.B.) 47; Caterpillar,Inc. v. Jorange, 1998 P.T.C. 18 (Mad.
D.B.) 31.
Fall 2008] TRADEMARK DILUTION IN INDIA

harm as the result of misrepresentation, i.e., a likelihood of lost sales. 22

However, Lord Justice Peter Gibson went on to say:
[In] my judgment the real injury to the champagne houses'
goodwill comes under a different head . . . if the defendants
continued to market their product, there would take place a
blurring or erosion of the uniqueness that now attends the
word "champagne," so that the exclusive reputation of the
champagne houses would be debased .... [If] the defendants
are allowed to continue to call their product Elderflower
Champagne, the effect would be to demolish the
distinctiveness of the word champagne, and that would
23
inevitably damage the goodwill of the champagne houses.
References to "dilution" as a category of harm crop up in other extended
passing off judgments as well. In Advocaat, the trial court acknowledged the
"depreciation of reputation" as a species of harm. 24 Since the dilution of
whiskey is considered sacrilegious by purists, it seems fitting that an
injunction was granted where the Scotch Whiskey Association opposed the
use of "white whiskey" on the basis of dilution-type harm. 25 In a decision
concerning Swiss Chocolate, Justice Laddie summed it up in the following
words: "[i]t appears, therefore, that in this extended form of action it is
mainly a reduction of the distinctiveness . . . which is relied on as relevant
damage." 26 Thus, the erosion of uniqueness or exclusivity by a defendant's
use of an identical or similar sign and its consequent detriment to a mark's
selling power or goodwill is a recognized, if somewhat controversial, 27 species
of damage under passing off.
At this stage, it is important to emphasize that passing off remains
anchored to a misrepresentation requirement. At the "heart of passing off lies
deception or its likelihood, deception of the ultimate consumer in
particular." 28 Unlike its statutory counterparts, in the passing off context
dilution is not an independent cause of action; it is merely one type of harm,

22Taittinger v. Allbev, [1993] F.S.R. 641, 668-69 (Ch.) (U.K.) (Gibson, L.J.).
23 Id. at 669.
24Erven Warnink B.V. v. J. Townend & Sons (Hull), Ltd., [1978] F.S.R. 1, 23 (Ch.) (U.K.).
25 The Scotch Whisky Ass'n v. Glen Kella Distillers, Ltd., [1997] E.T.M.R. 470, 493 (Ch.) (U.K.)
("The real risk of damage to the goodwill of the plaintiffs from the defendant's being allowed to
continue calling its product 'whiskey' when it is not is the commencement of an insidious process
of erosion of the integrity of the reputation or 'aura' of true whisky.").
26 Chocosuisse Union des Fabricants Suisse de Chocolat & Ors. v. Cadbury, Ltd., [1998] R.P.C.
117, 127 (Ch.) (U.K.).
27 It was received critically by the majority in Harrods, Ltd. v. Harrodian Sch., Ltd., [1996]
R.P.C. 697, 716 (U.K.) (Millet, L.J.) ("I have an intellectual difficulty in accepting that the law
insists upon both the presence of confusion and damage and yet recognises as sufficient a head of
damage which does not depend on confusion.").
28 Hodgkinson & Corby, Ltd. v. Wards Mobility Servs., Ltd., [1995] F.S.R. 169, 175 (Ch.) (U.K.).
 TRANSNATIONAL LAW & CONTEMPORARYPROBLEMS [Vol. 17:611

which flows from a misrepresentation as to the commercial origin or quality

of the goods or services. While Indian courts predominantly have adopted this
understanding of contingent harm, there are occasional and incompletely
conceptualized references to dilution as an independent cause of action.
An example of this ambivalence is found in the Caterpillardecision of the
Delhi High Court. 29 The well known CATERPILLAR and CAT marks have been
used in respect to goods and services for construction, mining, roads, building
agricultural industries, footwear, and garments since 1904. These marks
were unregistered in India at the time of the dispute and Caterpillar, Inc.
evidently lacked formally constituted commercial operations in the country.
The defendant was manufacturing various articles of footwear while using
marks identical to Caterpillar's. The Court accepted the argument that this
was a passing off situation involving a "spillover" reputation in India 3o and
that there was a likelihood of consumer confusion on the basis of identical
goods being sold. 31 The judge then appeared to characterize dilution as the
harm resulting from passing off:
There is no doubt that mark of the plaintiff has become a
synonym for quality of a high degree and the adoption of its
name along with distinctive and unique characteristics of
style by defendants projects propensity to trade or cash in
upon the goodwill and reputation of the plaintiffs trademark.
It is nothing but the piracy of a trade name. Plaintiff has a
right to protect its mark, reputation, goodwill and risk of
dilution involved in the act of passing off from the
32
unscrupulous designs of the defendants.
Conversely, elsewhere in the same ruling, the judge observes that
"dilution or weakening of the trademark need not, therefore, be accompanied
with an element of confusion," 33 and in so far as the "doctrine of dilution is
concerned it is an independent and distinct doctrine."' 34 This is true as far as
the statutory provisions go, but is certainly not the case for passing off, which
rests on a misrepresentation and likelihood of confusion. This limited scope
for dilution occasionally seems to have been ignored in a few other passing off
decisions as well. In Time Warner, the Court observed that "in cases of trans-
border reputation the question of likelihood of deception loses its significance
in [a] passing off action, and what becomes more important, is [use by the

29 Caterpillar, Inc. v. Mehtab Ahmed & Ors., 2002 D.L.T. 99 (Del. H.C.) 678 (Kapoor, J.).

3 Id. 4.
3'Id. 22 ('The only object of the defendants is to create deception amongst the trade and public
by clearly misrepresenting that their goods are either licensed by the plaintiff or they are
passing off these goods as the goods of the plaintiff.").
32 Id. 23 (emphasis added).
3 Id. 15.
u Caterpillar,2002 D.L.T. 16.
Fall 2008] TRADEMARK DILUTION IN INDIA

defendant which] would lead to erosion of the reputation of the plaintiff,

35
erosion of what is distinctive."
However, a number of recent decisions have confirmed confusion as a
fundamental prerequisite for passing off, acknowledging that dilution of
uniqueness or exclusivity is a species of harm flowing from consumer
confusion. In a case concerning the use of HONDA on pressure cookers, thereby
engaging both dissimilar goods and trans-border reputation criteria, the
court observed:
With the changed concept of the passing off action, it is now
not material for a passing off action that the plaintiff and the
defendant should trade in the same field. I find that some
businesses are truly international in character and the
reputation and goodwill attached to them cannot in fact help
being international also.... The plaintiffs trademark HONDA,
which is of global repute, is used by the defendants for a
product like the pressure cooker, to acquire the benefit of its
goodwill and reputation so as to create deception for the public
who are likely to buy defendant's product believing the same
as coming from the house of HONDA or associated with the
plaintiff in some manner. By doing so, it would dilute the
goodwill and reputation of the plaintiff and the wrong
committed by the defendants would certainly be an actionable
wrong and the plaintiff is within its rights to ask for restraint
against the defendants from using its mark HONDA for their
products. 36
37
Other Indian judges have echoed this requirement as well.
Consequently, at least under the general tort law of India and passing off in
particular, dilution is not an independent cause of action. Rather, it is merely

35 Time Warner Entm't Co. v. A.K. Das, 1997 P.T.C. 17 (Del.) 453, 1 28.

36Honda Motors Co. v. Charanjit Singh, 2003 P.T.C. 26 (Del.) 1, 44 (Sharda Aggarwal, J.)
(emphasis added).
37 United Distillers & Vintners v. Khoday Breweries, 2005 P.T.C. 31 (Del.) 369, 15 (where the
use of "Johnny Walker" on whiskey was in dispute, it was held that the plaintiffs would "suffer
adversely if defendant is allowed to continue using the deceptively and confusingly similar
trademark resulting into irreparable loss to the plaintiffs and dilution and erosion of plaintiffs'
reputation and goodwill"); Colgate Palmolive v. Anchor Health & Beauty, 2003 P.T.C. 27 (Del.)
478, 54 (J.D. Kapoor, J.) (finding that a substantial reproduction of a trade dress was "liable to
cause not only confusion but also dilution of distinctiveness of colour combination"); Frito-Lay
India v. Guru Prasad Enter., 2004 P.T.C. 29 (Del.) 537, 8 (Mukul Mudgal, J.) (finding that the
imitation of product packaging and color schemes would cause "confusion and deception,
resulting in passing off . . . and further from diluting the brands, labels, packaging of the
plaintiffs").
 TRANSNA TIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

a genus of damage within passing off and reliant upon a determination of

confusion or deception.38
Two key insights flow from the preceding analysis. The first illuminates
the apparent puzzle of why passing off is the preferred avenue, as opposed to
the extant statutory dilution regime. One possible answer is that this is still
a time of transition and litigation still proceeds under the framework of the
Act of 1958.39 Yet several of the more recent decisions refer explicitly to other
provisions of the new Act; so, this is a partial explanation at best. In order to
develop a more compelling account, one must accommodate the pragmatic
realities of intellectual property litigation in India. The vast majority of cases
are determined at the stage of application for interlocutory relief. 40 Once an
interim injunction is obtained, it is the exceptional case which proceeds to a
full trial and judgment on the merits. In a related development, the Indian
higher judiciary has endorsed the judicial trend that dilution as a species of
harm triggers injunctive relief.41 At the risk of oversimplifying, the matter
may be summed up as follows:
1. Indian courts and the intellectual property bar have considerable
experience with the tort of passing off, within the broader context of trade
mark infringement disputes.
2. Given the relatively settled jurisprudence in this area, passing off is
the weapon of choice where an interlocutory injunction is sought, especially
in trans-border reputation and/or dissimilar goods situations.
3. Dilution is a recognized species of harm under passing off, where the
misrepresentation in question is confusing or deceptive.
4. Therefore the rhetoric of dilution flourishes in passing off decisions,
but not as an independent cause of action.

38For recent confirmation that common law passing off remains anchored to misrepresentation
and has not embraced broader notions of unfair competition prevention, see L'Oreal S.A. v.
Bellure N.V., [2007] EWCA (Civ) 968.
39 On September 15, 2003, when the new Act came into force, as per § 159(4), all pending
proceedings continued to apply the substantive law under the Act of 1958.
40 See NARAYANAN, supra note 5, at 633-35, for a synoptic overview of interlocutory relief.
41 Ramdev Food Prods. Pvt., Ltd. v. Arvindbhai Rambhai Patel & Ors., A.I.R. 2006 S.C. 3304,
123. In trademark infringement disputes, the irreparable damage requirement for injunctive
relief:
[I]s relatively easily shown, since infringement may easily destroy the value
of a mark or at least nullify expensive advertising in a way that is hard to
quantify for the purposes of an inquiry into damages. This has more recently
come to be referred to, in cases where the defendant's conduct is not directly
damaging but merely reduces the distinctive character of the claimant's
mark, as 'dilution.'
Fall 2008] TRADEMARK DILUTION IN INDIA

This leads us to the second insight. Dilution, as it is framed by passing

off, is very different from dilution as envisaged in the Indian statutory
regime. As already discussed, a finding of confusion or deception always
precedes dilution in these cases. Courts have been operating on familiar
territory and are willing to intervene to protect the interests of both the
consumer as well as the producer. Yet since actionable confusion has been
convincingly identified in such cases, dilution is discussed almost as an
afterthought. In these passing off decisions, "dilution" is an all encompassing
expression that covers a range of different wrongs. It has been variously 42
described as "dilution of the distinctive character of plaintiffs' trade mark,"
"impairment and debasement of reputation," 43 "dilution of the plaintiffs
established goodwill and reputation in the market," 44 "dilution and erosion of
46
. . .uniqueness," 45 and "dilution of the plaintiffs brand-name equity." If
dilution is a species of harm, what value or relationship is being harmed in
such cases? Is it erosion of a mark's goodwill? Or the mark's reputation,
which is a broader concept? Is it harm to its brand value (and why should
trademark law protect brand value per se)? Or does it simply suggest an
encroachment upon a mark's uniqueness in the marketplace, where other
identical or similar marks have not existed?
The following Part suggests that, in keeping with developments in the
United States and the European Union, the Indian statutory provisions are
narrower than this amorphous conceptualization of dilution. Instead, Indian
legislation responds to very specific wrongful acts in carefully circumscribed
situations. Dilution finally does exist as an independent arrow in the
registered trademark proprietor's quiver without requiring the proprietor to
establish confusion, but only in carefully qualified circumstances. The fuzzy
concept of dilution under passing off should not contaminate its more
precisely-worded counterpart under the Act.

III. DILUTION UNDER THE TRADE MARKS ACT OF 1999

Dilution-broadly understood as harm to a trademark by lessening its
ability to distinguish goods or services in the market-is a radical and
controversial47 departure from consumer confusion, the traditional litmus

42 La Chemise Lacoste v. R.H. Garments, 2006 P.T.C. 32 (Del.) 481, 6.

43Diageo N. Am., Inc. v. Shiva Distilleries, Ltd., 2007 P.T.C. 35 (Del.) 599, 9.
44Kamdhenu Ispat, Ltd. v. Kamdhenu Indus. Serv., 2007 P.T.C. 35 (Del.) 50, 8.
45 As alleged by the plaintiff in Colgate Palmolive v. Anchor Health & Beauty, 2003 P.T.C. 27
(Del.) 478, 9.
46 N. Ranga Rao & Sons v. Anil Garg, 2006 P.T.C. 32 (Del.) 15, 21.
47See, e.g., Hazel Carty, Dilution and PassingOff: Cause for Concern, 112 L.Q. REV. 632 (1996).
Dilution focuses on the appealing power of the trade mark itself, turning the
trademark into 'an absolute, exclusive property right, which is protectable as
a value in itself.' Emotional information not rational informational is thereby
 TRANSNATIONAL LAW & CONTEMPORAR Y PROBLEMS [Vol. 17:611

test of trademark infringement in India. The scope of protection also has

previously depended upon the notion of specificity, where it was limited to
the goods and services mentioned in the registration specification, 48 whereas
dilution extends this protection to dissimilar goods. In response, this Part
explores approaches to interpreting the statutory criteria for dilution that
could facilitate an incremental and principled development of the law. It
considers the importance of the threshold inquiry related to dissimilar goods
or services and the fame requirement, in order to identify those marks that
will qualify for such enhanced protection. It concludes with an analytical
unpacking of blurring, to underline the differences between this concept in
Indian passing off decisions and its narrower statutory form. Blurring is
selected as illustrative of the more precisely defined statutory criteria
although it is the synonym for only the first of three independent grounds in
Section 29(4), namely detriment to distinctive character, detriment to repute
(tarnishment), and taking unfair advantage (misappropriation). 49 The
principal aim here is to emphasize that dilution under passing off is a
different entity from the requirements under the Act of 1999.

A. Dilution Under the Act: The Bare Bones

For the first time in Indian registered trademark law, Section 29(4) of the
Act of 1999 introduced a particular iteration of dilution as the basis for
infringement:
A registered trademark is infringed by a person who not being
a registered Proprietor or a person using by way of permitted
use, uses in the course of trade, a mark which-

protected. This is completely at odds with the identification and guarantee

function of trademarks, from which the common law has never swerved.
Id. at 654-55. J. Thomas McCarthy also comments:
No part of trademark law that I have encountered in my forty years of
teaching and practicing IP law has created so much doctrinal puzzlement and
judicial incomprehension as the concept of "dilution" as a form of intrusion on
a trademark .... Even the U.S. Supreme Court has failed to grasp the
contours of the doctrine.
J. Thomas McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts? 41 HOUS. L.
REV. 713, 726 (2004).
48 Under Section 29(1) of the Act of 1958, infringement required deceptive similarity and was
only available where the defendant used the sign "in relation to any goods in respect of which the
trademark is registered." The present Act is also clear in Section 28(1) that, subject to the rules
on infringement, "the registration of a trade mark shall, if valid, give to the registered proprietor
of the trade mark the exclusive right to the use of the trade mark in relation to the goods or
services in respect of which the trade mark is registered." Trade and Merchandise Marks Act, No.
43 of 1958 (emphasis added) [hereinafter The Act of 1958].
49 While blurring and tarnishment are identified as species of harm that affect the
communicative functions of a trademark, it is debatable whether taking unfair advantage
invariably harms the trademark. Strictly speaking, unfair advantage may not be a sub-category
of dilution.
Fall 2008] TRADEMARK DILUTION IN INDIA

(a) is identical with or similar to the registered trade mark;

and
(b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and
the use of the mark without due cause takes unfair advantage
of or is detrimental to, the distinctive character or repute of
the registered trade mark.50
The content of Section 29(4) overlaps considerably with one of the relative
grounds for refusal of registration in Section 11(2) of the Act of 1999.51 In
light of this structural correlation-in each situation, the registered
proprietor opposes another's attempt to utilize the sign in commerce-there
presumably will be a cross-fertilization of the case law as it develops under
these two provisions.
More conspicuously, the statutory language does not mention dilution by
name, but mirrors an equivalent basis for infringement in Section 10(3) of the
United Kingdom's Trade Marks Act of 1994.52 One of the leading common law
texts on intellectual property notes that Section 10(3) is "intended to allow
protection against 'dilution' [i.e., blurring] or 'tarnishment."' 53 Despite the
nearly identical language, Indian courts are not obliged to follow the U.K. or

50 The Trademarks Act, No. 47 of 1999, § 29(4) (India).

51 Under registrability criteria, while absolute grounds for refusal of registration relate to
inherently objectionable qualities of the sign applied for, relative grounds apply where one party
has an earlier and conflicting right. There is one curious disparity between the infringement and
relative grounds provisions for dilution. While Section 29(2) applies to marks with a reputation,
Section 11(2) applies to a well-known trademark which:
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for
which the earlier trade mark is registered in the name of a different
proprietor shall not be registered if or to the extent the earlier trade mark is
a well-known trade mark in India and the use of the later mark without due
cause would take unfair advantage of or be detrimental to the distinctive
character or repute of the earlier trade mark.
Id. § 11(2) (emphasis added).
52 Section 10(3) of the Trade Marks Act of 1999 provides:

A person infringes a registered trademark if he uses in the course of trade in

relation to goods or services a sign which . . . is identical with or similar to
the trademark, where the trademark has a reputation in the United Kingdom
and the use of the sign, being without due cause, takes unfair advantage of,
or is detrimental to, the distinctive character or the repute of the trademark.
Id. § 10(3).
53 WILLIAM R. CORNISH AND DAVID LLEWELYN, INTELLECTUAL PROPERTY: PATENTS, COPYRIGHT,
TRADE MARKS AND ALLIED RIGHTS 690 (6th ed. 2007).
 TRANSNATIONAL LAW & CONTEMPORAR Y PROBLEMS [Vol. 17:611

European approaches, 54 and it cannot be overemphasized that each case

ultimately is decided on its own facts and circumstances. 5 5 However, the
novelty and contentious nature of this legislative intervention calls for a
consistent and incremental response from the Indian judiciary. Since there
has been only a minimal unpacking of dilution provisions by the Indian
courts thus far,56 the comparative analysis undertaken in this Part highlights
the need for meaningful threshold requirements and clearly defined
categories of actionable conduct or harms under these controversial
provisions. 57

B. Setting Appropriate Thresholds: DissimilarGoods and Fame

There are two significant prerequisites to any dilution claim, 58 which are
implicated by parallels between the Indian and EU approaches. Is an
infringement action for dilution available when the parties' goods are the
same or similar? Furthermore, what is the appropriate degree of fame for a
court to require for a mark, in order for a mark to claim this enhanced
protection? Neither question has been addressed by the Indian courts thus
far, but dilution traditionally has been perceived as a remedy for the
unauthorized use of a trademark on dissimilar goods. 59 Is Section 29(4) also
available where the defendant uses the mark in question on the same or
similar goods or services? The Act explicitly states in Section 29(4)(b) that the
defendant's use is "in relation to goods or services which are not similar to
those for which the [plaintiffs] trade mark is registered." 60 However, the
equivalent EU provisions have been reinterpreted by the European Court of
Justice (ECJ), which establishes a remedy against dilution even in situations

54 On the extent to which foreign judgments are persuasive authority, see NARAYANAN, supra
note 5, at 4-5.
55Parle Prod. v. J.P. & Co., A.I.R. 1972 S.C. 1359, 1362.

56 Only a handful of decisions have referred to Section 29(4), and there has been limited
substantial analysis to date. See Asian Paints, Ltd. v. Home Solutions Retail (India), Ltd., 2007
P.T.C. 35 (Bom.) 697 (marks were held to be dissimilar so the threshold requirement was not
met); Balkrishna Hatcheries v. Nandos Int'l, Ltd., 2007 P.T.C. 35 (Bom.) 295 (plaintiff alleged
dilution but did not argue the case under the statutory requirements, including not establishing
a sufficient reputation); Canon Kabushiki Kaisha v. B. Mahajan, 2007 P.T.C. 35 (Del.) 265
(statutory defense which relied upon the defendant's prior registration of a trademark prevented
the development of arguments under Section 29(4)).
57Recent decisions suggest that Indian courts are willing to interpret the Act in light of the spirit
of corresponding U.K. and EU provisions. For a robust and pro-competitive analysis of
descriptive fair use of a trademark on spare parts, see Hawkins Cookers v. Murugan Entm't.,
2008 M.I.P.R. 1 (Del.) 128.
58 I have not addressed the issue of whether actual dilution or a likelihood of dilution is the
standard in India. Indian courts could follow the equivalent U.K./EU standard, which itself is
something of a mystery. See Ilanah Simon, The Actual Dilution Requirement in the US, UK and
EU: A ComparativeAnalysis, 12 B.U. J. SCI. & TECH. L. 271 (2006).
59 Frank I. Schechter, The Rational Basis of Trademark Protection, 40 HARV. L. REV. 813, 830
(1927).
60 The Trademarks Act, No. 47 of 1999, § 29(4) (India).
Fall 2008] TRADEMARK DILUTION IN INDIA

involving the same or similar goods. 61 The ECJ adopted a teleological

approach to interpretation, whereas the default position for an Indian court is
the literal interpretation of the wording of statutes. 62 Therefore, Section 29(4)
should be read literally and restricted to situations involving dissimilar goods
or services. 63
Furthermore, this potent remedy should be reserved for those marks that
truly deserve the expanded scope of protection. The Act indicates that a
plaintiffs trademark should have a "reputation" in India. This is a threshold
level inquiry which is of critical importance to determine when a mark would
qualify for such strengthened protection, and neither the present Act nor the
1958 Act provide any direct guidance as to its meaning. One possibility for
Indian courts is to look to the parallel provisions in the Act concerning the
relative grounds for prohibiting trademark registration. However, a surprise
awaits, for although Section 11(2) is otherwise similarly worded, the
64
reference here is to a "well-known trade mark."
In fact, the Act refers extensively to the "well-known trade mark" as far
as registrability is concerned. It is defined in Section 2(1)(89), not only in
terms of being known to a "substantial segment" of the relevant public but
also in terms of casting such a long shadow that its use on the goods and
services of another would imply a connection in the course of trade with the
proprietor. 65 The Registrar is provided with statutory guidelines for making
the determination of whether a mark is well-known or not in Section 11(6)66

61 Case C-408/01, Adidas-Salomon A.G. v. Fitnessworld, 2003 E.C.R. 12,537; Case C-292/00,
Davidoff & CIE S.A. v. Gofkid, Ltd., 2003 E.C.R. 389.
62 See generally G.P. SINGH, PRINCIPLES OF STATUTORY INTERPRETATION 1-100 (10th ed. 2006).

63There is a convincing case to be made for enabling competitors to signal substitutability for
similar products in the marketplace. See Michael Spence, Section 10 of the Trade Marks Act
1994: Is There Really a Logical Lapse?, 2001 EUR. INTELL. PROP. REV. 423.
64 For the text of this provision see The Trademarks Act, No. 47 of 1999 (India).
65 Id.:
Well-known trade mark in relation to any goods or services, means a mark
which has become so to the substantial segment of the public which uses such
goods or receives such services that the use of such mark in relation to other
goods or services would be likely to be taken as indicating a connection in the
course of trade or rendering of services between those goods or services and a
person using the mark in relation to the first-mentioned goods or services.
Id. § 2(89).
66 Id. The Registrar shall, while determining whether a trademark is a well-known trademark,
take into account any fact which he or she considers relevant for determining a trade mark as a
well-known trade mark including:
(i) the knowledge or recognition of that trade mark in the relevant section of
the public including knowledge in India obtained as a result of promotion of
the trade mark;
(ii) the duration, extent and geographical area of any use of that trade mark;
 TRNSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

and further guidelines are provided for determining whether a trademark is

known or recognized by a relevant section of the public in Section 11(7).67
Additionally, where a trademark has been determined to be well-known in at
least one relevant section of the public in India by any court or Registrar, the
Registrar shall consider that trademark as a well-known trademark for
registration under this Act. 68 This potentially opens up an unwelcome "niche
fame" possibility. 69 Finally, restrictions are placed upon what a Registrar can
demand of such a mark while determining its "well-known" status, such as
excluding the requirements that it should have been registered or used in
India. 70 The Registrar is actively encouraged to bear in mind the interests of
well-known marks during registration and opposition proceedings in
general. 71
Despite such elaborate prescriptions for well-known marks, the statute
remains strangely reticent about marks with a "reputation," and we must
look elsewhere for guidance on this point. Assuming such a differentiation
was intended, one resource that explores these distinctions is Frederick
Mostert's comparative work on the international protection of well-known
marks.7 2 This species of mark was first incorporated into the Paris

(iii) the duration, extent and geographical area of any promotion of the trade
mark, including advertising or publicity and presentation, at fairs or
exhibition of the goods or services to which the trade mark applies;
(iv) the duration and geographical area of any registration of or any
application for registration of that trade mark under this Act to the extent
they reflect the use or recognition of the trade mark;
(v) the record of successful enforcement of, the rights in that trade mark, in
particular, the extent to which the trade mark has been recognised as a well-
known trade mark by any court or Registrar under that record.
Id. § 11(6).
67 Id. The Registrar shall, while determining as to whether a trademark is known or recognized
in a relevant section of the public for the purposes of sub-section (6), take into account:
(i) the number of actual or potential consumers of the goods or services;
(ii) the number of persons involved in the channels of distribution of the
goods or services;
(iii) the business circles dealing with the goods or services to which that trade
mark applies.
Id. § 11(7).
68 See id. § 11(8).
69 Blake R. Bertagna, Fleeting Fame Under the Trademark Dilution Revision Act of 2006, 2 J.
INTELL. PROP. L. & PRAC. 821 (2007) (describing the U.S. state-level experiences with the niche
fame requirement).
70 India appears to have done this to enable protection for international or foreign marks. The
Trademarks Act, No. 47 of 1999, § 11(9).
71 Id. § 11(10).
72 FREDERICK W. MOSTERT, FAMOUs AND WELL-KNOWN MARKs (1997).
Fall 2008] TRADEMARK DILUTION IN INDIA

Convention in 1925. 7 3 Various labels have been used for such high-profile
marks, such as "famous marks," "well-known marks," and "marks with a
reputation." 74 Mostert's analysis suggests a descending scale, so that a mark
which is "well-known" would have to surpass a higher evidentiary threshold
than a mark with a "reputation." 75 Following this differentiation, Section 11
would require more extensive evidence of fame under the relative grounds,
while infringement under Section 29 would require less, to invoke the same
scope of anti-dilution protection.
Such incoherence may be avoided by resorting to the Trade Mark Rules of
2002. In particular, Rule 48(b)(vi), which specifies the content for notices on
opposition to registration, appears pragmatically to equate the concepts of
"well-known" and "reputation."76 It is submitted that uniformly adopting the
"well-known" standard is the more favorable approach, since detailed
statutory guidelines are provided for this category and it requires a higher
threshold of public awareness. The mark under consideration should truly
deserve this broader protection.

C. The Requirements for Blurring

This Article emphasizes that, unlike references to dilution in the passing
off context, Section 29(4) of the Act identifies and isolates very specific
instances of actionable conduct. Thus, it applies when "the use of the mark
without due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered trade mark." 77 For the
equivalent provisions in U.K. and EU law, "detrimental to distinctive
character" has been equated with blurring, "detrimental to repute" with
tarnishment, and "unfair advantage of the distinctive character or repute"

73 See Paris Convention for the Protection of Industrial Property art. 6bis, Mar. 20, 1883, revised
at Stockholm July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305. However, Article 6bis is once
again restricted to a "same or similar goods" situation and arguably a confusion requirement.
74In Europe, the test for reputation is that the earlier mark is known by "a significant part of the
public concerned by the products or goods covered by the trade mark." See Case C-375/97, Gen.
Motors Corp. v. Yplon, 1999 E.C.R. 5421.
75 MOSTERT, supra note 72, 17-23.
76 Rule 48 (b)(vi) states:

Where the goods or services in respect of which earlier mark has been
registered or applied for or in respect of which the earlier mark is well known
within the meaning of Sub-section (2) of section 11 or has a reputationwithin
the meaning of that section the opponent shall when indicating all the goods
or services for which the earlier mark is protected, also indicate those goods
or services on which the opposition is based.
Government of India, Ministry of Commerce & Industry, No. G.S.R. 114(E), INDIA GAZETTE Pt.
II, § 3(i), Feb. 26, 2002, R. 48(b)(vi), available at http://www.patentoffice.nic.inltmrnew/tmr-act-
rules/tmr-rules_2002.pdf (emphasis added) [hereinafter Trademark Rules of 2002].
77The Trademarks Act, No. 47 of 1999, § 29(4) (India).
 TRANSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

with free-riding. 78 In the following analysis I use blurring to demonstrate

that the wrongful activity prohibited by this section focuses on very clearly
defined harm.
Courts and tribunals on both sides of the Atlantic have suggested that a
mere association-the fact that the junior user's mark brings to mind or
evokes the senior user's mark-is not sufficient to qualify as blurring. In
Victoria's Secret, the U.S. Supreme Court observed that where the
trademarks at issue in a dilution case are not identical:
[T]he mere fact that consumers mentally associate the junior
user's mark with a famous mark is not sufficient to establish
actionable dilution. Such mental association will not
necessarily reduce the capacity of the famous mark to identify
the goods of its owner, the statutory requirement for dilution
79
under the Federal Trademark Dilution Act.
In a similar vein, the U.K. Trademarks Registry and courts have been
equally skeptical of such associative claims.8 0 In Premier Brands, Justice
Neuberger observed that:
Section 10(3) is not intended to have the sweeping effect of
preventing the use of any sign which is the same, or similar
to, a registered trade mark with a reputation; nor is section
10(3) intended to enable the proprietor of a well-known
registered mark to be able to object as a matter of course to
81
the use of a sign which may remind people of his mark.
The ECJ's Court of First Instance has demonstrated this resistance to a
mere connection as well. In the Spa Finders dispute, where the proprietor of
SPA for a range of mineral water and cosmetics products objected to the
registration of SPA FINDERS for travel agency services, the Court observed
that:
[The] existence of such a link is not sufficient to demonstrate
the risk of detriment to the distinctive character .... [S]ince
the term 'spa' is frequently used to designate, for example, the
Belgian town of Spa and the Belgian racing circuit of Spa-
Francorchamps or, in general, places for hydrotherapy such
as hammams or saunas, the risk of detriment to the
distinctive character of the mark SPA seems to be limited.8 2

78 This analytical structure was established in Advocate General Jacobs' opinion in Adidas-
Salomon A.G. v. Fitnessworld,2003 E.C.R. 12,537, AG36-AG39.
79 Moseley v. Victoria's Secret Catalogue, Inc., 537 U.S. 418, 433 (2003).
80 See e.g., Audi-Med Trade Mark, [1998] R.P.C. 863 (U.K.); Oasis Stores, Ltd.'s Trade Mark
Application, [1998] R.P.C. 631 (U.K.).
8' Premier Brands U.K., Ltd. v. Typhoon Europe, Ltd., [2000] E.T.M.R. 1071, 1095 (Ch.) (U.K.).
82 Case T-67/04, Spa Monopole SA/NV v. OHIM, 2005 E.C.R. 1825, 44.
Fall 2008] TADEMARK DILUTION IN INDIA

Thus, while there is judicial acknowledgement that such mental

association is insufficient for the blurring requirement, there is also
substantial agreement on the nature of the harm to be established. As a
consequence of the Trademark Dilution Revision Act, U.S. law now defines
blurring as an "association arising from the similarity between a mark or
trade name and a famous mark that impairs the distinctiveness of the
famous mark."8 3 Distinctiveness is a term of art in trademark law and refers
to a sign's ability to indicate the origin of its goods or services, thereby
distinguishing them from others in the marketplace. 8 4 In the context of
distinctiveness, the Indian Supreme Court has observed in the past that the
purpose of a trademark is to indicate a connection, in the course of trade,
85
between goods and some person having the right to use the mark.
An emerging consensus suggests that harm to this ability to indicate
origin and thereby distinguish between goods or services is specifically
protected by preventing blurring, as opposed to protecting a mark's
reputation or its brand equity. According to the recent Louis Vuitton decision
of the U.S. Court of Appeals for the Fourth Circuit, under the Trademark
Dilution Revision Act, "a plaintiff must show ... that the association is likely
to impair the distinctiveness of the famous mark . . . . In the context of
blurring, distinctiveness refers to the ability of the famous mark uniquely to
identify a single source and thus maintain its selling power."8 6 In Europe, the
harm has been identified in the Hollywood decision of the Office for
Harmonisation in the Internal Market (OHIM) Board of Appeals:
[Dilution by blurring] occurs when consumers identify the
trade mark used by a third party with different goods or
services with different origins. This dilutes the trademark's
ability to identify a single originating undertaking without a
likelihood of confusion as regards the origin of the goods or
service or the existence of contractual or similar relationships
between the holders of the right. This results in an
association which weakens or reduces the trade mark's
distinctive character.87
The Court of First Instance suggests that the subsequent detriment or
harm arises in a situation where "the earlier [reputed] mark is no longer

83 See Lanham Act § 43(c), 15 U.S.C. § 1125(c) (2006).

84 This is reflected in the definition of a trademark in The Trademarks Act, No. 47 of 1999, §
2(i)(zb) (India).
85 Am. Home Prods. v. Mac Labs., A.I.R. 1986 S.C. 137, 154.

86 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, L.L.C., 507 F.3d 252, 264-65 (4th Cir.
2007).
87 Hollywood S.A.S. v. Souza Cruz, S.A., [2002] E.T.M.R. 64, 105 (OHIM 3d Bd. App.).
 ThANSNATIONAL LAW & CONTEMPORARY PROBLEMS [Vol. 17:611

capable of arousing immediate association with the goods for which it is

88
registered and used."
In keeping with this trend, early indications from the Indian judiciary are
heartening and suggest that overbroad allegations of harm or detriment will
not be encouraged. In what is perhaps the most detailed analysis of Section
29(4) to date, the Bombay High Court has recently interpreted the
'detrimental to distinctive character' and 'unfair advantages' as substantial
criteria that should not be presumed lightly.8 9 Where the proprietor of the
well known mark RAYMOND for textile materials including shirts and suits
objected to the relatively long-standing use of that name by a pharmaceutical
company, the court was clear that the use of similar or identical signs on
dissimilar goods would not automatically lead consumers to make damaging
associations. 90 It is worth noting that the plaintiff unsuccessfully drew
parallels with the Benz decision 91-involving dilution as a species of harm in
the passing off context and resting on an initial finding of consumer
confusion-as a relevant precedent under the new statutory provisions. This
is precisely the sort of misapplication of passing off decisions against which
this Article has cautioned. Passing off decisions use the language of dilution
loosely because the real mischief-misrepresentation-already has been
established.

IV. CONCLUSION

Despite several decisions by Indian courts referring to dilution over the

past two decades, the new Act represents a fresh start. This Article has
placed these decisions in context and framed dilution as a contingent species
of harm under the law of passing off. Dilution could not exist independently
of a finding of misrepresentation and the likelihood of consumer confusion.
Earlier courts therefore arguably were more willing to reach a finding of
dilution since consumers also were confused or deceived. However, under the
new regime, dilution forms the basis for an independent cause of action and
must be approached with greater circumspection. The Indian judiciary has
considerable experience with confusion-based infringement actions and the
scope of infringement is fairly broad. Preventing confusion therefore is an
adequate response in most situations. Early indications suggest that Indian
courts will not be swayed easily by trademark proprietors' allegations of
unspecified harm to a brand or reputation merely as a consequence of mental
associations.

88Case T-67/04, Spa Monopole, Compagnie Fermi~re de Spa S.A./N.V. v. OHIM, [2005] E.C.R. II-
1825, 43.
39 Raymond, Ltd. v. Raymond Pharms., Ltd., 2007 P.T.C. 35 (Bom.) 334 (Bobde, J.).
90 Id. 14-15.
91 Daimler Benz v. Hybo Hindustan, 1994 A.I.R. 239 (Del.) (BENZ on underwear).