Intellectual Property Rights [hereinafter referred to as ‘IPR’] are one of the most important rights granted to the people which help them safeguard their work that is a result of immense hard-work, skill and effort. The evolution of trademarks can be traced back to the onset of the industrial revolution which enabled large scale production and distribution of goods. Due to large number of people coming into this market there was a sense of competitiveness and manufacturers began to identify their products by certain symbols or marks so as to distinguish their products from those of their competitors. Slowly, there was a trend of copying other symbols and marks to earn the reputation that it had, and thus came the need for having a protection to the original owner of the symbol/logo etc.
NEED FOR TRADEMARK LAWS
Trademarks are defined under Section 2 (1) (zb) of the Trademark Act, 1999 as any word, name, symbol, configuration, device, shape of goods, packaging etc. that is used by the owner to identify and distinguish his goods from those of others.
When someone adopts a certain sign/symbol/logo/combination of shapes etc. as their business’s identity it becomes obvious that they would not want any other competitor to use the same to ensure that their business has a prominent place in the market. The very reason why this becomes important is for the convenience of the consumers. This can be explained in a three-fold manner:
- Distinctiveness: Trademarks can create a sense of distinct variety in the market for the consumers to choose from easily and helps the owner to maintain his goodwill and reputation in the market.
- No confusion: When a brand has a good reputation for some years, its logo/symbol becomes their main identity and by protecting it, the consumers will not have any confusion with other goods in the market.
- Easy advertisement: The trademark of any business acts as a prime instrument in advertising and selling the goods.
In fact, the need and purpose of trademarks was also iterated in the case of Cadbury India Limited v. Neeraj Food Products, wherein the Hon’ble Court held that the purpose of the trademark legislation is to protect the trader and consumer against dishonest adoption of one’s trademark by another with the intention of capitalizing on the attached reputation and goodwill.
DOCTRINE OF DILUTION AND ITS PURPOSE
Before getting into what the doctrine says, we need to introspect the basis of this concept that exists in trademark laws. A trademark can be deemed to be infringed; it includes- deceptively similar mark, deceptively similar trade dress, deceptively similar medicinal products, deceptively similar domain names, similarity of goods and services, infringement in case of dissimilar goods and dilution of trademark.
The protection extended by Section 29 (4) of the Act even to dissimilar goods and services is actually based on the doctrine of dilution. Dilution is a type of violation of a trademark, wherein the defendant’s use, though not triggering a probability of confusion, blurs distinctiveness or tarnishes the image of the plaintiff’s mark.
For instance, ‘Toblerone’ and its distinct shape, now if a different company markets its chocolate as ‘Toblerone’ it is a clear-cut infringement. Now if another company markets ‘Sugar free-tobulrone’ in the triangular shape, it weakens the secondary meaning of the characteristic of the triangular shape (blurring). If yet another company sells ‘liqueur Toblerone’, it can tarnish the meaning of the name ‘Toblerone’ (tarnished image).
JUDICIAL INTERPRETATION OF THIS DOCTRINE
Now, let us look at some of the landmark decisions and evolvement of judicial interpretation with respect to this doctrine. Even before the existence of the Act, there was a case Daimler Benz v. Hybo Hindustan (Mercedes Benz), wherein the Hon’ble Court accepted and recognized this doctrine of dilution by stating that Mercedes and its mark is known world-wide with tremendous reputation and any mark used in a different garment also dilutes their reputation.
A very significant case is the ITC Limited v. Philip Morris Products SA, ITC is the owner of the mark “WELCOMEGROUP” which is essentially a mark with folded hands. On the other hand, the Respondents, Philip Morris used a similar logo depicting “M”. The Appellants alleged that such a mark dilutes their well known “W” mark. The Hon’ble court made it very clear that a dilution case can be made against the defendant only if there was a similarity, there is a reputation attached to the mark of the Plaintiff, the usage of such mark is without due cause and the respondents are taking undue advantage by using the mark. And thus, by stating these, the case was in favor of the Respondents for the very reason that there must be a global look at the case and there is no considerable amount of similarity between the two.
Furthermore, in the case of Tata Sons Ltd. v. Manoj Dodia, the Hon’ble Court held that there can be a case of dilution of a well-known trademark when such a mark loses its ability to be uniquely identified by the customers. They also mentioned that if a lesser quality brand is using a similar mark, then it tends to dilute and harm the goodwill of the original mark.
Now, let us look at some of the landmark decisions and evolvement of judicial interpretation with respect to this doctrine. Even before the
By reading, understanding and evaluating the concept of dilution in trademarks, I have realized that it can prove to be really unfair to small businesses who are merely selling their products of a completely different category. Following is the list of few lacunas in this doctrine:
- There is no distinction made between a mark being “famous” and a mark being “well-known”. This becomes important because a famous mark may not be well known for the right reasons, thus, deciding a case based on these words can be questioned.
- Words like blurring and tarnishment are extremely vague and can be mis-used by the companies who have a bigger stake and man-power in the market.
- There is a mixed opinion on application of this dilution, whether it is for non-competitors or competitors of the same product line.
- I feel this should be applicable only to the same product line for the sole reason that when a particular product is famous for a product line, the customers have it engraved in their minds, and when another business comes up with a similar logo for a completely different product line, there is a clear distinction made on the face of it for the customers.
- Moreover, sometimes the trademarks are not so well-known also to hamper other product line from using a similar logo as it would not create any doubt in the minds of the consumers. This shows that a liberal interpretation of this doctrine is not in public interest, it prompts every trademark owner to get his mark classified under famous/well known.
- Thus, there is no scope for any confusion in the minds of the customers. For example: It is well known that the tick mark sign of Nike is known for its sports garments, equipment etc., however, if one day a restaurant comes up with the tick mark on its banner, there is no way the customers are going to assume Nike started a restaurant.
- Doctrine of dilution must be given a strict interpretation and criteria for it to do justice to all the brands and companies in the country. As already seen above, this doctrine has a great intention, but lacks implementation and clear-cut rules for the application of the same. There needs to be a re-look into this matter by the judiciary and necessary changes must be made so as to avoid any confusion and unfair judgments towards the famous/well-known marks.
Name of Author:
Natasha K, 4th year BA.LLB (Hons.) student at CMR University, School of Legal Studies, Bangalore.