Introduction
The illegal use of a well-known or famous mark in a way that lessens or dilutes its individuality and reputation is known as Trademark dilution. The Trademark Act of 1999 does not define dilution specifically, however, Section 29(4) outlines the circumstances under which it may happen.
A person violates a registered trademark when they use a mark that is identical to or similar to the registered trademark in the course of their business without being the registered proprietor or using the mark in accordance with a permitted use; when they use the mark in relation to goods or services that are not similar to those for which the trade mark is registered; and when they use the mark without justification in order to unfairly benefit from or harm the reputation of the registered trade mark in India.
Section 29(4) of the Trademark Act
“A registered trade mark 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—
(a) is identical with or similar to the registered trademark; and
(b) is used in relation to goods or services which are not similar to those for which the trademark is registered; and
(c) the registered trademark 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 trademark.”
Trademark dilution may occur per section 29(4) when a mark identical to or confusingly similar to a well-known registered mark is developed and used on products or services unrelated to those covered by the registration of the well-known mark.
Judicial Pronouncement on Trademark Dilution
The Delhi High Court ruled in “ITC v. Philip Morris Products SA & Ors” that there were four requirements to prove trademark dilution. They are the following: the diluted mark in question is identical or confusingly similar to the senior mark that is being diluted; the senior mark is well-known in India; the diluted mark is being used without authorization; and the diluted mark is being used to unfairly exploit or infringe upon the “distinctiveness or reputation of the registered trade mark.
The same court explained the notion in the case of “Caterpillar v. Mehtab Ahmed and Ors” by holding that “if a future user adopted a similar or identical mark for the same goods,” it would reduce the value of the mark of prior use and also cause dilution of such mark. The court determined that a trademark is like property, and an unauthorized party cannot trespass on it, making a trademark dilution an act of economic invasion.
Courts in India have typically not given the following user’s convenience a preference when deciding trademark dilution issues. For instance, the Bombay High Court determined that even if the defendants had to alter their name after using it for the preceding seven years in the case of “Aktiebolaget Volvo of Sweden v. Volvo Steels Ltd. of Gujarat,” they were not expected to suffer much. It was impossible to say the same about the harm that the plaintiff, Volvo, would experience due to the dilution or degradation of their brand name Volvo. Even though Volvo had no presence in India in relation to the goods sold by the defendant and only intended to enter the Indian market with its luxury automobile products, the case was decided in the plaintiff’s favor.
Conclusion
From these sources, it can be inferred that a well-known trademark’s reputation extends beyond territorial restrictions to include locations that are unrelated to the goods or services for which the mark is used. A mark becomes diluted when it becomes distorted or tarnished. Additionally, it involves the practice of profiting off of the popularity or reputation of a well-known mark. It is not necessary for the act to cause loss, harm, or damage to the well-known mark for trademark dilution to take place. Thus, the idea entails diluting or eroding the brand’s distinctiveness and reputation even when consumer confusion is unlikely.
By Aaryan Dwivedi, GNLU, Gandhinagar
