A trademark is a symbol, word, or phrase that identifies and distinguishes a company’s products or services from those of others. Trademarks are valuable assets for businesses, as they help to build brand recognition and loyalty among consumers. However, there is a concept known as trademark dilution that can harm the value and distinctiveness of a trademark. In this article, we will discuss what trademark dilution in india is, how it occurs, and ways to prevent it.
What is Trademark Dilution?
Trademark dilution occurs when a trademark’s ability to uniquely identify and distinguish a company’s goods or services. It is lessened due to the unauthorized use of the trademark by another party. Unauthorized use can include using a similar trademark on competing goods or services. Using trademark on goods or services that have nothing to do with trademark, or using a trademark in a way that damages or confuses its image.
Trademark dilution can have a significant impact on a company’s business and reputation. Customers may think the person diluting the trademark is the original owner. The trademark owner may lose sales and money. If people buy the goods or services linked to the diluted use of the trademark instead.
How Does Trademark Dilution Occur?
Trademark dilution can occur in several ways, including:
This occurs when another party uses a trademark that is identical or confusingly similar to an existing trademark on competing goods or services. This can lead to consumer confusion and dilution of the original trademark.
Unauthorized use of a trademark on dissimilar goods or services:
This occurs when another party uses a trademark on goods or services that are not related to the goods or services associated with the original trademark. This can lead to dilution of the original trademark by blurring the association between the trademark and the goods or services it represents.
Tarnishment of a trademark:
This occurs when another party uses a trademark in a way that harms the reputation or image of the trademark. This can lead to dilution of the original trademark by tarnishing its reputation and making it less distinctive.
Free riding on a trademark:
When someone else uses a trademark to promote their own products or services without promoting or maintaining the original trademark. This can hurt the original trademark by letting others use its goodwill and reputation without adding to it.
Ways to Prevent Trademark Dilution
There are several ways to prevent trademark dilution, including:
Registering a trademark: One of the most effective ways to prevent trademark dilution is to register a trademark with the United States Patent and Trademark Office (USPTO). This provides legal protection for the trademark and allows the trademark owner to take legal action against others who use the trademark without permission.
Monitoring use of the trademark: It is important to monitor the use of a trademark to ensure that it is not being used in a way that dilutes the trademark. This can be done by conducting regular trademark searches and monitoring the marketplace for unauthorized uses of the trademark.
Taking legal action: If a trademark is being used in a way that dilutes the trademark, it is important to take legal action to stop the dilution and protect the trademark. This may involve filing a lawsuit for trademark infringement or dilution, or sending a cease and desist letter to the party using the trademark without permission.
Educating others on proper use of the trademark: It is important to educate others, such as employees, partners, and licensees, on the proper use of the trademark. This can help to ensure that the trademark is not being used in a way that dilutes the trademark.
Promoting and maintaining the trademark: One way to prevent dilution is to actively promote and maintain the trademark. This can be done by regularly using the trademark in advertising and marketing materials and ensuring that the trademark is associated with high-quality goods or services.
Building a strong reputation: Building a strong reputation for the trademark can also prevent dilution. This can be done by providing excellent customer service, offering high-quality products or services, and building a positive reputation in the community.
The concept of Dilution divided into two categories:
1. Blurring, or blurs a mark from the group with a single product to signify other products in other markets;
In Mead Data Central v. Toyota, the Court held that blurring includes ‘the whittling away of an established trademark’s selling power through its unauthorized use by others upon dissimilar products.’
2. Tarnishment, which is the damaging of a mark through unappealing links.
Ford Motors Company Vs. C.R. Borman
The Court held that to prove the case of Dilution or passing, there is no requirement for the goods to be in the same product line. Suppose the goods are in a different product line and the use of well-known marks is evident. In that case, the claims are sustainable, leading to the tarnishment of the trademark.
The Trade and Merchandise Marks Act, 1958 ( now replaced by Trademark Act, 1999), had no reference to the concept of Dilution, and it had to always rely on international cases and standards set by Foreign Courts in the U.S., U.K., and E.U. to deal with the cases of Dilution. The purpose was to save the reputed marks from any dilution in the public’s minds at large. Infringement suits were maintained in situations where similar marks were used in the same product category. Thus, no remedies were given to the parties who were subjected to Dilution of the mark.
The current Trademark Act, 1999, throws some light on the concept of Dilution. Although the legislations have not taken the issue of Dilution seriously and have accorded a little protection to aggrieved applicants, various judicial precedents have come in handy to solve Dilution cases. However, section 29(4) gives us a brief idea of the intention of the legislatures to include Dilution as infringement criteria: “This section posits similarity in goods that are not related to each other.” Common elements to establish in anti-dilution case:
3. Reputation: The most important thing to succeed in the case of Dilution is to establish that the mark has an extreme reputation in the industry and that using the mark by someone else can cause a loss of uniqueness of the mark.
GENERAL MOTORS CORP V. YPLON, S.A.,
the Court held that the plaintiff has to establish that the mark intended to be protected immense fame and reputation in the mark beyond a reasonable doubt that if anyone else uses the mark can confuse the public about the association with the brands. The term “reputation” was clearly defined in the case: “If a reasonable buyer doesn’t think of the well-known trademark in his or her mind, even subtly or subliminally, then there can be no dilution.”
4. Protection to legitimate owners: The next important element is protection to the legitimate owner of the mark. The aggrieved party to Dilution must show that they had a substantial interest in the mark, and the party is the legitimate owner of the mark. If so established, then the owner of the mark can seek the protection of the Court.
5. Establishment of Prima-Facie case: The third important aspect is establishing a Prima-facie case to seek protection under the Law.
To establish a prima –facie case, courts have emphasized SECTION 29(4):
- The mark is a well-known mark.
- There was damage to the reputation of the well-known mark.
- The damage was in such a nature that it would lessen the uniqueness of the brand.
EXCEPTIONS TO DILUTION
Every Legislation covers itself from certain exceptions, and so has the doctrine of Dilution also. There are certain acts if done, would not amount to Dilution. They are:
Advertising or promotion that permits consumers to compare goods or services; or
Identifying and parodying, criticizing, or commenting upon the famous mark owner the goods or services.
All forms of news reporting and news commentary.
Any mark which includes parodies, criticism, or comments.
In the case of Louis Vuitton Malletier S.A. v. Haute Diggity Dog, the Court was very lenient in pronouncing the judgment. The application of Dilution was filed against the defendant operating under the brand “CHEWY VUITTON” for manufacturing apparel for dogs. Now, the plaintiff filed the case on the ground that the said impugned mark was a parody of the famous mark “LOUIS VUITTON.” The Court favoring the defendant held that “mere parody of mark does not constitute dilution.”
FAMOUS CASES ON DILUTION OF TRADEMARK:
1. ITC VS PHILIPS MORRIS PRODUCTS, S.A.
The Court observed that ITC never used the mark on the cigarettes and that the ITC mark’s fame could not be extended to mid to high priced cigarettes; therefore, the trademark dilution cause of action cannot survive.
2. BATA INDIA PRIVATE LIMITED VS PYARELAL:
In this case, the plaintiff filed a dilution case against the defendant. Even though the defendants were dealing with a different product, the injunction was passed. There was some element of diminishment in the plaintiff’s trademark.
3. TATA SONS VS MANOJ DADIA:
The principle of Dilution is enshrined in Section 29(4) of the Trade Marks Act, 1999, and the Court stated that the test for Dilution cannot be the same as that of deceptive similarity.
4. BMW v DMW:
The Court stated that the defendant has adopted the indispensable features of the plaintiff’s mark. And there is a clear visual and phonetic resemblance. Therefore, the defendant’s mark DMW is likely to deceive and cause confusion, thus there is an established case of Dilution.
5. DAIMLER BENZ AKTIEGESELLSCHFT AND ANR. V. HYBO HINDUSTAN [AIR 1994 Delhi 236] the Court exclaimed that using the trademark “BENZ” for underwear when the mark was used by the plaintiff’s for the cars will discriminate the benefits of usage acquired by the plaintiffs.
6. MIDAS HYGIENE INDUSTRIES (P) LTD. V. SUDHIR BHATIA AND OTHERS (2004) 3 SCC 90, made it clear that even if there was a delay on the part of the plaintiff in filing the suit, the same would not be sufficient to deter grant of injunction in favor of the plaintiff; given that the defendant’s adoption of the mark was also prima facie dishonest. It was held by the Court that the plaintiff has made out a prima facie case, and the balance of convenience is also in its favor.
Finally trademark dilution in india is a serious issue that can harm the value and distinctiveness. It is important for businesses to understand the concept of trademark dilution, how it occurs, and ways to prevent it. By registering trademark, tracking its use, and going to court can prevent trademark dilution also protect their reputation and goodwill.