DILUTION OF GOODWILL IN TRADEMARKS: A CASE STUDY IN INDIAN CONTEXT
TABLE OF CONTENTS PARTICULARS
P. NO.
DILUTION OF TRADEMARKS: AN INTRODUCTION EVOLUTION OF DILUTION AS A FACET OF TRADEMARK INVASION VULNERABILITY OF WELL-KNOWN TRADEMARKS
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DILUTION: A CASE STUDY IN INDIAN CONTEXT PRIOR TO INCORPORATION OF THE TRADE MARKS ACT STATUTORY RECOGNITION UNDER SECTION 29(4) OF THE TRADE MARKS ACT U-TURN CARVED OUT BY SECTION 159(5) OF THE TRADE MARKS ACT PASSING OFF: SAVING GRACE & A MORE RELIABLE REMEDY FUTURE ROAD MAP BIBLIOGRAPHY
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DILUTION OF TRADEMARKS: AN INTRODUCTION Sankalp Jain*
‘A reputation once broken may possibly be repaired, but the world will always keep the eyes on the spot where the crack was.’ 1
A trademark denotes the identity of an enterprise. It is the function of a trademark to give an indication to the purchaser as to manufacturing or * Student, 08/ILI/LLM/2011, Indian Law Institute, Delhi Joseph Hall was an English bishop, satirist and moralist. His contemporaries knew him as a devotional writer, and a high-profile controversialist of the early 1640s.
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quality of the goods, to give an indication to his eye of the trade source from which the goods, or the trade hands through which they pass on their way to the market. In the present times, times, the essence of contemporary trademark lies lies in its power to sell, which depends on the following factors: •
influence on public;
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merit of the goods upon which it is used;
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uniqueness and distinctiveness of the goods.
Brand is the primary want of consumers and a trademark of a company is a graphical representation of the brand or reputation built by the company in a definite territory within the course of time. Trademarks are generally territorial in nature, but the very territorial nature of trademark is hit for a six in case of a well-known trademark or a famous mark which develops its reputation beyond geographical boundaries. 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.
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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.2 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.
2
T.G. Agitha, “Trademark Dilution: Indian Approach” 50(3) JILI 50(3) JILI 341 341 (2008)
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EVOLUTION OF DILUTION AS A FACET OF TRADEMARK INVASION
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 a nd steel company. However, others believe that the doctrine was espoused in England in 1898, in the case of Eastman Photographic Material Mat erial Co. v. John Griffiths Cycle Corp C orp.3 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. 4 However, it was Frank Schechter who actually launched the concept of 5
trademark dilution vide his paper 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 6
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. He further explained that an injury to the trademark owner occurs when there is
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15 RPC 105 (High Ct. of Justice, Ch. 1898) Brajendu Bhaskar, “Trademarks Dilution Doctrine: The Scenario Post TRDA, 2005 ” 1 NUJS L. Rev. Rev . 640 (2008) 5 Frank I. Schechter “Rational Basis of Trademark Protection” Protection” 40(6) Harv. L. Rev. 813 (1927) available at: http://www.jstor. http://www.jstor.org/discover/ org/discover/10.2307/1330367?uid= 10.2307/1330367?uid=3738256&uid=2129&uid=2&ui 3738256&uid=2129&uid=2&uid=70&uid=4&sid=211 d=70&uid=4&sid=211 th 00737655691 (Visited on 12 March, 2012) 6 Id. at Id. at 818 4
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a gradual whittling away or dispersion of the identity and hold upon the 7
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 Act8 passed the Federal Trademark Tr ademark 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-
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Id . at 825 Sec. 43(1)(c), 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.
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1) competition between the owner of the famous mark and other parties, or 2) likelihood of confusion, mistake or deception
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The Act applies when an unauthorized user of a trademark attempts to trade upon the goodwill established by a famous mark, thereby diluting the mark’s distinctive quality. 10 The protection under the Act applies only to trademark owner and not the consumers.
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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 whether the Act required 13
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. 14 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 Inc.15 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.
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15 U.S.C. Sec. 1125(c) of FTDA, 1995 Supra note 4 at 641 11 Ibid 12 TCPIP Holding Co. Inc. v. Inc. v. Haar Haar 244 244 F.3d 88, 95 (2001) 13 Supra note 4 at 642 14 Ibid 15 37 U.S. 418 (2003) 10
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Later, in 2005, the US Congress challenged the Supreme Court’s ruling in 16
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 r eplaced 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. 17 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. 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.
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Ibid Kathleen Goodberlet, “THE TRADEMARK DILUTION REVISION ACT OF 2006: Prospective Changes To 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) 17
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Dilution by tarnishment, on the other hand, is said to have occurred when the 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. Departure from Classical Trademark Law
The trademark law in its classical form protects consumers from misleading or confusing use of trademarks. The proposition on which the classical trademark law is based is that the consumers rely on a particular trademark to identify a product possessing a particular mix of attributes. 18 When a trademark is infringed by the use of an identical or similar mark used on a different product or a set of products, such use is likely to cause confusion in the minds of consumers as to the source of the goods. But irrespective of the form of confusion, be it actual or potential, trademark law allows the trademark owners to recover only to the extent of reasonable confusion caused to the consumers. Dilution law, on the other hand, is producer oriented in nature which seeks to prevent lessening of the value of well-known or famous marks arising from the use of the mark by the third parties. The underlying principle of dilution law is that the unauthorized use of a well-known mark by third parties, even if it does not cause confusion to the consumers can affect the mark’s goodwill and selling power as it then ceases to be associated with a single source. Unlike in traditional trademark law, dilution claims are not motivated by consumer interests. Through its exclusionary nature, dilution law on the
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Clarisa Long, “Dilution” 106(5) Col. L. Rev. Rev. 1034 (2006) available papers.ssrn.com/sol3/papers.cfm papers.ssrn.com/ sol3/papers.cfm%3Fabstract_id%3 %3Fabstract_id%3D942673 D942673 (Visited ( Visited on 12 th March, 2012)
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face it looks like to provide a strong protection to trademarks. Unlike, class trademark infringement, the dilution law ties the third parties under stricter and stronger duties to refrain from using protected marks. But at the same time, it cannot be denied that dilution law also poses some serious problems. Some of the major difficulties are the ambiguity regarding the nature of the harm arising from dilution of a mark, magnitude of harm which dilution law seeks to prevent varying from case to case and absence of universally accepted definition of dilution. The elusiveness of the injury contributed to the reluctance of courts in enforcing dilution claims. Some commentators have argued that dilution law is geared toward protecting consumers because diminution of a famous mark’s ability to identify a product increases 19
consumers’ search costs.
However, in the later years, like the Indian cinema, the picture has become rosier and colorful. The courts have made notable contributions in developing the law of dilution and to a good extent have carved out decisions worthy of appreciation and commanding enough to be followed as the prevailing law.
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Id. at 1035 *
VULNERABILITY OF WELL-KNOWN TRADEMARKS
The concept of ‘well-known’ Trademark is one of the most controversial concepts in the field of intellectual property but also the most baronial as well. The term ‘well-known’ in relation to trademarks originates from the th
term ‘reputation’ which for the first time recognized in the 17 century in JG v. Stanford 20 wherein it was held that the law of passing off prevents
commercial dishonesty on the part of traders. 21 In the realm of trademarks, attaining the status of a “well-known mark” is perhaps akin to attaining Nirvana
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because the protection of well-known marks transcends the
traditional standards and objectives of trademark protection. 23 The protection of well-known marks departs from the basic objective of trademark protection, namely, protecting consumers against deception; deception; rather, it focuses on preserving the distinctiveness of a mark by protecting it against freeriding and tarnishment. In the light of this statement, let us first understand the background of well-known trademarks in the realm of intellectual property law. A regime for the protection of well-known marks was first introduced by the Paris Convention, 1967. Subsequently, during drafting of the TRIPs Agreement, provisions to accommodate protection of well-known marks as espoused by the Paris Convention were incorporated under Articles 16.2 24 20
(1617) 79 ER 400 Vivek Kumar Chaudhary, “Protection of Well-Known Trademarks and Weakening of Honest Concurrent User Defence” 15 JIPR 15 JIPR 293 293 (2010) 22 “Nirvana” refers to a state of bliss achieved achiev ed by liberating on eself from desire, desir e, jealousy, ignorance, and anything holding one back. The state of Nirvana is believed to free the self from fear and death. 23 Latha R. Nair, “TRACKING “TRACKING THE PROTECTION OF WELL-KNOWN MARKS IN INDIA: A BEFUDDLED PATH TO NIRVANA?” 101 TMR 1419 (2011) 24 TRIPS 1995, Art. A rt. 16.2- Article 6b is of the Paris Conven tion (1967) shall sh all apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including 21
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and 16.325 of the Agreement. The TRIPS provision under the TRIPS is looked upon as an improvement over the one under Paris Convention on the ground that the latter applies to and provides for protection to well-known marks only in respect of identical or similar goods whereas the former deals with protection of well-known marks in connection with both goods and services. However, when it comes to defining well-known trademarks, it is neither defined in Article 6 bis 26 of the Paris Convention or in Article 16 of TRIPS, thereby leaving it to the national jurisdictions to define and interpret 27 the term. In the case of McDonalds Corporation v. Joburger , the South
African court held that the term well-known should be tested on the basis of whether sufficient people knew the mark well enough to entitle it protection against deception or confusion.
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The WIPO Resolution concerning
Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark. 25 Supra note 23 at Art. 16.3- Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use. 26 Paris Convention 1883, Art. 6 bis- (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well–known mark or an imitation liable to create confusion therewith. (2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of o f use must be requested. requ ested. (3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith. 27 1997 (1) SA 1 28 Chase Covello, “FAMOUS TRADEMARKS IN U.S. LAW” available at: http://www.anticypher.net/lawresearch/famoustm10.pdf (Visited on 16th March, 2012) ""
General Assembly of WIPO, in September 1999. The recommendation 29 enlists several factors for determining whether a mark falls into the category of well-known marks. These factors include: 1) The degree of knowledge or recognition of the mark in a relevant sector of the public 2) The duration, extent and geographical area of any use of the mark 3) The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies 4) The duration and the geographical area of any registrations, and/or any applications of the mark, to the extent that they reflect use or recognition of the mark 5) The record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognised as well-known by competent authorities 6) The value associated with the mark. India is a member of the World Trade Organization (WTO) and a signatory to the TRIPS Agreement. In India, the Trade Marks Act, 1999, which contains provisions for the protection of well-known marks came into effect in 2003. The incorporation of these provisions can be traced back to WIPO Resolution. Section 2(1)(zg) of the Trade Marks Act, 1999 defines wellknown mark as follows:
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WIPO Document No. SCT/3/8 dated Oct. 7, 1999, available at: http://www.wipo.org (Visited on 19th March, 2012)
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“Well-known trademark, in relation to any goods or service, 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 firstmentioned goods or services.”
When a mark is recognized as a well-known mark, it is given a wide range of protection extending to dissimilar d issimilar goods and services. On the flip side, such s uch protection quite often leads to criticism that the owners of well-known marks 30
are also reaping what they have not sown. Various issues have been raised pertaining to vulnerability of well-known marks in India such as requirement of high degree of reputation; potential harm to competition vis-à-vis potential harm to the plaintiff’s mark; nature, scope and use of the well-known mark and the mark in question, etc. More so, in the absence of set parameters, it becomes more difficult and in some cases, even impossible to reach a conclusion that a particular mark is a well-known mark.31 The problem just does not end here as there are also some notable inconsistencies in the statute which alongwith the aforesaid issues on vulnerability of well-known marks, will be explored in the later chapters of this paper.
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Supra note 22 at 1442 Ibid
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DILUTION: A CASE STUDY IN INDIAN CONTEXT PRIOR TO INCORPORATION OF THE TRADE MARKS ACT
Prior to the enactment of the Trade Marks Act, 1999 (TM Act), the trademark law in India was governed by Trade and Merchandise Marks Act, 1958 (TMM Act). The well-known marks under the TMM Act were protected under Section 4732 which provided for defensive registration of well-known marks and passing off actions. The test for eligibility for defensive registration of a well-known mark was whether the likelihood of deception was the decisive factor in determining whether a well-known mark was eligible for registration under this section. It is pertinent to note, however, that the TMM Act did not define ‘well-known trademarks’ and the concept was evolved by way of judge-made law. Owners of well-known marks often availed of this provision by registering their marks either in all classes or in selected classes of interest. However, it is noteworthy that even without defensive registration, Indian courts have upheld rights in several well-known marks asserted by trademark owners through passingoff actions. In order to understand as to how the courts protected well-known marks before the enactment of the TM Act and how the doctrine of dilution burst into the Indian scenario, let us study some of the important court decisions prior to coming into effect of the new Act.
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TMM Act, Sec. 47(1)- Defensive registration of well-known trade marks Where a trade mark consisting of any invented word has become so well-known as respects any goods in relation to which it is registered and has been used, that the use thereof in relation to other goods would be likely to be taken as indicating a connection in the course of trade between those goods and a person entitled to use the trade mark in relation to the first mentioned goods, then, notwithstanding that the proprietor registered in respect of the first-mentioned goods does not use or propose to use the trade mark in relation to those other goods and notwithstanding anything in Section 46, the mark may, on application in the prescribed manner by such proprietor, be registered in his name in respect of those other goods as a defensive trade mark and while so registered, shall not be liable to be taken off the register in respect of those goods under the said section. "%
1. Bata India Ltd. v. Pyarelal & Co.
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In this case, the District Court of Meerut refused to grant injunction to the plaintiff, Bata India Limited (Bata), against passing off by the defendants, who were using the mark BATAFOAM for rubber foam used in manufacturing mattresses, sofas, cushions, and automobile seats. The plaintiff’s mark BATA is a famous footwear brand in India holding registrations for canvas, rubber, rubber plates, and leather shoes. The plaintiff argued that by using the mark BATAFOAM, the defendants were guilty of deceiving customers and such fraudulent and mala fide conduct amounted to passing off the plaintiff’s goodwill and reputation. The defendants, denying these allegations, alleged that they were involved in business different from that of the plaintiff, and because their product was sold as BATAFOAM, there could not be any confusion or deception. The District Court rejected the plaintiff’s claim by holding that the plaintiff had no registration for the mark BATA for mattresses, sofas, cushions, automobile seats, etc., and that because the defendants’ mark BATAFOAM was not identical in appearance to the plaintiff’s mark BATA, there could be no passing off. The decision of the District Court, on appeal, was reversed by the High Court of Allahabad. The court said that the defendant failed to give any reasonable or valid justification for the use of the name “BATAFOAM” which was likely to arise confusion in the mind of the unwary purchaser of average intelligence that it was a product pr oduct of the plaintiff. The court c ourt held: “It is this impression which may ultimately cause damage to the reputation of the plaintiff. It amounts to an invasion of his right vis-a-vis the name “Bata.” … The name “Bata” is neither a fancy name nor paternal name nor in any way connected with the defendants. It is not the name of a 33
AIR 1985 All. 242
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flower or fauna. It is a fancy name of a foreigner who has established his business in making shoes and the like products in this country. The name is well known in the market and the user of such a name is likely to cause not only deception in the mind of an ordinary customer but may also cause injury to the plaintiff-Company.”
It is pertinent to note that in this case, while the Court considered likelihood of confusion and deception by the defendants’ mark BATAFOAM as a factor in granting injunction to the plaintiff, it also took into consideration the injury which the plaintiff might suffer by the defendants’ use of their mark which was well-known in the market. 2. Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan
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This is the most celebrated case on trademark dilution prior to the 1999 Act. The issue in this case was the use of the mark BENZ along with a “three pointed human being in a ring”. Ignoring the defense of honest concurrent use by the defendant, the High Court of Delhi granted injunction to the plaintiff and observed that imitation of mark such as MERCEDES BENZ by anyone including the defendant would result in perversion of the trademark law in India. The Court held: “Such a mark is not up for grabs—not available to any person to apply upon anything or goods. That name . . . is well known in India and world wide, with respect to cars, as is its symbol a three pointed star.” 35
The Court further held: “In the instant case, “Benz” is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute 34
AIR 1994 Del. 239 Id. at Id. at 240
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that by user [sic] of the name “Benz” with respect to a product like underwears.”
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This judgment was the first by an Indian court which touched the concept of dilution of well-known marks. Even today, it is seen as a landmark decision on trademark dilution in India and its findings time and again have continued to be referred in cases dwelling on the protection of well-known marks. This is also the first case law in India which restrained the defendant from using the plaintiff’s well-known mark on the sole ground of free-riding, without bringing analysis of likelihood of confusion or deception into picture. 3. Kirloskar Diesel Recon Private Ltd. v. Kirloskar Proprietary Ltd.
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The plaintiffs, in a District Court of Pune, alleged that the use defendants’ use of the trademark KIRLOSKAR as part of their trade name amounted to passing off and such adoption of this mark was also in bad faith as one of the defendants had formerly worked for the plaintiffs. The District Judge passed an order restraining the defendants from using the aforesaid mark. On appeal before the Bombay High Court, the defendants argued that the nature of the business of both parties was different, thereby ruling out the question of likelihood of confusion or deception. They further alleged that the mark being a surname, any person with that surname was entitled to use it. The respondent plaintiffs argued that a trade name’s exclusive reputation was entitled to protection from tarnishment and also pointed out that the adoption of the surname by the defendants was not bona fide. Relying on the ruling of Mercedes Benz case,38 the Bombay High Court affirmed aff irmed that the law on passing off protected goodwill in a trademark against erosion, and that it was not intended to protect a person who deliberately set out to take advantage of 36
Id. at Id. at 242 AIR 1996 Bom. 149 38 Supra note 33 37
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somebody else’s commercial reputation. Also, taking into account that one of the defendants was once involved in the plaintiffs’ image-building program, the Court rejected the defendants’ appeals and affirmed the order of the District Judge. 4. Caterpillar Inc. v. Mehtab Ahmed
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A famous trademark CATERPILLAR came under attack when a local defendant in Delhi adopted it representing footwear. The plaintiff company, Caterpillar Inc. established since 1904 in USA, filed a suit for passing off and copyright infringement before the Delhi High Court. The Court framed two issues for consideration. Firstly, whether the trademarks CAT and CATERPILLAR could be monopolized by anyone; and secondly, whether the plaintiff was required to prove the use of the mark by showing sales of its goods under the mark in the country where it alleged passing off. The Court after making a detailed analysis of trademark dilution, found that the object of protecting well-known marks was to avoid the weakening or dilution of the concerned mark. The Court opined that it was a commercial invasion by the subsequent user and such kind of dilution or weakening of the trademark need not be accompanied by an element of confusion. The Court further stated that such use resulted in smearing or blurring the descriptive link between the mark of the prior user and its goods and reduced the force or value of the trademark. It further observed: “Another kind of dilution is by way of sullying or impairing distinctive quality of a trade mark of a senior user. This in common parlance is known as dilution by tarnishment. The object of such an invasion is to tarnish, degrade or dilute the distinctive quality of a mark. . . . .The act of dilution of mark by way of tarnishment is always with regard to well-recognised, strong 39
2002 (25) PTC 438 (Del.) ")
and famous marks; it should have effect to diminish or weaken the strength and identification value of the mark. There is no need to establish likelihood of confusion as to source, affiliation and connection.” 5. Honda Motors Co. Ltd. v. Charanjit Singh
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The plaintiff found that the mark HONDA was registered in the defendant’s name with respect to pressure cookers. The plaintiff therefore, filed an opposition and a suit for passing off, claiming international reputation and goodwill of its brand. The defendant, on the other hand, alleged that its use of the mark dated back to 1985; that the defendant was the prior user of the mark in connection with pressure cookers; that the parties’ respective goods were different, hence ruling out the possibility of any confusion or deception; and that the plaintiff’s claims were barred by laches as a result of its delay in filing the suit. The Court held that HONDA had a reputation for superior quality products in the field of automobiles and power equipment and that the defendant’s use of this mark in connection with pressure cookers would mislead the public into believing that the defendant’s business and goods originated from the plaintiff. The Court found that such use by the defendants had also diluted the goodwill and reputation of the plaintiff. The Court further held: “. . . The trade mark HONDA being of global reputation, its user by the defendants is likely to cause not only deception in the minds of ordinary customers but may also cause injury to the plaintiff company. . . .”
The Court’s decision in this case was based on two prime factors: firstly, deception of the public; and secondly, dilution of the plaintiff’s goodwill and reputation in connection with the mark HONDA. An analysis of the above 40
Id. at Id. at 442 2003 (26) PTC 1 (Del.)
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decisions shows that the Indian courts have applied the common law remedy of passing off to reach findings of dilution as an act of unfair competition. There being a lacuna in the existing law on trademark dilution, the principle of dilution by passing off was developed by the courts on the basis of globally recognised standards of protection of well-known trademarks. In addition to dilution of goodwill and reputation of trademarks, in most cases, the courts heavily relied on the elements of confusion and deception, except in Mercedes Benz case. Under the TMM Act, there was also no remedy available against infringement unless the well-known mark was registered in the class of goods for which the defendant chose to use the mark. However, the aggrieved trademark owners could still avail the remedy of passing off in the absence of a defensive registration, that too in a different class of goods.
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STATUTORY RECOGNITION UNDER SECTION 29(4) OF THE TRADE MARKS ACT
The Trade Marks Act of 1999 (TM Act), which came into force in 2003, vide Section 29 deals with the provisions of trademark infringement. Sub-section 42
(4) of Section 29 provides protection to registered trademarks having “a reputation in India” against the use by third parties in connection with dissimilar goods and services. The new Act, like its predecessor, does not explicitly refer to the term ‘dilution’. The statutory language does not mention dilution by name, but mirrors an equivalent basis for infringement in Section 10(3)43 of the United Kingdom’s Trade Marks Act, 1994. 44 One of the leading common law texts on intellectual property notes that Section 45
10(3) is “intended to allow protection against ‘dilution’. Even though there is similarity in the statutory language, the Indian courts are not under an obligation to follow the UK approach. It cannot be overemphasized that each case is ultimately decided on its own facts and circumstances.
46 47
However,
42
TM Act 1999, Sec. 29(4)- 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 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. 43 Sec. 10(3)- 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. 44 Dev Gangjee, “The Polymorphism of Trademark Dilution in India” 17 Trans. L. & Cont. Prob. 113 (2008) available at: at: papers.ssrn.com/sol3/papers.cfm?abstract_id=1273711 (Visited on 12 th March, 2012) 45 Ibid 46 Parle Products Produ cts Ltd. v. Ltd. v. J.P. J.P. & Co. Co . [AIR 1972 SC 1359] 47 Supra note Supra note 44 #"
the structure of Section 29(4) expresses Parliamentary intent about the standards required to establish dilution of trademarks, in connection with dissimilar goods or services. The ‘likelihood of confusion’ test, which was the prime consideration when the old law was in force, is not incorporated in Section 29(4). The object of dilution as a form of infringement under Section 29(4) is to provide wider protection to trademarks without the concomitant requirement of likelihood of confusion, as such protection is in respect of dissimilar or unrelated goods and services. The well-known marks, either 48
49
expressly or impliedly, are also referred to in Sections 2(1)(zg) , 11(2),
11(6),50 11(7),51 and 11(9).52 Before moving on to the course taken by Indian
48
See Chapter 3 “VULNERABILITY OF WELL-KNOWN TRADEMARKS” pg. no. 9 of this paper. 49 Supra note Supra note 42 at Sec. 11(2)- A trade mark 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, (c) 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. 50 Id. at Sec. 11(6)–The Registrar shall, while determining whether a trade mark is a well-known trade mark, take into account any fact which he 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. 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 gods or services to which the trade mark applies. iv. the duration and geographical area of any registration of or any publication 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 on Registrar under that record. 51 Id. at Sec. 11(7) – The Registrar shall, while determining as to whether a trade mark is known or recognised 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. ##
courts on dilution after the coming into effect of the new Act, it would be advantageous to first understand the nature, scope and purpose of the provision under Section 29(4) of the Act. First and foremost, for the application of Section 29(4), the registered trademark should have a reputation in India. It is only the reputed marks which are given protection from infringement in relation to use on dissimilar goods or services. 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: 53 1. without due cause takes unfair advantage of the distinctive character or reputation of registered trademark to which that trade mark applies. Id. at Sec. 11(9) – The Registrar shall not require as a condition, for determining whether a trade mark is a well-known trade mark, any of the following, namely:i. that the trade mark has been used in India; ii. that the trade mark has been registered; iii. That the application for registration of the trade mark has been filed in India; iv. That the trade mark— a.Is a.Is well known in; or b.Has b. Has been registered in; or c.In c.In respect of which an application for registration has been filed in, any jurisdiction other oth er than India; or v. that the trade mark is well-known to the public at large in India
52
53
Ashwani Kr. Bansal, Law Bansal, Law of Trade M arks in Ind ia 498 ia 498 (Institute (Institute of Constitutional Constitutional and Parliamentary Studies, New Delhi, updated edition, 2009) #$
2. without due cause is detrimental to the distinctive character or repute of the registered trademark In other words, if the offending mark trades on the reputation of the famous mark or dilutes the reputed registered trademark, the same would amount to dilution of goodwill of the well-known trademark. The extension of rights enjoyed by reputed marks in relation to their use on dissimilar goods or services in Section 29(4) addresses the requirement of Article 16 of TRIPS and is a corollary to the right of opposition granted to well-known trademarks in Section 11(2).
54
What is also notable that a
trademark can be a well-known trademark even without registration but it shall not be eligible for protection under Section 29(4) as the provision lends protection only to the registered well-known marks. While Section 11(2), a corollary to Section 29(4) and envisioning relative grounds for refusal of trademark registration, provides that a trademark that is identical or similar to a “well-known mark” cannot be registered for dissimilar goods or services, Section 29(4) does not mention “well-known marks” and rather uses the phrase “mark having reputation in in India”. Is it that the intent of the legislature was to protect well-known marks only at the stage of registration? If not, what are the reasons behind using different terminologies in Sections 11(2) and 29(4)? How far the courts have been successful in applying the doctrine of dilution in Indian jurisdiction and in expanding trademark jurisprudence in India? In I n light of these questions, it is pertinent to study and examine the rulings of the Indian courts and their role in evolving the doctrine of dilution in India.
54
Id. at 497 #%
1. Hamdard National Foundation v. Abdul Jalil
55
The plaintiff, who was the owner of the mark HAMDARD accompanied by an eye design, used in connection with the practice and manufacture of Unani medicines. In a suit for passing off and infringement before the Delhi High Court, the plaintiff alleged that the defendants were using the plaintiff’s well-known mark HAMDARD for Basmati rice in Class 30 and that the trade channels of the respective products overlapped as the plaintiff also sold beverages under the mark HAMDARD, hence the defendants’ use created likelihood of confusion and deception. Infringement of the mark under Section 29(4) of the TM Act was also specifically pleaded. The defendants counter-argued on the grounds of dissimilar products and bona fide adoption. 56
57
The High Court relied on several cases such as Bata, Caltex, and Honda 59
58
60
and also considered case laws of United States and Canada. The High Court on considering the recent trends in Canada and the pre-2006 decisions in the United States found that the mere advertence to existence of a famous mark was not sufficient to guarantee an injunction. The court was of the opinion that the plaintiff has prima facie established that the goods are dissimilar and the magnitude of resemblance and nature of products is such
55
2008 (38) PTC 109 (Del.) Supra note 33 57 Sunder Parmanand Lalwani & Ors v. Ors v. Caltex (India) Ltd. [AIR Ltd. [AIR 1969 Bom. 24] 58 Supra note 41 59 The U.S. Supreme Court, in Moseley, reviewed a Court of Appeal’s order holding that the mark VICTORIA’S SECRET was distinctive and that the evidence established dilution even though no actual harm had been proved. The U.S. Federal Trademark Dilution Act (FTDA) defines “dilution” as “the lessening of the capacity of a famous mark to identify and distinguish goods or services.” Reversing the concurrent findings of the district court and the court of appeals, the U.S. Supreme Court held that the 56
standard contemplated by the U.S. Lanham Act was not “likelihood” of dilution, but “actual” dilution. The Canadian Supreme Court in Mattel rejected an opposition to the use and registration of BARBIE in connection with restaurant services. services. In doing so, it reasoned that the mere fact that a mark was famous did not entitle its owner to a monopoly in connection with unrelated products and services. The Canadian court went on to affirm that there should be certain objective markers, which the “famous” mark must satisfy if the monopoly is to be granted. These should regard, for example: the inherent distinctiveness of the mark and the extent to which it has become known; the duration of the trademark use; the nature of the goods and the trade; and the degree of resemblance between the respective marks.
60
#&
that the defendants goods are likely to be confused with that of those of the plaintiffs, and the latter latter is likely to suffer from such injurious injurious association. The High Court, therefore, held that the standard for deciding what amounted to trademark infringement in connection with dissimilar goods and products was “likelihood of deception.” In interpreting Section 29(4), particularly taking unfair advantage of the senior mark causing injury or harm to it, the High Court relied on Moseley 61 decision of the US and concluded that to establish dilution, actual harm has to be proved. The court in this case echoed the rulings pronounced during the times when the old law, i.e. TMM was governing the trademarks in India. Even in interpreting Section 29(4), the court with special reference to the Moseley case, stuck to the requirement of likelihood of confusion or deception.
2. Ford Motor Co. v. Mrs. C. R. Borman
62
This case was decided by the Division Bench of the High Court of Delhi from an order of the Single Judge granting the defendants’ motion to dismiss the plaintiff’s complaint. The defendants filed their motion on several grounds, alleging that they were not subject to the jurisdiction of the Delhi High Court, that there was no infringement and that the plaintiff’s complaint did not state a claim for which relief could be granted. The defendants used the mark FORD in connection with footwear, to which the plaintiff objected in the suit before the learned Single Judge. The plaintiff’s infringement case rested on Section 29(4) of the TM Act. On appeal, the Division Bench reversing the order of the Single Judge held: “The view of the learned Single Judge is that the intendment of the Act could not be for a blanket protection to be made available to a 61 62
Supra note 15 2008 (2) CTMR 474 (Del.) (DB) #'
trademark in respect of the entire gamut of Classes. What should not be lost sight of is the fact that Section 29(4) is palpably an exception to the scheme of the Act and applies only to those trademarks which have earned a reputation in India. If it is, prima facie, clear or it is proved through evidence that the concerned trademark enjoys and commands a reputation in India, the Plaintiffs do not have to prove deception on the part of the Defendants or likelihood of the customer being misled because of the use of the challenged trademark. Once the Plaintiffs have made out a case that the offending trademark is identical with or similar to its registered trademark, relief would be available even if the purveyed goods are not similar and/or fall in the same category cat egory or class.” 63 64
Unlike in Hamdard, the Court in this case followed the language of Section 29(4) and found that if the mark enjoys a reputation in India, the plaintiff does not have to prove the defendant’s deception. 3. ITC Ltd. v. Philip Morris Products SA & Ors.
65
The suit between the parties in this case came before the High Court of Delhi over the defendant’s use of roof design logo containing the inverted letter ‘M’ on the ground of the alleged similarity between the logos of the plaintiff and the defendant. ITC, one of the largest private sector companies in India, alleged that the use of the ‘M’ logo by the defendant was violative of Section 29(4) of the TM Act. The plaintiff argued that the WelcomGroup logo was associated with the ITC group for 30 years, and defendant’s use of the logo could mislead customers, and injure the distinctiveness and exclusivity associated with the former. The court found plenty of evidence of use of W NAMASTE logo by the defendant Philip Morris in the hospitality and 63
Id. at Id. at 483 Supra note 55 65 2010 (42) PTC 572 (Del.) 64
#(
restaurant businesses, however, there was no evidence of use of this logo in connection with cigarettes. The defendant argued that while the W-NAMASTE logo was registered for cigarettes, but it was not used in connection with these goods by the plaintiff. The defendant further submitted that the plaintiff’s cigarettes were sold without the use of the W-NAMASTE logo under various other brands. The court after hearing arguments of both sides refused to grant preliminary injunction to the plaintiff . The plaintiff did not deny selling cigarettes, although under different brands, but without the logo in question, and this was considered to be a relevant consideration by the High Court which titled the balance in the defendant’s favour. The plaintiff even though proved that the logos were similar but as there was no connection between the defendant’s mark and the plaintiff’s services which could cause harm to the plaintiff or undue advantage to the defendant, the mark of the plaintiff, could not be said to have been diluted. diluted. The Court held: “This Court is of opinion that the test here (for dilution) is not exactly the same. For one, Parliament has consciously eschewed the “deceptively” similar standard—which is defined by Section 2, in relation to infringement claims under Section 29(4). This would mean that the identity or similarity standard is a notch higher—the claimant has to prove or establish that the two marks are identical with or similar to each other. The question of deception does not arise here. There must be a near identification of the two marks or they must have the closest similarity. The second aspect is that the other elements necessary to establish dilution— dissimilarity of goods, the claimant mark having a reputation in India; the use of the mark without due cause, resulting in detriment to it, or the
#)
defendant taking undue advantage, have to be established. These ingredients are all to be established, as the conjunctive “and” is used, in Section 29(4).
66
The court emphasized that the following four essential elements need to be established in order for a dilution case to succeed: 1. The diluting mark is identical or similar to the injured mark; 2. The injured mark has a reputation in India; 3. The use of the impugned mark is without due cause; 4. The use of the impugned mark amounts to taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark. This case deserves huge appreciation for providing the in depth discussion of trademark dilution. Till date, in particular, since the enactment of the TM Act, this decision can certainly be termed as the most significant one which examined the doctrine of trademark dilution. 4. Raymond Ltd. v. Raymond Pharmaceuticals Private Ltd.
67
The plaintiff’s mark RAYMOND is a popular Indian brand of men’s formal wear. The plaintiff’s complaint before the High Court of Delhi was that the defendant, which was a pharmaceutical company, used the plaintiff’s mark RAYMOND as part of its corporate name thereby amounting to infringement under Section 29(4). The Court said that the plaintiff’s case falls under of 68
Section 29(5) of the TM Act and further held that this subsection precludes the applicability of Subsection (4) when a defendant has adopted a plaintiff’s
66
Id. at 601 2010 (44) PTC 25 (Bom.) (DB) 68 A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade trad e name, or name nam e of his business busin ess concern con cern or part of the name, nam e, of his h is business busin ess concern con cern dealing de aling in goods or services in respect f which the trade mark is registered. 67
#*
registered trademark as its trade name or corporate name. On appeal to the Supreme Court, the plaintiff raised the following two issues: a) Whether Section 29(5) of the TM Act restrains the court from examining the claim of infringement of a registered trademark having a reputation in India as described under Section 29(4), if such infringement arises from the unauthorized use of such trademark as a trade name in respect of dissimilar goods or services; and b) Whether the registered trademark under Section 29(4) having a reputation in India refers to well-known trade mark? The Supreme Court refused to interfere with the order passed by High Court. By not dwelling upon the merits of the case, the apex Court erred and missed a rare opportunity to rectify the discrepancy between “well-known marks” and marks having “a reputation in India” under the TM Act, which till date remains an unresolved issue. Needless to say, Section 29(5) offers narrower protection to well-known marks, in fact, lesser than even the defensive registration provision under the old Act. The plaintiff, in such a case, would be more inclined to seek passing off action against the defendant for using the former’s mark as a trade name or corporate name with respect to dissimilar goods or services. If practically observed, the High Court failed to provide adequate protection to well-known mark by bringing it within the purview of Section 29(5) at the cost of a wider protection available under Section 29(4) which could not have been the intent of the legislature, given that codifying protection to well-known marks is one of the main objectives of the TM Act; and subsequent erring by Supreme Court by refusing to plug the aforesaid lacunae between well-known marks and marks having a reputation in India has added insult to injury which should have been healed by antiseptic in the form of judicial treatment. $+
5. Chorion Rights Ltd. v. Ishan Apparel & Ors.
69
Yet another case decided by the High Court of Delhi, the plaintiff in this case was the owner of the mark NODDY which is a famous character of Enid Blyton’s novels. Bringing an infringement action against the defendant for using the aforesaid mark for ready-made apparel for children, the plaintiff argued that the target of the defendant’s products were the children who read the plaintiff’s books. However, what is to be noted is that despite being aware about the defendant’s application since 2000, the plaintiff never approached the Court to seek relief in the form of injunction and also failed to establish use of the mark prior to 1995 when the defendant was granted registration of the mark. The Court observed: “The plaintiff has not adduced any evidence to show prior user in India, it is even not the prior registered registe red owner of the said sai d trademark in India. A claim of dilution cannot sustain against a registered owner of the trademark, as is clear from Section29(4). In this case the defendant has not only established prior user, at least from 1995, but also prior registration of the mark. While it may be true that some sections of the public, especially those exposed to a certain kind of education, and having access to imported books were aware of Noddy and were reading about his escapades in Toyland, so vividly created by Enid Blyton, (the author of this judgment being one such) and even retaining fond memories, yet the Court is not unmindful of the fact that there is not even a shred of evidence disclosing sales figures, as to importation of such books, authorized stockists, periodicity of such s uch sales, sal es, advertisements, areas where such sales s ales took place, pl ace, and their volume, etc.” 70
69
2010 (43) PTC 616 (Del.) Id. at 624
70
$"
The court, therefore, found that the plaintiff was not the prior registered user of the mark ‘NODDY’ in India and in such a case, a dilution claim could not be made against the defendant, as per the provision of Section 29(4). According to the findings of the court, the defendant was found to have established the prior registration as well as use of the mark. The court rightly decided the case in favour of the defendant, but in that process raised the following issues pertaining to well-known marks: a) Firstly, whether prior use in India is a pre-requisite for a well-known mark. The position with respect to prior use followed in India is that the first registered user of the mark globally would be treated as the first user of the mark in India. It is however, pertinent to note that Section 11(9) of the TM Act provides that use of a mark in India is not a factor the Registrar of Trade Marks is required to consider while determining whether or not a mark is well known. b) Secondly, the court failed to comprehend the reason behind the defendant’s adoption and use of the mark NODDY which is neither a surname, nor a word in any Indian language. 6. Kamdhenu Ispat Ltd. v. Kamdhenu Pickles and Spices Ind. Pvt. Ltd.
71
The plaintiff company, engaged in the business of manufacturing and marketing Steel Bars and other cognate products, cement and construction, chemicals
and
industry,
paints
and
varnishes,
industrial
oils,
pharmaceuticals, paper and cardboard, leather Bakelite and laminated products, etc. since 1995, filed a suit seeking injunction to restrain the defendant from manufacturing or dealing with any articles or products under the trade-name KAMADHENU or any other deceptively similar mark. The 71
2011 (46) PTC 152 (Del.) $#
plaintiff argued that the defendant's unauthorized use of KAMADHENU is an infringement of both corporate name trademark, as well as infringement by dilution, under Section 29(4) and (5) of the TM Act. The defendants by submitting that they have been using KAMADHENU since 1969 when it was started as a partnership involved in the business of manufacturing and retailing pickles, spices, jellies, juices, sauces, and processing articles and condiments used for the preparation of those goods, and they also established a small scale industry registration certification issued by the Maharashtra State Government in 1993 and also registration under the Bombay Shops and Establishments Act in 1999, established a prior use of the mark. On due observation and analysis of findings and evidences adduced, the court rightly came to the conclusion that the plaintiff has failed to establish the case for either infringement by dilution or of the corporate name, by the defendant and the suit itself does not disclose any cause of action for any of the reliefs claimed. The importance of this case lies in the fact that it spelt out the objective of trademark law and the essence of goodwill protection as a form of property. The court further reiterated essential elements of dilution and said: “Unlike in infringement of trademark in relation to similar goods or services, in the case of dilution (infringement of mark by use in respect of dissimilar goods or services) there is no presumption of infringement of the mark. This means that each element has to be established.”
72
The court further stated: “The analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the 72
Id. at Id. at 161 $$
enactment of Section 29(4). The plaintiff has to fulfill a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a "global" look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark.”73 7. Tata Sons Ltd. v. Manoj Dodia
74
In this case, the plaintiff company Tata Sons Ltd. for injunction, damages, rendition of accounts and delivering of infringed materials. Similar to earlier cases, the plaintiff of this case too alleged that the defendant by use of the trademark “TATA” has caused infringement of the plaintiff’s registered trademark and that the impugned mark is inherently deceptive and constitutes a misrepresentation to consumers that the goods of the defendant belong to the plaintiff or approved by it. The defendant did not appear before the court and therefore, the suit was proceeded ex parte. The court made the following observations: a) The doctrine of dilution, which has recently gained momentous, particularly in respect of well known trademarks emphasizes that use of a well known mark even in respect of goods or services, which are not similar to those provided by the trademark owner, though it may not cause confusion amongst the consumer as to the source of goods or services, may cause damage to the reputation which the well known trademark enjoys by reducing or diluting the trademark's power to indicate the source of goods or services. 75 73
Ibid 2011 (46) PTC 244 (Del.) 75 Id. at 246 74
%$ b) Another reason for growing acceptance of trans-border reputation is that a person using a well known trademark even in respect of goods or services which are not similar tries to take unfair advantage of the trans-border reputation which that brand enjoys in the market and thereby tries to exploit and capitalize on the attraction and reputation which it enjoys amongst the consumers. When a person uses another person's well-known trademark, he tries to take advantage of the goodwill that well-known trademark enjoys and such an act constitutes an unfair competition.76 c) The concept of confusion in the mind of consumer is critical in actions for trademark infringement and passing off, as well as in determining the registrability of the trademark but, not all use of identical/similar mark result in consumer confusion and, therefore, the traditionally principles of likelihood of confusion has been found to be inadequate to protect famous and well known marks. The world is steadily moving towards stronger recognition and protection of well-known marks. By doing away with the requirement of showing likelihood of confusion to the consumer, by implementing anti-dilution laws and recognizing trans-border or spill over reputation wherever the use of a mark likely to be detrimental to the distinctive character or reputation of an earlier well known mark. Dilution of a well-known trademark occurs when a well-known trademark loses its ability to be uniquely and distinctively identify and distinguish as one source and consequent change in perception which reduces the market value or selling power of the product bearing the well known mark. Dilution may also occur
76
Id. at 247 $&
when the well-known trademark is used in respect of goods or services of inferior quality.
77
Decreeing the suit in plaintiff’s favour, the court awarded the company punitive damages of 2 lakh rupees against the defendant. This looks like one of the most crystal clear cases decided by the Delhi High Court dealing with trademark infringement by dilution. In clear and unambiguous terms, the court batted around the well-known trademarks with reference to the reputation enjoyed in India as well as trans-border reputation, dilution of goodwill and unfair competition. Like some of the previous decisions, the court proved beyond doubt that the traditional principles of likelihood of confusion with every passing year is gaining inadequacy when it comes to protect famous and well known marks. Protection under Section 29(4): A Critical Analysis
Section 29(4) of the TM Act has brought about a much needed protective umbrella for well-known trademarks. Out of the three conditions required to determine dilution of goodwill in trademarks under Section 29(4) of the TM Act, it is not very difficult to establish the first two conditions, however, the third one, i.e. what is a well-known mark, suffers from serious vagueness and complications due to lack of guidelines and therefore the courts had to rely on foreign case laws of UK and US to plug the loophole. There are also other glaring discrepancies which time and again are affecting the accuracy of the courts to interpret provisions dealing with well-known trademarks, some of which are listed as follows:
77
Ibid
$'
1. The term “well-known mark” as defined under Section 2(1)(zg) of the TM Act provides no factors of determining whether or not a mark is well known, as a result, leading to ambiguity. The words “a mark which has become so to the substantial segment of the public which uses such goods or receives such services” are capable of numerous interpretations. Until and unless the guidelines are framed for determining the yardstick of well-known marks, inconsistencies will keep on arising like this and considerations relied on by the courts will continue to differ and the courts will end up pronouncing conflicting decisions in providing protection against dilution to well-known marks. 2. The vagueness of definition for well-known marks also upsets the enforcement provisions under Section 11 which makes it all the more important to frame guidelines for laying down the test of trademarks to qualify as well-known marks. Though reference at times is made to registration provisions encompassed in sub-sections (6), (7), and (9) of Section 11, but again, vulnerability owing to dearth of guiding principles makes its presence felt in enforcement proceedings, leaving it to the courts to unearth and take recourse to a pathway towards providing protection against dilution dilution to well-known marks. 3. The expression “registered trademark has a reputation in India” as used in Section 29(4), if viewed from a layman’s standpoint, refers to a well-known trademark. But at the same time, it ventilates the objection apropos the Parliament of inculcating two different expressions, i.e. “registered trade mark has a reputation in India” in Section 29(4); and “well-known mark” in Sections 2(1)(zg) and 11(2) of the Act.
$(
4. It is also notable that Section 29(4) nowhere alludes to bad faith adoption of a mark as a relevant factor in deciding whether the act of the defendant amounts to dilution of well-known mark of the plaintiff. Bad faith means predatory intent. 78 Wherever the intent of the defendant is to free ride the reputation or goodwill or advertisement or publicity of the plaintiff plaintiff is evident, it is a case of bad faith.
78
Supra note 53 at 263 Id. at 264
79
$)
79
U-TURN CARVED OUT BY SECTION 159(5) OF THE TRADE MARKS ACT
At the outset, Section 159(5) of the Trade Marks Act reads as under: “Notwithstanding anything contained in this Act, where a particular use of a registered trademark is not an infringement of a trademark registered before the commencement of this Act, then, the continued use of that mark shall not be an infringement under this Act.”
The introduction of well-known trademarks in the new Act which came into force with from September 15, 2003 is not to apply retrospectively to restrain a user of a trademark or trade name who has been in existence prior to the plaintiff achieving any such well-known status or reputation in India in view of Section 159(5). In the recently decided case of Radico Khaitan Limited v. Carlsberg Carlsber g India Private Limited, 80 recognizing this exception
under Section 159(5), the High Court of Delhi held: “A bare reading of the Sub-Section 159(5) would reveal that the same is the non obstante clause and would therefore prevail over in addition to what has been stated under the Act. The new Act of 1999 although extends the registration under the existing law of 1958 to the New Act. However, the exception is carved out under Sub-section (5) which states that the particular user of the mark if it is not an infringement under the old Act then, the same shall also not to be an infringement under this Act.”81
80
MIPR 2011 (3) 125 (Del.) Id. at 152
81
$*
The court further held: “The combined reading of Section 29 of the old Act and saving clause of Section 159 makes it amply clear that the user of the numeral 8 would not have been an infringement under the old act and injunction cannot be granted if it is i s established esta blished the said sai d numeral numer al does not indicate i ndicate the connection connect ion in the course of the trade with the Plaintiff. Thus, the said user cannot be extended to be an infringement under the new act by virtue of the saving clause of Section 159 of the Act of 1999.”
82
Legal rights of a third party to use a mark without causing infringement of a mark registered under the said 1958 Act, is protected under Section 159(5) of Jagpi n Breweries Ltd. the Act, as stated in Lowenbrau AG. v. Jagpin
83
Section 159(5) is evocative of the situations covered under Section 29(4) of the new Act only, which enables injunctions in relation to disparate goods as well. This would, therefore, mean that misuse of a trademark for disparate goods did not amount to infringement during the regime of the 1958 Act. It can further be inferred that if an infringing activity that was carried during the regime of the 1958 Act does not amount to infringement, the continuance of such an activity would not amount to infringement under the Act of 1999. This interpretation of the above provision, however, would mean that if an earlier infringing activity stood discontinued on September 15, 2003 and resurfaced
after the said date, it constitutes an infringement but an
uninterrupted activity does not. It would further mean that an old registration will be deprived of the benefit under Section 29(4) while a relatively new registration retains eligibility to sue for infringement. Such an interpretation would defeat the very purpose of enacting Section 29(4) of the Act. 82
Ibid 2009 (39) PTC 627 (Del.)
83
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It is also evident from the plain reading of Section 159(5) that its applicability is confined to the statutory remedy of infringement and has no applicability vis-à-vis to the remedy of passing off. Section 27(2) of the Act explicitly provides: “Nothing in this Act be deemed to affect rights of action against any person for passing off goods or services as the goods of another person or as services provided by another person, or the remedies in i n respect thereof.”
It is pertinent to note that Section 27 of the erstwhile TMM Act and TM Act of 1940 also contained the abovementioned provision in identical terms. The right to passing off action, therefore, is not affected by the statute including but not limited to Section 159(5) of the 1999 Act. On due analysis of Section 159(5) and the judicial pronouncements in which the provision has been referred, it can be inferred that a bare reading of Section 159(5) gives a crystal clear indication of a paradoxical situation emanating from the said provision which melts down the protection of trademarks in cases of continuing infringements. It is noteworthy that the expression “continued use” in Section 159(5) does not cover in its ambit any new infringing acts, that may be done after September 15, 2003. Any new act of invasion of trademark rights will not merge in the stream of pre-continued act of invasion of the same rights. By applying this situation to dilution of well-known marks, it can be implied that if the use of a well-known mark by the defendant in connection with different goods or services did not amount to dilution during the pendency of the TMM Act, then it would not be considered as dilution under the new Act of 1999.
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PASSING OFF: SAVING GRACE & A MORE RELIABLE REMEDY
Passing off provides a remedy against a trader who deceives the plaintiff trader's customers into believing that his goods are the plaintiff's goods. It redresses the wrongful conduct of the defendant in passing off his goods as the goods of the defendant. While the exact origins of passing off are unclear, it was recognized in common law in the 16 th century during the reign of Elizabeth I. There is evidence of passing off cases in both the Courts of Law and the Courts of Equity. The law regarding passing off was defined by Lord Langdale in Perry v. Truefitt :
84
“A man is not to sell his own goods under the pretence that they are the goods of another man....”
85
Passing off originally protected trade names as badges of origin, that is a link to the source of the goods. Over time protection has been extended beyond a badge of origin.86 Traders can now prevent their rivals from imputing a connection between their products by use of a mark, name or get-up. The tort of passing off lies in the misrepresentation by the defendant. The misrepresentation is zeroed on at the consumers of goods who are induced to buy the goods assuming that they belong to the plaintiff. Passing off action aims to remedy the actionable wrong which is based on the common law principle that nobody has the right to represent his goods or services as those of somebody else. The underlying principle is that trading must not only be honest but must not even unintentionally be dishonest. 87 The purpose of 84
49 ER 749 (1842) Rembert Meyer-Rochow, “PASSING OFF: PAST, PRESENT AND FUTURE” 84 TMR 39 (1994) available at: http://heinonline.org/HOL/LandingPage?collection=journals&handle=hein.journals/thetmr84&div =12&id=&page= (Visited (Visited on 3rd April, 2012) 86 Stephen Todd, The Law of Torts in New Zealand, 756 (Brookers, Wellington, Wellington, 2 nd edn. 1997) 87 Parker-Knoll Parker-Knol l v. Knoll v. Knoll International Internat ional Ltd. [(1962) Ltd. [(1962) RPC 265] 85
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passing off action is to protect commercial goodwill and to ensure that 88
purchasers are not exploited and dishonest trading is prevented and for that the plaintiff must establish that his goods or services have acquired a reputation in the market. There is no need to establish actual deception in 89
such cases.
Over the years, the Indian judiciary has been recognizing and accepting the common law remedy of passing off. Inspired from Lord Diplock’s 90
formulation in Advocaat case the Indian Supreme Court devised the test for passing off in Cadila Healthcare v. Cadila Pharmaceuticals Ltd . 91 as 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, hi m, (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.”92
88
Ibid Ibid 90 Warnink v. v. Townend [(1979) [(1979) 2 All ER 927 (HL)] 91 AIR 2001 SC 1952 92 Id. at 1956 89
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In subsequent cases, this five element test time and again was referred to and relied on by the courts for establishing whether or not the use of disputed 93
marks by the defendants amounted to passing off. Passing off action has stood the test of time and that is reflected in the Acts of 1958 and 1999 which under Section 27(2) have kept the common law remedy intact. Section 27(2) makes it crystal clear that registration of a mark in the trademark registry is irrelevant in a passing off action and a mere register entry of the mark does not prove that the person in whose name it is registered is the user 94
of the mark.
Dilution of goodwill in trademark, however developed it may be in the modern trademark jurisprudence, is not a complete remedy in itself in protecting well-known trademarks. It may be a diversion from the traditional law of trademark infringement, however, it owes its roots to the common law remedy of passing off. First and foremost, what has to be established is the confusion or deception. At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular.” 95
96
In the
context of passing off, dilution is a form of damage or injury emanating from misrepresentation in connection with goodwill or reputation of goods or services, rather than an independent cause of action. In other words, dilution is a genus of damage or harm within passing off accruing from likelihood of confusion or deception. In the light of this statement, let us briefly illustrate some of the leading case laws in which it has been, whether expressly or impliedly, affirmed that dilution is a genus of damage or harm within passing off accruing from likelihood of confusion or deception and that passing off can be alleged and proved even in case of dissimilar goods or services. 93
Bhavnesh Mohanlal Amin v. Nirma Chemicals Ch emicals Works Wor ks Ltd . [PTC 2005 SC 497]; Heinz Italia Ita lia v. Dabur India Ltd . [PTC 2007 SC 1] 94 Koninkhijke Philips Ph ilips Electronics v. Kanta v. Kanta Arora [2005 (30) PTC 589 (Del.)] 95 Hodgkinson Hodgkinso n & Corby Ltd . v. Wards Mobility Services. Ltd. [(1995) Ltd. [(1995) FSR 169 (Ch.)] 96 Supra note 44 at 107 %%
1. Bata India Ltd. v. Pyarelal & Co.
97
The High Court of Allahabad stated
that a passing off action would lie even if the defendants were not manufacturing or producing any goods similar to that of the plaintiff. 2. N. R. Dongre v. Whirlpool Corporation:
99
98
In this case, the international
goodwill and reputation of a trademark was protected under the law of passing off. The learned Division Bench of Delhi High Court held that the rights of action under Section 27(2) are not affected by provisions dealing with infringement or registered trademarks. On appeal, this position was reinforced by the Supreme Court as under: “Passing off action is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action of deceit.”
100
3. Caterpillar Inc. v. Mehtab Ahmed:
101
The High Court of Delhi accepted
the argument that this was a passing off situation involving a “spillover” reputation in India and that there was a likelihood of consumer confusion on the basis of identical goods being sold. The court believed that limited scope for dilution has been occasionally ignored in a few other passing off decisions as well.
97
Supra note Supra note 33 Supra note 53 at 572 99 20 IPLR (1995) 211 (Del.) 100 JT 1996 (7) SC 555 101 Supra note 39 98
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4. Honda Motors Co. Ltd. v. Charanjit Singh:
102
Captivating dissimilar
goods coupled with trans-border reputation criteria, the High Court of Delhi 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 plaintiff’s 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.” 103 5. Colgate Palmolive v. Anchor Health & Beauty:
104
It was held by the
Delhi High Court that that a substantial reproduction of a trade dress was liable to cause not only confusion but also dilution of distinctiveness of colour combination. 6. Frito-Lay India v. Guru Prasad Enterprises:
105
The High Court of
Delhi observed that the imitation of product packaging and color schemes would cause confusion and deception thereby resulting in passing off as well 102
Supra note 41 Id. at 17 104 2003 (27) PTC 478 (Del.) 105 2004 (29) PTC 537 (Del.) 103
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as dilution of the brands, labels and packaging of the plaintiffs. 7. United Distillers & Vintners v. Khoday Breweries:
106
In this case, the
use of the mark “Johnny Walker” was in dispute. It was held by the court that the plaintiffs would suffer adversely if the 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. 8. Hamdard National Foundation v. Abdul Jalil:
107
The High Court of
Delhi in this case held that the standard for deciding what amounted to trademark infringement in connection with dissimilar goods and products was “likelihood of deception” therefore, clearly indicating that even after the passing of the new Act and availability of protection under Section 29(4), passing off remedy can still be banked upon. Passing Off Action: An Appraisal
It is noteworthy that even after the strengthening of statutory protection against infringement in the TM Act, passing off trend in India has not been arrested. Under the old as well as the new Act, the action for infringement lies only in respect of registered trademarks. Passing off action, however, provides protection to unregistered trademarks as well. The Act of 1958 provided for infringement action to the registered trademarks only in connection with similar goods and also, there was no provision under which well-known trademarks could be protected against use of dissimilar goods or services. Prior to the commencement of the Act of 1999, i.e. till 15
th
September 2003, the unauthorized use of well-known marks in connection
106
2005 (31) PTC 369 (Del.) Supra note 55
107
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with different goods was remedied by passing off actions 108 which is a clear indication of the huge void filled by judiciary in India. Even after the commencement of the new Act, the courts (though with lesser frequency) have continued to recognize and take recourse to passing off action in cases of well-known trademarks used on different goods or services. The case study in this as well as the previous chapters also testifies that wherever statutory remedy has proved to be inadequate in protecting goodwill of well-known marks, passing off remedy has come to the rescue thereby keeping a check on dishonest and unfair competition. Therefore, taking into account the aforementioned facets, passing off can be appropriately termed as a saving grace and a reliable remedy. Moreover, Indian courts have rich experience in providing passing off remedy in a wide range of trademark infringement disputes, making it a settled sphere of trademark jurisprudence. Passing off is a quintessential weapon of choice where an interlocutory injunction is sought, particularly in situations of trans-border reputation and dissimilar goods. As proved by case laws illustrated earlier in this chapter, dilution is a recognized species of harm or injury within passing off, in which the mark in question is confusing or deceptive. Doctrine of dilution, even though recognised by courts in reference to Section 29(4) as a remedy independent of infringement action, owes its development to and flourishes in the protective blanket of passing off.
108
See Chapter 4 of this paper
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FUTURE ROAD MAP
Though the major development of the concept of dilution of trademarks took place in the post-liberalization stage, s tage, it is notable that the breakthrough was provided in the pre-liberalization pr e-liberalization period when Bata case cas e was decided by b y the Delhi High Court in 1985. Even though the Indian courts (Delhi High Court in most cases) have been dealing with cases on dilution for close to three decades, the doctrine of dilution of trademarks is still young and in the nascent stage, more so, due to the fact that the old Act provided only limited and inadequate protection to well-known marks and the courts relied on passing off action for disposing of cases. Before the new Act came into force, dilution was merely looked upon as a species of passing off dependent on finding of misrepresentation and the likelihood of consumer confusion. However, under the new Act, doctrine of dilution is impliedly recognized as an independent cause of action under Section 29(4). Though likelihood of confusion or deception is still an essential requirement to establish dilution owing to passing off action, there has been a drastic shift from it in the reign of the Act of 1999. In 1993, while deciding Mercedes Benz case, for the first time the court did not rely on likelihood of confusion criteria and restrained the defendant purely on the ground of free-riding, thereby laying the foundation stone of doctrine of dilution as an independent cause of action and leading to further developments which took place in subsequent cases as dealt in the fifth chapter. It is notable that even after considerable developments, be it through judicial decisions or recognition under statutory provision, doctrine of dilution still is not qualified to be termed as an independent cause of action and even now, it owes a part of its life to passing off action. For dilution to mature as an %*
independent and a more reliable doctrine, the following suggestions are to be taken into consideration: a) Enforcement provisions of the TM Act should be amended to include certain guidelines for determining whether or not the impugned mark is a well-known mark. Insertion of such guiding principles in the Act will complement the definition of well-known marks 109 and bring about more consistency and transparency in providing protection to well-known marks. It is true that time and again, passing off action has been an ideal weapon for the courts when it comes to protecting wellknown marks against dilution, however, lack of guidelines has continuous has ensured inefficiency in enforcement proceedings and such a lacunae needs to be addressed and remedied to counteract future repercussions and adverse effects. b) In order to tackle the inconsistency manifestly arising out of the erring by the Supreme Court in Raymond 110 case, of not repairing and rectifying the discordance between the terminologies used in Sections 11 and 29(4), i.e. well-known marks and marks having a reputation in India, the need of the hour is either an amendment to Section 29(4) substituting “well-known marks” in place of “marks having a reputation in India” or a judicial explication redressing the apex court’s missed opportunity by interpreting and bridging the difference in the terms used in the abovementioned provisions. This will help in curtailment of meting out different treatments to disputed marks by the courts and the registrar.
109
Sec. 2(1)(zg) Supra note 67
110
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c) Section 29(4) provides for protection against dilution only to the owners of registered trademarks. The Act contains no provision which lends protection to
unregistered trademarks clearly clearly indicating that
unregistered well-known trademarks are not entitled to protection from infringement in the form of dilution. Though this deficiency has been looked after by taking recourse to passing off remedy, it does not mean that statutory protection to unregistered trademarks should be completely ruled out. By legislative amendment, in addition to aforementioned suggested provisions, a provision enabling protection to unregistered trademarks should also be inserted which would not only reduce the dependence on the passing off principle in strengthening the claim of unregistered well-known marks against dilution, it would also expand the horizons of protection by stitching the worn out portions of the statutory blanket providing such protection. d) Silence of the TM Act on the aspect of trans-border reputation 111 is another cause of concern affecting well-known marks. Though judgemade law in passing off actions has been at the forefront in protecting trademarks with global reputation, the adequacy is still lacking and that calls for insertion of a statutory provision which would extend the protection to well-known marks having cross-border reputation. Substitution of the term “well-known marks” in place of “marks having a reputation in India" in Section 11(2) in addition to addressing the previously mentioned discrepancy, would also enable the wellknown marks based on trans-border reputation to claim protection 111
Anheuser Busch v. Budejovicky Budvar [(1984) Budvar [(1984) FSR 413 (CA)]; Yabushsiki Kaisha v. Kaisha v. Toshiba Appliances [19 IPLR (1994) 79]; Calvin Klein Inc. v. Inc. v. Intel Intel Apparel Syndica te [20 te [20 IPLR (1995) 83 (Cal.)]; N.R. Dongre Dong re v. Whirlpool Corporation [20 Corporation [20 IPLR (1995) 211 (Del.)]; Kamal (Del.)]; Kamal Trading Tra ding Co. v. Gillete UK Ltd. [(1998) Ltd. [(1998) IPLR 135 (Bom.)]; Sakalain Meghjee v. BM v. BM House (India) ( India) [2002 (24) PTC (Del.) 207]; Milment 207]; Milment Oftho Industries v. Industries v. Allergan Allergan Inc. [2004 Inc. [2004 (28) PTC 585 (SC)] &"
against dilution. The subject-matter of protection should be not the marks with a reputation only in India but the marks with global reputation. e) With regard to the exception carved out in the provision under Section 159(5), the courts need to resort to purposive interpretation. Each act of infringement gives rise to a separate cause of action. If the plaintiff is able to prima facie establish that the defendant has, after the aforementioned date, indulged in an act, which on its own constitutes an act of infringement, it would give rise to a new cause of action, independent of an already continuing cause of action, if any. From the above suggestions, it is quite evident that the trademark legislation in India to a considerable extent lacks the requisite mechanism of protecting trademarks, particularly in relation to dilution, unregistered trademarks and trans-border reputation and as depicted by the courts, more than statutory application, it is the passing off action which has had a bigger say in deciding cases relating to trademark infringement, be it in connection with similar or dissimilar goods. In this regard, the TM Act is a statutory dog lacking bite and fails to protect trademarks due to broken teeth and such a situation calls for dental treatment in the form of amendments and judicial clarifications, particularly with respect to dilution doctrine which would certainly contribute to the growth of trademark jurisprudence in India.
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BIBLIOGRAPHY
Statutes
1. Code of Civil Procedure, 1908 2. Federal Trademark Dilution Act, 1995 3. Lanham Act, 1946 4. Trade and Merchandise Marks Act, 1958 5. Trademark Dilution Revision Act, 2006 6. Trade Marks Act, 1999 Conventions and Treaties
1. Paris Convention, 1883 2. WTO-TRIPS Agreement, 1995 Books
1. Ashwani Kr. Bansal, Law of Trade Marks in India (Institute of Constitutional and Parliamentary Studies, New Delhi, updated edition, 2009) 2. Deepak Gogia, Intellectual Property Law (Ashoka Law House, New Delhi, 2010) 3. K.C. Kailasam & Ramuvedaraman, Law of Trade Marks & Geographical
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(Universal Law Publishing Co. Pvt. Ltd., New Delhi, 4 edition, 2011) ARTICLES & ESSAYS
1. Brajendu Bhaskar, “Trademarks Dilution Doctrine: The Scenario Post TRDA, 2005” 1 NUJS L. Rev . 637 (2008) 2. Latha R. Nair, “TRACKING THE PROTECTION OF WELLKNOWN MARKS IN INDIA: A BEFUDDLED PATH TO NIRVANA?” 101 TMR 1419 (2011) 3. T.G. Agitha, “Trademark Dilution: Indian Approach” 50(3) JILI 339 (2008) 4. Vivek Kumar Chaudhary, “Protection of Well-Known Trademarks and Weakening of Honest Concurrent User Defence” 15 JIPR 293 (2010) WEB SOURCES
1. Chase Covello, “FAMOUS TRADEMARKS IN U.S. LAW” available at: http://www.anticypher.net/lawresearch/famoustm10.pdf (Visited
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at:
www.law.suffolk.edu/highlights/stuorgs/jhtl/.../Goodberlet.pdf (Visited on 12th March, 2012) 6. Rembert Meyer-Rochow, “PASSING OFF: PAST, PRESENT AND FUTURE”
84
TMR
38
(1994)
available
at:
http://heinonline.org/HOL/LandingPage?collection=journals&handle= hein.journals/thetmr84&div=12&id=&page= (Visited on 3 rd April, 2012) 7. WIPO Document No. SCT/3/8 dated Oct. 7, 1999, available at: th
http://www.wipo.org http://www.wipo.org (Visited on 19 March, 2012)
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