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Titlemy ipr
TagsTrademark Dilution Trademark Intellectual Property Law Civil Law (Common Law) Monopoly (Economics)
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Table of Contents
                            1. INTRODUCTION
2. UNFOLDING THE EVOLUTION OF TRADEMARKS: A HISTORY OF A BILLION-DOLLAR BUSINESS
3. MEANING: WHAT CONSTITUTES TRADEMARKS?
4. DILUTION OF TRADEMARKS
	4.1 Dilution Doctrine
	4.2 Common Forms of Dilution
	4.3 International Recognition to Dilution Doctrine
5. DOCTRINE OF DILUTION IN INDIA
	5.1 Nature and Scope of Section 29(4) of the Act
6. CASE-LAWS
	6.1 Panavision International v. Dennis Toeppen (Internet Trademark Case)
	6.2 Moseley v. V Secret Catalogue, Inc. (“Victor’s Little Secret” Case)
	6.3 Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan
	6.4 ITC Ltd. v. Philip Morris Products SA & Ors
7. CONCLUSION AND SUGGESTION
                        
Document Text Contents
Page 10

involved in the enforcement of “well-known” trademarks. Thus dilution of trademark would

occur from the infringement of a “well known” trademark.15

5.1Nature and Scope of Section 29(4) of the Act

First and foremost, for the application of Section 29(4), the trademark should be registered

and should have a reputation in India. Thus, a different terminology “a reputed trademark” is

used here instead of “well-known trademark” which is defined in the Act. The intent of the

legislature is not clear as to why there has been a substitution. However, courts have tried to

bring a distinction between the two in a few cases that have come before them, though not

successfully.

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:

1. without due cause takes unfair advantage of the distinctive character or reputation of

registered trademark
2. without due cause is detrimental to the distinctive character or repute of the registered

trademark16

The Delhi High Court analyzed the doctrine of dilution to some extent in ITC Limited v.

Philip Morris Products SA and Ors.17 Wherein the Court held as under:

“It may be seen …. that dilution of trademark is a species of infringement. Though

trademarks are concerned with protection of marks which have acquired a degree of

distinctiveness, in relation to particular goods and services, courts have, over the

15 INTERNATIONAL TRADEMARK ASSOCIATION REPORT, The Protection Of Well- Known Marks In
Asia-Pacific, Latin America And Africa (2004) available at
http://www.inta.org/Advocacy/Documents/INTAWellKnownMarksAsiaPacificLatinAmericaAfrica.pdf.

16 Palak Jain, Trademark Dilution in India RGNUL Student Law Review (2014) available at
http://www.rslr.in/rslr-blog/trademark-dilution-in-india (Last Visited Feb. 14, 2015)

17 2010 (42) PTC 572 (Del.).

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years recognized that in relation to marks which have achieved notoriety as to have a

reputation about the quality of products which the manufacturer, or services the

originator (of the mark) is associated with, then, even in relation to dissimilar goods

– or unrelated products, protection of such brand name, mark or acquired

distinctiveness is essential. This measure of protection to marks in relation to similar

junior marks, but for dissimilar goods is, in substance the protection against dilution

(or Blurring or tarnishment) of the mark.”

The Court, while referring to section 29 (4) of the Trade Marks Act, 1999 (the Act),

recognized the essentials for dilution as under:

1. The impugned mark must be identical or similar to the injured mark;
2. The one claiming injury due to dilution must prove that her/his 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 repute of the registered trade mark.

Here, the Indian Courts have taken a more lenient view than U.S. Courts. The judgment

merely states that the mark must have ‘a reputation in India’, whereas according to US law

the mark must necessarily be famous. The reputation of the mark is of great significance. The

user of a mark that is even averagely well known cannot claim dilution of that mark.

Distinction needs to be made between a ‘famous’ mark and a mark with ‘reputation’. The

reasoning behind this is simple, dilution rights being indeterminate in nature, the standard of

fame required to claim them must be high as well. A mark which is not highly distinct cannot

be diluted. It is also unclear whether a mark which has reputation in a particular sector of the

public or only in a particular area within India would also be entitled to protection from

dilution, within that sector or area.18

6. CASE-LAWS

6.1Panavision International v. Dennis Toeppen19 (Internet Trademark Case)

18 Supra 14.

19 141 F.3d 1316 (9th Cir. 1998).

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BIBLIOGRAPHY

BOOKS/JOURNALS REFERRED

1. T.G. Agitha, Trademark dilution: Indian Approach 50 (3) JILI 341 (2008).
2. TRADE MARKS AND BRANDS: AN INTERDISCIPLINARY CRITIQUE, (Lionel

Bently et. al. eds., 2008).

WEB-ARTICLES/WEBLINKS/WEB-JOURNALS REFERRED

1. INTERNATIONAL TRADEMARK ASSOCIATION REPORT, The Protection Of
Well- Known Marks In Asia-Pacific, Latin America And Africa (2004) available at
http://www.inta.org/Advocacy/Documents/INTAWellKnownMarksAsiaPacificLatinA
mericaAfrica.pdf.

2. Internet Trademark Case Summaries available at
http://www.finnegan.com/Panavision-Intl-LP-v-Toeppen-01-01-1998/.

3. Keola R. Whittaker, Trademark Dilution in a Global Age, U. Pa. J. Int'l Econ. L, Vol.
27:3 (2006) 907-38 at 920 availabe at
https://www.law.upenn.edu/journals/jil/articles/volume27/issue3/Whittaker27U.Pa.J.
Int'lEcon.L.907(2006).pdf.

4. Palak Jain, Trademark Dilution in India RGNUL Student Law Review (2014)
available at http://www.rslr.in/rslr-blog/trademark-dilution-in-india.

5. Panavision International v. Toeppen available at
http://www.casesofinterest.com/tiki/Panavision+International+v.+Toeppen.

6. Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds
Actual Confusion is Not a Prerequisite, 77 Mo. L. Rev. (2012) at 269 available at
http://scholarship.law.missouri.edu/mlr/vol77/iss1/10

7. Sheldon Mak Rose & Anderson, McDonald's Corp. v. Arche Technologies, Inc.:
Trademark Dilution without Tarnishment (1995) available at
http://www.usip.com/pdf/Article_Trademarks/tmdilwo.pdf.

8. The History and Development of Trademark Law available at
http://www.iip.or.jp/translation/ono/ch2.pdf.

9. The History Of Trademark Law available at
http://www.tabberone.com/Trademarks/TrademarkLaw /History /History.shtml

10. Trademark Dilution available at
http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx.

11. Trademark Dilution: Yea or Nay (2013) available at
http://www.selvamandselvam.in/trademark-dilution-yea-or-nay/.

12. Ughetta Manzone , Panavision International, L.P. v. Toeppen, Berkeley, Technology
Law Journal Volume 13 Issue 1 (Jan 1998) available at
http://scholarship.law.berkeley.edu/cgi/viewcontent.cgi?article=1170&context=btlj.

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http://www.casesofinterest.com/tiki/Panavision+International+v.+Toeppen
https://www.law.upenn.edu/journals/jil/articles/volume27/issue3/Whittaker27U.Pa.J

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