ABSTRACT:
Some products and services gain so much fame due to their quality and work that people start recognising them from their mark. The most prominent example of this is Nike Company’s swoosh symbol. The customers associate the quality of the product with their trademark. However, unauthorised use of these symbols is also evident in the present time just to gain profit under the shelter of the reputation of the renowned trademarks. This brings into the picture the concept of trademark dilution. In India, this doctrine was firstly included in statutory law in the Trade Mark Act, 1999. However, talking about other countries like the UK and the USA, trademark dilution laws in these countries are well developed as compared to India. This paper deals with the doctrine of trademark dilution, its origin in the world, and also in specific nations like India and the USA along with some landmark case laws.
INTRODUCTION:
“An image is not simply a trademark, a design, a slogan or an easily remembered picture. It is a studiously crafted personality profile of an individual, institution, corporation, product or service.” – Daniel J. Boorstin
The words of Daniel J. Boorstin evidently portray the importance the trademarks have in the commercial arena. In layman’s words, a trademark can be defined as a mark which can be graphically represented and it distinguishes the product and services of a person from that of others. It is a type of intellectual property which may consist of a word, design, phrase, symbol, etc.
However, there are various incidents where a person uses a trademark of a famous product or service to gain profits in the shelter of reputation and quality of the renowned mark. Here, the concept of trademark dilution came into the picture. Trademark dilution means unauthorised use of a mark of a famous product or service which results in the weakening of the distinctive quality of that mark. This unauthorised use causes damage to the renowned mark by reducing its uniqueness and reputation. Blurring and tarnishment are two essential features of trademark dilution. Dilution is therefore a concept which gives the owner of a renowned mark the power to restrain others to use that famous mark.
HISTORY OF TRADEMARK DILUTION
The origin of the doctrine of trademark dilution traced back to the case of Eastman Photographic Material Co. v. John Griffiths Cycle Corp. in 1898. In this case, the doctrine of trademark dilution was adopted in England. The point of contention was the use of the mark “Kodak” by a bicycle manufacturing company. This was the mark of the company of the plaintiff, a camera maker. The Court directed that the bicycle company cannot use the mark “Kodak bicycles” in spite of the fact that there was no direct competition between the bicycle company and the camera maker.
However, some people also consider that the origin of this doctrine dates back to 1925 in which it was adopted by the German Court. The incident behind the adoption of this doctrine was that a railroad and steel company used the trademark of a mouthwash named “Odol”. The Court held the railroad and steel company could not use that same trademark.
By the 1940s, Massachusetts came up with a statutory law of dilution but it could not be used effectively by the courts. After this, a great need for protection for trademark owners was felt. Then Federal Trademark Dilution Act, 1995 (FTDA) was passed by the US Congress by making an amendment in Section 43 of the Lanham Act. This was done in order to bring consistency in protection from trademark dilution and to abide by the obligations mentioned under the TRIPS Agreement. This Act brought into the frame a federal cause of action for trademark dilution. This Act provided protection to trademark owners but not to the consumers.
DILUTION IN INDIA:
After independence, Trade and Merchants Act, 1958 was enacted to govern the trademark law in India wherein well-known trademarks were protected in minimal. However, the term “well-known trademark” used in this act was not defined and caused great ambiguity. For the first time, a statutory provision regarding trademark dilution was introduced in the Trade Mark Act, 1999. This act came into force in 2003. Explicitly, this Act did not deal with the term ‘dilution’. However, Section 29(4) of this Act mentions that dilution serves as a base for trademark infringement. According to this Section, for an act of trademark dilution, it is necessary that a person use a mark which is:
- Identical to a registered trademark in India
- used in relation to good or service which is different from the one which is already registered
- the registered trademark owns a reputed position in India
- amounts to or takes unauthorised advantage of the registered trademark or damages the reputation of the same.
This section does not deal with the doctrine of mens rea i.e. whether the person’s intention who has done the unauthorised use of the trademark is relevant or not.
DILUTION IN THE USA:
In the USA, there are well-established laws on trademark dilution. In 1995, in order to deal with the problems related to dilution cases, Federal Trademark Dilution Act (FTDA) was enacted. However, this act failed to fulfill its objectives which led to the enactment of the Trademark Dilution Revision Act in 2006. The new act mainly aimed at providing efficient protection from trademark dilution and rectifying the shortcomings of the FTDA. Section 2(c)(2) of this act the owner of a reputed and distinctive trademark can claim injunction against the person who has used that trademark which is likely to cause dilution of the renowned trademark. For this, the presence of confusion, competition, and damages whether actual or likely does not matter. In India, it is necessary that the mark which is copied is “reputed”. However, in the USA, it is necessary that the mark is “famous”.
CASE LAWS:
The High Court of Delhi decided this case in 1993. This was the first Indian case in which the doctrine of trademark dilution was dealt with in detail. The point of contention in the case was the use of the mark “BENZ” in addition to a “three-pointed human being in a ring” by the defendant who was indulged in the business of undergarments. The plaint was filed by Daimler Benz Aktiegessellschaft who was the owner of the above-mentioned mark (three-pointed star BENZ logo).
The Hon’ble Delhi High Court observed that such an act of copying a mark of a world-class reputed product would amount to infringement of the law related to trademarks. The court stated that the star symbol is not open to anyone to apply to anything. Even if a layman will hear the name “Benz”, he will associate the same with the luxury car manufacturer, Mercedes Benz. Therefore, the court granted the plaintiff’s injunction.
In this case, the dispute was regarding the alleged trademark dilution of the Welcome Group “Namaste” logo which is owned by ITC. This alleged unauthorised use was done by Philip Morris Products SA, the defendant. The Delhi HC held that the Namaste logo was not used on the packs of cigarettes by ITC and that is the reason why the claim of ITC against Philip Morris for trademark dilution cannot be sustained.
This is a case of the USA, decided on April 23, 2020. Both the parties of the case i.e. Romag Fasteners, Inc., and Fossil, Inc. came into an agreement stating that they will use fasteners of Romag in the leather goods of Fossil. Later, Romag gets to know that some fossil product manufacturing factories in China were using forged fasteners of Romag. Due to this, Romag sued Fossil for infringement of the trademark. The USA Court, in this case, held that it is not a pre-requisite in such a suit for the plaintiff to prove that the infringement of the trademark by the defendant was done willfully in order to gain profit.
CONCLUSION:
This doctrine of dilution gives power to the owner of a registered and famous trademark. This doctrine helps in stopping the unauthorised use of trademarks and also maintains the reputation of the companies. The contribution of the renowned companies in the GDP growth of any nation and that too particularly in a developing nation like India is very significant. Therefore, the government owns a duty to safeguard the reputation of such companies which is infringed by the fraudulent use of the trademark. The Court, in various cases, interpreted section 29(4) of the 1999 Act which helped in the development of this doctrine. The analysis of the legal position of this doctrine in India clearly shows that dilution laws are given due importance to protect distinctive trademarks from undue advantages.
AUTHOR
Priya Kumari
Maharashtra National Law University, Aurangabad