DILUTION OF TRADEMARKS

THROUGH CASE LAWS

(Intellectual Property Laws-Project Report)

Submitted by:
1. Rupin Bal
61/10
10th Semester (Section B)
2. Naina
64/10
10th Semester (Section B)
Submitted to:
Dr. Jasmeet Kaur Egan Gulati

UNIVERSITY INSTITUTE OF LEGAL STUDIES, PANJAB

UNIVERSITY, CHANDIGARH

Contents

1.

INTRODUCTION................................................................................................ 1

2. UNFOLDING THE EVOLUTION OF TRADEMARKS: A HISTORY OF A BILLIONDOLLAR BUSINESS................................................................................................. 2

3.

MEANING: WHAT CONSTITUTES TRADEMARKS?..............................................3

4.

DILUTION OF TRADEMARKS.............................................................................4

5.

4.1

DILUTION DOCTRINE.................................................................................5

4.2

COMMON FORMS OF DILUTION.................................................................6

4.3

INTERNATIONAL STATUS............................................................................6

DOCTRINE OF DILUTION IN INDIA....................................................................7

5.1

6.

NATURE AND SCOPE OF SECTION 29(4) OF THE ACT................................8

CASE-LAWS...................................................................................................... 9

7. CONCLUSION AND SUGGESTION......................................................................16

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ACKNOWLEDGEMENT

The success and final outcome of this project required a lot of guidance and assistance
from many people and I am extremely fortunate to have got this all along the completion
of my project work. Whatever I have done is only due to such guidance and assistance
and I would not forget to thank them.
I respect and thank Dr. Jasmeet, for giving me an opportunity to do the project work on
the topic Dilution of Trademarks through Case laws.
I am thankful to and fortunate enough to get required help from my friends, library staff
and my family while I was working on this project.

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1.

INTRODUCTION

An apple a day, used to keep the doctor away;

The apple a day, earns millions of dollars today!
Hardly anyone of us now remembers that Puma is actually an animal from Cat family;
Apple can also be edible and Tick mark (Nike) simply implies an affirmative response.
One of the most amusing transitions the world is witnessing is, a Rabbit becoming
synonyms with Playboy, a Crocodile turning to Lacoste and a Twin-tailed Mermaid
revising its name to Starbucks. Thats the power of a Trademark!
Even without our realizing, Trademark has become another way of referring to brands. It is
rather very complex to understand that how unknowingly a Trademark may influence
purchasing decision of its consumers. For this reason the corporate houses must understand
the importance of trademark as an asset for their businesses and as a tool for effective
commerce.
In todays world, a trademark is not considered as a mere logo associate with the product but
bestows distinctiveness to it. Consumers sub-conscious mind feels a sense of satisfaction
regarding quality and genuineness of the product when he sees a well-recognised famous
trademark on it. Hence, it would not be incorrect to say that a trademark acts as a trustmark or quality-mark for the consumers.
In light of the growing importance of trademarks, countries across the globe started
recognising trademark as an intellectual product or intangible property; with various acts of
copying or infringing of the trademark right attracting civil and criminal penalties. Another
up-surging concept which is drawing national as well as international attention is that of
Trademark Dilution.
This project report seeks to discuss some legal concepts relating to dilution of trademarks
through case laws. But before we move on to the actual concept of dilution of trademarks,
lets have a brief look at the meaning of trademarks and the concept of doctrine of dilution.

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2. UNFOLDING THE EVOLUTION OF TRADEMARKS: A

HISTORY OF A BILLION-DOLLAR BUSINESS
The earliest marks were probably those markings on animals so a farmer, rancher or lord
could distinguish what animals belonged to whom. Artefacts from places such as ancient
Egypt have been found with various symbols carved thereon for religious and superstitious
reasons. "Potters marks" appeared in relics left from the Greek and Roman periods and were
used to identify the maker (potter) of a particular vessel. Use of marks to indicate ownership
of goods was particularly important for owners whose goods moved in transit, as those marks
often allowed owners to claim goods that were lost. Producers often relied on identifying
marks, for example, to demonstrate ownership of goods recovered at sea.
Around the 10th century, a mark called a "Merchants Mark," appeared, and symbols among
traders and merchants increased significantly. These marks, which can be considered one
kind of "proprietary mark," essentially were used to prove ownership rights of goods whose
owners were missing due to shipwrecks, pirates, and other disasters.
The English in the 13th century created trademark laws to avoid any replication of products
from a certain company to another.
In the 14th and 15th centuries when dramatic emergence of merchant and craft guilds,
trademark-like symbols and logos started to appear as identifiers for these firms. Local guilds
often developed reputations for the quality of their products, and when they did, the names of
the towns or regions in which those guilds operated became repositories of goodwill. To
maintain that goodwill, guilds needed to be able to restrict membership and identify and
punish members who produced defective products. Guilds therefore required their members
to affix distinguishing marks to their products so the guilds could police their ranks
effectively. These symbols were different from modern marks in that they emerged to benefit
the guilds, and were not for the benefit of the production mark owner.
The Industrial Revolution sparked the advent of what is now modern-day capitalism.
Gradually, the guild systems disintegrated, and free business was established. Marks began to
actively identify the source of goods rather than obligatory guild membership. About this
time, special criminal laws protecting trademarks were also developed out of early forgery,

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counterfeiting, and fraud laws. Civil protection was gradually and systematically established
against those who would use another's mark without permission ("infringers").1
The first modern trademark laws emerged in the late 19 th century. In France the first
comprehensive trademark system in the world was passed into law in 1857 with the
"Manufacture and Goods Mark Act". In Britain, the 1862 Merchandise Marks Act made it a
criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to
defraud'. In 1875 the Trade Marks Registration Act was passed which allowed formal
registration of trade marks at the UK Patent Office for the first time. Registration was
considered to comprise prima facie evidence of ownership of a trade mark and registration of
marks began on 1 January 1876.2
In the United States, Congress first attempted to establish a federal trademark regime in 1870.
This statute purported to be an exercise of Congress' Copyright Clause powers. However, the
Supreme Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade.
In 1881, Congress passed a new trademark act, this time pursuant to its Commerce
Clause powers. Congress revised the Trademark Act in 1905.3 The Lanham Act of 1946
updated the law and has served, with several amendments, as the primary federal law on
trademarks.4

3. MEANING: WHAT CONSTITUTES TRADEMARKS?

A trademark is any word, name, symbol, or design, or any combination thereof, used in
commerce to identify and distinguish the goods of one manufacturer or seller from those of
another and to indicate the source of the goods. 5 Though no standard international definition

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

/History /History.shtml (Last Visited Feb. 13, 2015).

2 Bently, Lionel, The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade
Mark (1860-80) in TRADE MARKS AND BRANDS: AN INTERDISCIPLINARY CRITIQUE, (Lionel Bently
et. al. eds., 2008).

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

4 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
(Last Visited Feb. 13, 2015).

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of trademarks is available, but Article 15(1)6 of TRIPS provides a definition for "sign"
which is used as or forms part of the definition of "trademark" in the trademark legislation of
many jurisdictions around the world.
The Trade Marks Act, 1999 in India, incorporates the concept of well known marks as
appears in Article 6 Bis of the Paris Convention for the Protection of Industrial Property. Sec.
2 (1) (zb) provides for definition of trademarks as follows:
(zb) "trade mark" means a mark capable of being represented graphically and
which is capable of distinguishing the goods or services of one person from those of
others and may include shape of goods, their packaging and combination ofcolours;
(i) in relation to Chapter XII (other than section 107), a registered trade mark
or a mark used in relation to goods or services for the purpose of indicating
or so as to indicate a connection in the course of trade between the goods or
services, as the case may be, and some person having the right as proprietor
to use the mark; and
(ii) in relation to other provisions of this Act, a mark used or proposed to be
used in relation to goods or services for the purpose of indicating or so to
indicate a connection in the course of trade between the goods or services, as
the case may be, and some person having the right, either as proprietor or by
way of permitted user, to use the mark whether with or without any indication
of the identity of that person, and includes a certification trade mark or
collective mark;

4. DILUTION OF TRADEMARKS
We have already realized the commercial importance a trademarks holds for the corporate
houses. Thence the modern trademarks laws enlist various civil and penal consequences
5 15 U.S.C. 1127.
6 Article 15, TRIPS: Any sign, or any combination of signs, capable of distinguishing the goods or services
of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs,
in particular words including personal names, letters, numerals, figurative elements and combinations of
colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs
are not inherently capable of distinguishing the relevant goods or services, Members may make registrability
depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs
be visually perceptible.

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which may be attracted on violating the trademark rights of the owner. The extent to which a
trademark owner may prevent unauthorized use of trademarks which are the same as or
similar to its trademark depends on various factors such as whether its trademark is
registered, the similarity of the trademarks involved the similarity of the products or services
involved, and whether the owner's trademark is well known (Dilution).
4.1Dilution Doctrine

Trademarks have dual functions. First, they indicate the product's source. Second, trademarks
have a marketing value and create a bond between the consumer and the brand. The
trademark infringement doctrine addresses the first function whereas trademark dilution
addresses the second.
The dilution doctrine provides protection for marks even when the traditional "likelihood of
confusion" test for infringement is not met. If defendant's use will tarnish, degrade or dilute
the distinctive quality of plaintiff's mark, an injunction may issue as relief against dilution.7
Dilution is therefore different from trademark infringement, because trademark infringement
always involves a probability of customer confusion, whereas dilution can occur even if
customers wouldnt be misled.8
Trademark dilution is defined as the lessening of the capacity of a famous mark to identify
and distinguish goods or services, regardless of the presence or absence of competition
between the owner of the famous mark and other parties or of likelihood of confusion. This
typically occurs as the result of blurring or tarnishment of the famous mark.9
In other words, unlike ordinary trademark infringements, dilution protection extends to
trademark uses that do not confuse consumers regarding who has made a product. Instead,
dilution protection law aims to protect sufficiently strong and well known trademarks from
losing their singular association in the public mind with a particular product.
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 What is Trademark Dilution? available at http://www.nolo.com/legal-encyclopedia/what-trademarkdilution.html (Last Visited Feb. 14, 2015),

9 Trademark Dilution available at

http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx (Last Visited Feb. 14, 2015).

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Thus, Dilution theory regards trademark not only as a commercial signature but also as a
silent salesman who directly comes in contact with the consumers.10
4.2Common Forms of Dilution

It is necessary here to define the two types of trademark dilution, namely, Blurring and
Tarnishment. In Mead Data Central v. Toyota11 the Court held that blurring includes, the
whittling away of an established trademarks selling power through its unauthorized use by
others upon dissimilar products. A mark is said to be tarnished when the impugned mark
links such mark to products that are of poor quality or which portray such mark in an
unwholesome or unsavoury context that is likely to reflect adversely upon the owners
product.
4.3International Recognition to Dilution Doctrine

Article 6bis of the Paris Convention requires countries to prohibit the use of a trademark that
is registered or well known.., 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. While this section does not provide
protection from dilution per se, it does recognize the need to protect well-known marks
against reproductions in addition to the traditional protection against imitation liable to create
confusion. However, some commentators believe that the Paris Convention only protects
famous marks against confusion, a protection granted by traditional trademark infringement
rights.
TRIPS went one step further and extended the protections of the Paris Convention Section 6
bis in Article 16 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. Arguably, this subsection provides a call for antidilution protection. As one commentator noted, the requirement that consumers perceive a
10 T.G. Agitha, Trademark dilution: Indian Approach 50 (3) JILI 341 (2008).
11 875 F.2d 1026 (2d Cir. 1989)
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"connection between" the senior mark and the junior mark "could be taken to mean only the
'mental association' required by dilution."12

5. DOCTRINE OF DILUTION IN INDIA

The old law in India, i.e the Trade and Merchandise Marks Act, 1958, did not provide for
trademark dilution, as is in the case of Section 29(4)2 of the Trademarks Act, 1999 by which
the anti-dilution provision has been first incorporated in a statute.
But, the principle of dilution was evolved by our courts prior to the Act, having regard to
internationally

recognized

standards.

In Daimler

Benz

Aktiegesellschaft

v.

Hybo

Hindustanone13 of the issues before the single judge bench was whether the defendant could
use the mark BENZ on underwear. Interestingly, the Honble Judge applied the doctrine of
dilution without using the word dilution even once in the entire judgment. However, the
Honble Judge used the word dilute once, towards the end of the judgment while stating, In
my view, the defendant cannot dilute, that by user of the name Benz with respect to a
product like under-wears. The judgment focused only on the great injustice that would be
done if the defendant were allowed to continue to use the mark and absolutely no analysis of
dilution or any related legal principle was made.14
The new Trade Marks Act, 1999does not contain any reference to 'dilution of trademark' per
se, but it introduces the concept of a well known trademark defined under Section 2 of the
new Act. Section 11 of the new Act lays down the criteria for determination of well-known
status of a trademark by the Registrar. Under Section 11 of the new Act, it would also be a
valid ground for refusal of an application for registration of a trademark, if it is similar to a
well-known registered trademark, regardless of the goods or services. The new Act requires
the Registrar to take into consideration bad faith in balancing the interests of the parties

12 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.

13 AIR 1994 Delhi 239.

14 Trademark Dilution: Yea or Nay (2013) available at http://www.selvamandselvam.in/trademark-dilutionyea-or-nay/ (Last Visited Feb. 12, 2015)

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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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FACTS: Plaintiff Panavision, owner of the marks Panavision and Panaflex in connection
with theatrical motion picture and television camera and photographic equipment, sought to
enjoin defendant Toeppen from using the domain names panavision.com and
panaflex.com. Toeppen did not use either domain name in connection with the sale or
promotion of any goods or services. Toeppens panavision.com website displayed an aerial
view of Pana, Illinois, and the panaflex.com website contained only the word hello.
When Panavision requested that Toeppen relinquish the panavision.com domain name,
Toeppen demanded $13,000 from Panavision.
Panavision filed this action against Toeppen in the District Court for the Central District of
California. Panavision alleged claims for dilution of its trademark under the Federal
Trademark Dilution Act of 1995 and under the California Anti-dilution statute, California
Business and Professions Code.
District Courts Decision: The district court framed the dilution issue as whether "the
defendant violated federal ... law by intentionally registering the plaintiffs trademarks as his
Internet domain names for the purpose of exacting payment from the plaintiff in exchange for
the termination of the registrations of the domain names. ' ' 20 The court then broke this issue
into three components according to the Federal Trademark Dilution Act of 1995 (Dilution
Act). In order to extend protection from dilution to Panavision's marks, the court had to
answer the following three questions affirmatively:
i.
ii.
iii.

Is the "panavision" trademark famous?;

Is Toeppen's use of the "panavision" trademark a comer cial use?; and
Did Toeppen's use of "panavision" as a domain name actually dilute the trademark?

The district court held that the "panavision" trademark was famous. The court noted that
Panavision had continuously used the mark since 1954. 21 Panavision's extensive advertising
included a display of the "panavision" trademark at the end of every movie that used its
filming products. 22 The court also relied on the fact that "panavision" is not a word found in
20 See Panavision, 945 F. Supp. at 1298. Panavision also invoked California trademark law, however, the court
held that California trademark law is substantially similar to federal law and proceeded to consider only federal
law.

21 See Panavision, 945 F. Supp. at 1303.

22 See id.
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the dictionary, indicating that it was an inventive word meriting stronger protection. Even if
"panavision" were a descriptive mark, defined as a word, picture, or symbol that directly
describes an aspect of the good, the mark would be protectable because it had a strongly
established secondary meaning as affiliated with photographic equipment.
The district court next held that Toeppen's use of the marks was a commercial use. The court
asserted that if Toeppen had simply registered the domain names but not demanded any
money for their use, his actions would not have been considered commercial.23 Instead,
according to the court, Toeppen's "business" was the registration of this and other domain
names with the intent of selling them to the trademark owners who wanted to use them as
their own domain names.24
Finally, the district court held that Toeppen's use of "panavision.com" actually diluted
Panavision's federally registered "panavision" trademark. However, the court did not reach
this conclusion through traditional trademark dilution analysis. The two established
categories of trademark dilution are blurring and tarnishment. The underlying property issue
at stake in Panavision concerns the assignment of property rights over this new type of
property, domain names. The current first-come, first-served system falls short of promoting
either efficient use of the Internet or viable trademark protection. Applying trademark
analysis is a more appropriate mechanism for regulating ownership of Internet domain
names.25
Appellate Courts Decision: On appeal, the Ninth Circuit affirmed and adopted the rationale
and analysis of the district court. The court agreed that Toeppens use of Panavisions
trademarks as domain names lessened the capacity of the marks to identify and distinguish
Panavisions goods and services. Not only would Toeppens use force potential customers to
search through the hundreds of websites retrieved by a search engine to find Panavisions true
website, but it would also remove control over the PANAVISION and PANAFLEX
trademarks and reputations from the rightful owner of the marks.
23 See Panavision, 945 F. Supp. at 1303.
24 See id. at 1300.
25 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. (Last Visited Feb. 15, 2014).

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The court found that defendants scheme to extort money from plaintiff prevented plaintiff
from using its own trademark as a domain name to establish a website easily located by
Internet users, unless plaintiff paid his fee.26 Ultimately, the Court found that while cyber
squatters did not fall under the traditional definitions of blurring and tarnishment, they did
fall under the broad definition of dilution under the Lanham Act 45. The court found that
Panavision customers would become frustrated if they could not find the company website
through domain search, and the Panavision trademarked would dilute as a result. They
furthered with the idea that prospective users searching for P's service would stumble upon
D's site and instead of searching further, due to frustration, anger, or the belief that P's site
does not exist, would search no further.27
6.2Moseley v. V Secret Catalogue, Inc.28 (Victors Little Secret Case)

This case is the Courts first opportunity to construe the FTDA. The Supreme Court was
asked to resolve a split among the federal circuit courts and determine whether dilution under
the FTDA requires a showing of actual economic harm or whether a showing that a
defendants mark is likely to cause dilution is sufficient.
Facts: The petitioners, Victor and Cathy Moseley, opened a store in a strip-mall in
Elizabethtown, Kentucky, named Victors Secret in 1998, selling lingerie and adult
novelties, among other items. The respondent, owner of the Victorias Secret trademark,
was not amused, and sent a cease-and-desist letter to the Moseleys. In response the Moseleys
changed the stores name to Victors Little Secret, but Victorias Secret was not satisfied
and sued.
District Courts Decision: Because the Moseleys acknowledged the famous status of the
Victoria's Secret mark, the only question before the district court was whether using the name
Victor's Little Secret diluted the distinctive quality of the Victoria's Secret trademark. The
court granted summary judgment to Victoria's Secret on the dilution claim, holding that the

26 Internet Trademark Case Summaries available at http://www.finnegan.com/Panavision-Intl-LP-v-Toeppen01-01-1998/ (Last Visited Feb. 13, 2015).

27 Panavision International v. Toeppen available at

http://www.casesofinterest.com/tiki/Panavision+International+v.+Toeppen (Last Visited Feb. 13, 2015).

28 2010 WL 1979429 (6th Cir. May 19, 2010).

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two marks were sufficiently similar to cause dilution and that the Victor's Little Secret mark
caused dilution through its "tarnishing effect" on the Victoria's Secret mark.
SIXTH Circuit COURT: The case reached the Sixth Circuit, which affirmed a finding that
the Victorias Secret mark was diluted under the FTDA, under a likelihood of dilution
standard.
SUPREME COURT: The Supreme Court reversed the Sixth Circuit's grant of summary
judgment on the dilution claim and remanded the case. The main question before the
Supreme Court was - Does the Federal Trademark Dilution Act require objective proof of
actual injury to the economic value of a famous mark for relief?
The Court held:
i.

that the FTDA "unambiguously requires a showing of actual dilution, rather than a

ii.

likelihood of dilution" and

that Victoria's Secret failed to prove actual dilution of their famous mark absent
evidence showing that the mark had lost some capacity to identify and distinguish
goods or services sold in their stores or advertised in their catalogues.

Consequent Events: Remand, TARA, 2006 and Decision ahead: The Trademark Dilution
Revision Act of 2006 (TDRA) was expressly intended to overrule the Supreme Courts
actual harm standard for dilution, which Congress deemed an undue burden for trademark
holders who contest diluting users. The new language in the TDRA provided that the
standard for proving a dilution claim is now a likelihood of dilution and that both dilution
by blurring and dilution by tarnishment are actionable claims. On remand from the Supreme
Court after the 2003 reversal, the district court reconsidered the case based on the new
dilution standard in the TDRA. The Moseleys did not introduce any evidence to disprove a
probability of tarnishment, and so the district court concluded that the connection between the
Victors Little Secret mark and the sexual goods sold under it disparaged and reduced the
positive associations and selling power of the VICTORIAS SECRET mark. The district
court again issued a permanent injunction against the Moseleys use of the name Victors
Little Secret. The Moseleys renamed their store Cathys Little Secret and appealed to the
Sixth Circuit. The Sixth Circuit affirmed the injunction against Victors Little Secret and
ruled that Congresss decision to pass the TDRA supported its finding of dilution by
tarnishment.

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The Moseleys had also argued that the TDRA should not apply to them, because it is not
retroactive.

The court rejected this argument noting that new statutes may be applied to

pending cases where prospective relief is sought for ongoing conduct.

This decision was appealed up to the Supreme Court again, but was not granted certiorari.
6.3Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan29

Decided in 1993 by the High Court of Delhi, this was perhaps the first Indian ruling that
looked in detail into the concept of dilution of well-known marks.
Facts: In this case defendant sold underwear and undergarments for men with the
representation thereof of a man with his legs separated and hands joined together above his
shoulders, all within a circle to indicate the strong suggestion of the link between the three
pointed star of Mercedes Benz car and the undergarments sold by the defendant
Daimler Benz Aktiegessellschaft, Germany, the plaintiff, who owns the famous three-pointed
star BENZ logo depicted above, sued the Indian underwear company for passing off. The
plaintiffs logo was registered in India in 1951
Courts Decision: Ignoring the defense of honest concurrent use by the defendant, the High
Court of Delhi granted the plaintiffs injunction and found that it would be a great perversion
of the law relating to trademarks if a mark such as MERCEDES BENZ with the three-pointed
star were humbled by indiscriminate imitation by anyone including persons like the defendant
who made undergarments. The Court held:
Such a mark is not up for grabsnot 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.
It was further held by the Court that trademark law was not intended to protect a person who
would deliberately derive the benefit of someone elses reputation with reference to goods,
especially when such reputation extended worldwide. The Court further went on to hold:1
18. 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 that by user [sic] of the name
Benz with respect to a product like under-wears.
29 AIR 1994 Delhi 239.
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This judgment is still regarded as a milestone decision on trademark dilution in India and its
findings continue to be cited in trademark disputes involving well-known marks. This is
perhaps the first and only case in India enjoining a defendant from using the plaintiffs wellknown mark on the sole ground of free-riding, without analysis of likelihood of confusion or
deception. In fact, the High Court ruled out confusion and deception by acknowledging the
ubiquitous reputation of the name BENZ in connection with cars.
6.4ITC Ltd. v. Philip Morris Products SA & Ors30

In the dispute between ITC and Philip Morris & Others for the alleged trade mark dilution of
ITC owned Welcome Group 'Namaste' logo by Philip Morris' stylized logo of the Marlboro
trademark, the Delhi High Court has ordered that ITC is not entitled to a temporary injunction
against Philip Morris. The Delhi High Court refused to grant an injunction against the use of
a device mark by Philip Morris in relation to its Marlboro brand of cigarettes in India. The
trademark action filed by ITC was based on the registration and use of its W-namaste logo.
The Delhi High Court held that the 1999 Act has enjoined protection against dilution, if the
following essential elements are established
1.
2.
3.
4.

the impugned mark is identical or similar to the senior mark;

the senior or injured mark has a reputation in India;
the use of the impugned mark is without due cause;
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.

It was further held that as the law does not provide for a presumption of infringement in the
case of dilution of trade mark, each of the aforesaid elements has to be established before an
injunction can be granted on this ground. The court also said that the test of similarity of
marks, namely dilution, was a notch higher than required in the said Act. It also held that in
deciding the question of the similarity of the two marks in a dilution action, the Court must
focus on the 'global' look rather than on the common elements of the two marks. The court
further held that though the 'aura' of the ITC mark could go beyond the niche hospitality
services and extend to other luxury goods; there was nothing to show that such association
could extend to cigarettes. The court considered this aspect to be crucial as ITC itself sold
cigarettes without the said mark. There was also nothing on record to show that the use of
Phillip Morris's mark would be detrimental to the distinctive character of the ITC mark. The
Court further held In the case of logos and other marks, the application of the identity or
30 2010 (42) PTC 572 (Del.).
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similarity test has to result in a conclusion that the rival marks bear a very close
resemblance, seen from an overall perspective.31

7. CONCLUSION AND SUGGESTION

31 Vaish Associates Advocates, Intellectual Property and Information Technology Laws, Vol. III Issue 2 (2010)
at 3available at http://www.vaishlaw.com/new/fp_ipit/_IP-IT-Laws%20Newsletter-October-2010-Vaish
%20Associates-India.pdf.

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TABLE OF CASES

1.
2.
3.
4.
5.

Daimler Benz Aktiegesellschaft v. Hybo Hindustanone AIR 1994 Delhi 239.

ITC Limited v. Philip Morris Products SA and Ors.2010 (42) PTC 572 (Del.).
Mead Data Central v. Toyota 875 F.2d 1026 (2d Cir. 1989)
Moseley v. V Secret Catalogue, Inc 2010 WL 1979429 (6th Cir. May 19, 2010).
Panavision International v. Dennis Toeppen 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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13. Vaish Associates Advocates, Intellectual Property and Information Technology Laws,
Vol. III Issue 2 (2010) at 3available at http://www.vaishlaw.com/new/fp_ipit/_IP-ITLaws%20Newsletter-October-2010-Vaish%20Associates-India.pdf.
14. What is Trademark Dilution? available at http://www.nolo.com/legalencyclopedia/what-trademark-dilution.html.

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