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

1
4

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

10
14
21
39
42
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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
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* Student, 08/ILI/LLM/2011, Indian Law Institute, Delhi
1
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.
!

1!

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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, the essence of contemporary trademark lies
in its power to sell, which depends on the following factors:
influence on public;
merit of the goods upon which it is used;
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.

2!

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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.

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2
T.G. Agitha, Trademark Dilution: Indian Approach 50(3) JILI 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 steel company. However, others believe that
the doctrine was espoused in England in 1898, in the case of Eastman
Photographic Material Co. v. John Griffiths Cycle Corp.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
trademark dilution vide his paper5 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
thereby to stimulate further purchases by the consuming public.6 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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3

15 RPC 105 (High Ct. of Justice, Ch. 1898)

Brajendu Bhaskar, Trademarks Dilution Doctrine: The Scenario Post TRDA, 2005 1 NUJS L. Rev. 640
(2008)
5
Frank I. Schechter Rational Basis of Trademark Protection 40(6) Harv. L. Rev. 813 (1927) available at:
http://www.jstor.org/discover/10.2307/1330367?uid=3738256&uid=2129&uid=2&uid=70&uid=4&sid=211
00737655691 (Visited on 12th March, 2012)
6
Id. at 818
4

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a gradual whittling away or dispersion of the identity and hold upon the
public mind of the mark or name by its use upon non-competing goods.7
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 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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7
Id. at 825
8
Sec. 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 deception9
The Act applies when an unauthorized user of a trademark attempts to trade
upon the goodwill established by a famous mark, thereby diluting the marks
distinctive quality.10 The protection under the Act applies only to trademark
owner and not the consumers. 11

12

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
proving actual harm for a cause of action to arise.13 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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9
15 U.S.C. Sec. 1125(c) of FTDA, 1995
10
Supra note 4 at 641
11
Ibid
12
TCPIP Holding Co. Inc. v. Haar 244 F.3d 88, 95 (2001)
13
Supra note 4 at 642
14
Ibid
15
37 U.S. 418 (2003)
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Later, in 2005, the US Congress challenged the Supreme Courts ruling in

Victoria Secret case16 and advocated the proposal of new dilution legislation.
Subsequently, the Trademark Dilution Revision Act, 2006 (TDRA) was
passed. The new legislation replaced 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 owners 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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16
Ibid
17
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)
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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 marks
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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18
Clarisa Long, Dilution 106(5) Col. L. Rev. 1034 (2006) available
papers.ssrn.com/sol3/papers.cfm%3Fabstract_id%3D942673 (Visited on 12th March, 2012)

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at:

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 marks ability to identify a product increases
consumers search costs.19
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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19
Id. at 1035
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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
term reputation which for the first time recognized in the 17th 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 22 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; 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 16.224
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20
(1617) 79 ER 400
21
Vivek Kumar Chaudhary, Protection of Well-Known Trademarks and Weakening of Honest
Concurrent User Defence 15 JIPR 293 (2010)
22
Nirvana refers to a state of bliss achieved by liberating oneself from desire, 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 THE PROTECTION OF WELL-KNOWN MARKS IN INDIA: A
BEFUDDLED PATH TO NIRVANA? 101 TMR 1419 (2011)
24
TRIPS 1995, Art. 16.2- Article 6bis of the Paris Convention (1967) shall 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
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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 bis26 of the Paris Convention or in Article 16 of
TRIPS, thereby leaving it to the national jurisdictions to define and interpret
the term. In the case of McDonalds Corporation v. Joburger,27 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.

28

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
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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 wellknown 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 use must be requested.
(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)
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General Assembly of WIPO, in September 1999. The recommendation29

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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29
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 goods and services. On the flip side, such
protection quite often leads to criticism that the owners of well-known marks
are also reaping what they have not sown.30 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--vis potential
harm to the plaintiffs 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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30
Supra note 22 at 1442
31
!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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32
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.
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1. Bata India Ltd. v. Pyarelal & Co.33

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
plaintiffs 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 plaintiffs 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 plaintiffs 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 plaintiffs 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 of the plaintiff. The court 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
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!AIR 1985 All. 242

33

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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 Hindustan34
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 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.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
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34
AIR 1994 Del. 239
35
Id. at 240
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that by user [sic] of the name Benz with respect to a product like underwears.36
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 plaintiffs 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.37
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 names 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 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
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36
Id. at 242
37
AIR 1996 Bom. 149
38
Supra note 33
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somebody elses 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 Ahmed39
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.)
!

18!

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.40
5. Honda Motors Co. Ltd. v. Charanjit Singh41
The plaintiff found that the mark HONDA was registered in the defendants
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 plaintiffs 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 defendants use of this mark in connection with pressure cookers would
mislead the public into believing that the defendants 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 Courts decision in this case was based on two prime factors: firstly,
deception of the public; and secondly, dilution of the plaintiffs goodwill and
reputation in connection with the mark HONDA. An analysis of the above
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
40
Id. at 442
41
2003 (26) PTC 1 (Del.)
!

19!

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.

20!

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
(4)42 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 Kingdoms Trade Marks Act, 1994.44 One of
the leading common law texts on intellectual property notes that Section
10(3) is intended to allow protection against dilution.45 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: papers.ssrn.com/sol3/papers.cfm?abstract_id=1273711 (Visited on 12th
March, 2012)
45
Ibid
46
Parle Products Ltd. v. J.P. & Co. [AIR 1972 SC 1359]
47
Supra note 44
!

21!

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
expressly or impliedly, are also referred to in Sections 2(1)(zg)48, 11(2),49
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 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.
!

22!

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.
52
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 well known in; or
b. Has been registered in; or
c.In respect of which an application for registration has been filed in, any
jurisdiction other than India; or
v. that the trade mark is well-known to the public at large in India
53

Ashwani Kr. Bansal, Law of Trade Marks in India 498 (Institute of Constitutional and Parliamentary
Studies, New Delhi, updated edition, 2009)

23!

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 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 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

24!

1. Hamdard National Foundation v. Abdul Jalil55

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 plaintiffs
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.
The High Court relied on several cases such as Bata,56 Caltex,57 and Honda58
and also considered case laws of United States59 and Canada.60 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
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

!2008 (38) PTC 109 (Del.)

55
56

Supra note 33
Sunder Parmanand Lalwani & Ors v. Caltex (India) Ltd. [AIR 1969 Bom. 24]
58
Supra note 41
59
The U.S. Supreme Court, in Moseley, reviewed a Court of Appeals order holding that the mark
VICTORIAS 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
standard contemplated by the U.S. Lanham Act was not likelihood of dilution, but actual dilution.
60
The Canadian Supreme Court in Mattel rejected an opposition to the use and registration of BARBIE in
connection with restaurant 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.
57

25!

that the defendants goods are likely to be confused with that of those of the
plaintiffs, and the latter is likely to suffer from such 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 Moseley61 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. Borman62
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 plaintiffs 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 plaintiffs 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 plaintiffs 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

Supra note 15

!2008 (2) CTMR 474 (Del.) (DB)!

62

26!

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 or class.63
Unlike in Hamdard,64 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 defendants 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 defendants 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 defendants 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 WNAMASTE logo by the defendant Philip Morris in the hospitality and
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
63

Id. at 483
Supra note 55
65
!2010 (42) PTC 572 (Del.)!
64

27!

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 plaintiffs 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 defendants favour. The plaintiff even though proved that
the logos were similar but as there was no connection between the
defendants mark and the plaintiffs 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. 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 standardwhich 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 higherthe 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

28!

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 plaintiffs mark RAYMOND is a popular Indian brand of mens formal
wear. The plaintiffs complaint before the High Court of Delhi was that the
defendant, which was a pharmaceutical company, used the plaintiffs mark
RAYMOND as part of its corporate name thereby amounting to infringement
under Section 29(4). The Court said that the plaintiffs case falls under of
Section 29(5)68 of the TM Act and further held that this subsection precludes
the applicability of Subsection (4) when a defendant has adopted a plaintiffs
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
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 name, or name of his business concern or part of the name, of his business concern dealing
in goods or services in respect f which the trade mark is registered.
67

29!

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 formers 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.
!

30!

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
Blytons 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 defendants products were the children who read
the plaintiffs books. However, what is to be noted is that despite being
aware about the defendants 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 owner of the said 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 sales, advertisements, areas where such sales took place,
and their volume, etc.70

!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
69

2010 (43) PTC 616 (Del.)

!Id. at 624

70

31!

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
defendants 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.)

32!

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 161

33!

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 Dodia74
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 plaintiffs 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

34!

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

!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

!Id. at 247

76

35!

when the well-known trademark is used in respect of goods or services

of inferior quality.77
Decreeing the suit in plaintiffs 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
!

36!

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 to well-known marks.
3. The expression registered trademark has a reputation in India as
used in Section 29(4), if viewed from a laymans 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.

37!

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 is evident, it is a case of bad faith.79

!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
78
Supra note 53 at 263
79
!Id. at 264
!

38!

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 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
81

MIPR 2011 (3) 125 (Del.)

Id. at 152

39!

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 established the said numeral does not indicate the connection
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
the Act, as stated in Lowenbrau AG. v. Jagpin Breweries Ltd.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!
83
2009 (39) PTC 627 (Del.)
!

40!

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--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 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.

41!

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 16th 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)
85
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 on 3rd April, 2012)
86
Stephen Todd, The Law of Torts in New Zealand, 756 (Brookers, Wellington, 2nd edn. 1997)
87
Parker-Knoll v. Knoll International Ltd. [(1962) RPC 265]
!

42!

passing off action is to protect commercial goodwill and to ensure that

purchasers are not exploited and dishonest trading is prevented88 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
such cases.89
Over the years, the Indian judiciary has been recognizing and accepting the
common law remedy of passing off. Inspired from Lord Diplocks
formulation in Advocaat case90 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,
(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
89
Ibid
90
Warnink v. Townend [(1979) 2 All ER 927 (HL)]
91
AIR 2001 SC 1952 !
92
Id. at 1956
!

43!

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
marks by the defendants amounted to passing off.93 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
of the mark.94
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 Works Ltd. [PTC 2005 SC 497]; Heinz Italia v.
Dabur India Ltd. [PTC 2007 SC 1]
94
Koninkhijke Philips Electronics v. Kanta Arora [2005 (30) PTC 589 (Del.)]
95
Hodgkinson & Corby Ltd. v. Wards Mobility Services. Ltd. [(1995) FSR 169 (Ch.)]
96
Supra note 44 at 107
!

44!

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.98
2. N. R. Dongre v. Whirlpool Corporation:99 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 33
98
Supra note 53 at 572
99
20 IPLR (1995) 211 (Del.)
100
JT 1996 (7) SC 555!
101
Supra note 39
!

45!

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 plaintiffs 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 defendants 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
103
Id. at 17!
104
2003 (27) PTC 478 (Del.)
105
2004 (29) PTC 537 (Del.)
!

46!

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 15th
September 2003, the unauthorized use of well-known marks in connection
!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!
106
107

2005 (31) PTC 369 (Del.)

Supra note 55

47!

with different goods was remedied by passing off actions108 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

48!

FUTURE ROAD MAP

Though the major development of the concept of dilution of trademarks took
place in the post-liberalization stage, it is notable that the breakthrough was
provided in the pre-liberalization period when Bata case was decided by 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
!

49!

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
courts 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)
110
Supra note 67
!

50!

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 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 reputation111 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) FSR 413 (CA)]; Yabushsiki Kaisha v. Toshiba
Appliances [19 IPLR (1994) 79]; Calvin Klein Inc. v. Intel Apparel Syndicate [20 IPLR (1995) 83
(Cal.)]; N.R. Dongre v. Whirlpool Corporation [20 IPLR (1995) 211 (Del.)]; Kamal Trading Co.
v. Gillete UK Ltd. [(1998) IPLR 135 (Bom.)]; Sakalain Meghjee v. BM House (India) [2002 (24)
PTC (Del.) 207]; Milment Oftho Industries v. Allergan Inc. [2004 (28) PTC 585 (SC)]
!

51!

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.

52!

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

Indications

(LexisNexis

Butterworths

Wadhwa,

Nagpur, 2009)
4. Morcom, Roughton, et al., The Modern Law of Trade Marks
(LexisNexis Butterworths, New Delhi, 3rd edition, 2008)

53!

5. P. Narayanan, Trade Marks and Passing Off (Eastern Law House,

New Delhi, 6th edition, 2004)
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Wellington, 2nd edition, 1997)
7. V.K. Ahuja, Law Relating to Intellectual Property Rights (LexisNexis
Butterworths, New Delhi, 2007)
8. T.R. Srinivasa Iyengar, Commentary on the Trade Marks Act
(Universal Law Publishing Co. Pvt. Ltd., New Delhi, 4th edition, 2011)
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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
on 16th March, 2012)

54!

2. Clarisa Long, Dilution 106(5) Col. L. Rev. 1029 (2006) available at:
papers.ssrn.com/sol3/papers.cfm%3Fabstract_id%3D942673 (Visited
on 12th March, 2012)
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Transnational Law & Contemporary Problems 101 (2008) available
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4. Frank I. Schechter Rational Basis of Trademark Protection 40(6)
Harv.

L.

Rev.

813

(1927)

available

at:

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