Author- Nandini Bhagat
INTRODUCTION
A trademark is one of the most important features of Intellectual Property Rights as it provides an identity, a word, a phrase or a symbol that denotes a specific product and can be regarded as the identification of that specific product and also legally differentiates it from all the other products in the market trying to get a similar sort of identity for their product, therefore trademark acts protection for the products and safeguards its symbols, logos or taglines.
By using a trademark, one can stop third parties from using their goods or services without their consent. Additionally, they forbid any marks that could be mistaken for an already-existing mark. This means that a company cannot use a sign or brand name if it is identical to one that is already registered, especially if the products or services are connected, in terms of appearance, sound, or meaning. For instance, it is illegal for an e-commerce company to have a name that sounds like Amazon or a symbol that resembles Amazon.
Parliament abolished the 1958 Act and replaced it with the Trade Marks Act, 1999, to improve the protection of trademarks for goods and services and to stop the use of fraudulent marks. Trademark dilution was established by the Trade Marks Act of 1999. Trademark dilution is a legal concept that allows the owner of a well-known or renowned trademark to prevent others from using the mark in a manner that would decrease its distinctiveness. Unauthorized users copy well-known trademarks and create identical marks to deceive consumers.
Dilution of trademark acts as an important feature in trademark infringement where it allows the owner of a particular trademark or owner of a well-known product to have a famous trademark association prevents other companies to have a similar trademark and sort of creates a monopoly in the market to assure the uniqueness and originality of its product.
Also, it is suggested that companies should avoid having a common name for their brand or product as it can be trademarked easily by various other entities in the market and hamper the originality of the product. For example, Apple a famous electronics company pays billions of dollars for protecting their company’s logo in the market against other trademarked products having a similar logo, since apple is a common name for fruit as well, many companies trademark their product under the said logo or symbol. Rather it is suggested that the products must have a coined name, for example, Zomato or swiggy such names may not have any meaning associated with them but are widely addressed as food-delivering apps because of their unique marketing skills.
DOCTRINE OF DILUTION
It is under Section 29 (4) of the Trademarks Act 1999 that the doctrine of dilution of the trademark was first included under the statute.
Section 29(4) of The Trade Marks Act states that only when the following mark is used will there be trademark infringement in the form of dilution:
- Identical to or confusingly similar to a registered trademark that is already well-known in India and is used on goods or services other than those listed in the registration.
- If it is determined that using the infringing mark results in the following outcomes, infringement has occurred:
- When someone unfairly exploits a reputable mark or a mark with a distinctive character.
- When the mark is detrimental to an established or recognizable mark.
However, there have been cases that the courts have used the doctrine even before its inclusion in the statute. The famous case of Daimler Benz Aktiengesellschaft & Anr. v. Hybo Hindustan, in which the defendant utilized the mark BENZ combined with a three-pointed human in a ring for his underwear line, is one where the court used dilution prior to the act. In this case, the High Court granted the plaintiff an injunction and declared that anyone who copied a trademark like Mercedes-Benz would be violating Indian trademark law. “Such a mark is not up for grabs—not open to anyone to use to anything or commodities,” the court said. With regard to automobiles, both that name and its three-pointed star logo are highly known in India and throughout the world.
EXCEPTIONS TO DILUTION OF TRADEMARKS
Any legitimate use of a famous mark by a third party, including a nominative or descriptive use or the facilitation of such use, other than to identify the source of the third party’s products or services, including use in connection with-
- Promoting products or services in a way that enables consumers to compare them; or
- Recognizing the renowned mark’s owner and parodying, disparaging, or otherwise commenting on the products or services.
- News reporting and commentary in all forms.
- Any mark which incorporates parodies, criticism, or comments. In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, the defendant produced dog clothing under the mark “Chewy Vuitton,” which was a parody of the plaintiff’s well-known brand of “Louis Vuitton” clothing. The court ruled that because “Chewy Vuitton” was just a parody of “Louis Vuitton,” it did not infringe upon the brand’s trademark.
CONCLUSION
The authority granted to the owner of a famous trademark is known as the doctrine of dilution. This philosophy will assist in stopping the ongoing fraudulent acts and preserving the companies’ good names. These well-known businesses contribute to the rise in our nation’s GDP, and it is the responsibility of the government to shield them from rivalry and other dishonest business practices. A remedy offered by Section 29(4) is apart from the infringement action. The application of the doctrine of dilution relies on the judge’s discretion and the standards they set. The trademark cannot be used in the market to prevent confusion if it violates the standards set by the court.
