A recent decision of a Division Bench (Justices Vikramjit Sen and Bhayana) of the Delhi High Court in Ford Motor Co. v. C.R. Borman is perhaps the first decision to examine the concept of dilution in Section 29 (4) of the Trademarks Act, 1999. The decision is particularly important for its holding that ‘dilution’ under the Section does not require a finding of confusion.
Generally, a trade mark can be infringed only by a person who uses an identical or similar mark in relation to goods or services similar to the ones in respect of which the original trademark is registered. Thus, a person manufacturing ‘Surya’ shoe-polish would not be seen as infringing the mark of ‘Surya’ air-conditioners. On the other hand, a manufacturer of ‘Surya’ air-coolers may well be infringing the mark of ‘Surya’ air-conditioners. The reason for this is that the test for infringement is often seen to be the “likelihood of confusion test” – “Whether the use of the mark is likely to result in confusion amongst the consumers of the product?” Confusion is more likely to be caused when the two marks are used in similar businesses than otherwise. Thus, under common-law, actions for passing-off typically rest on misrepresentation and confusion; and dilution is “merely a genus of damage within passing off and reliant upon a determination of confusion or deception.” (Dev Gangjee, “The Polymorphism of Trademark Dilution in
However, this is not to say that the nature of the business is always determinative of the question of whether or not there has been infringement. In particular, under Section 29 (4) of the Trademarks Act, a trademark may be infringed even when it is used in relation to goods or services which are not similar to those for which the trademark is registered, if the registered trademark has a “reputation” in India and the use of the mark takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark. This provision is dependent not on the typical “likelihood of confusion” test, but on the concept of “dilution”, and has been discussed earlier on this blog in a post by Dr. Gangjee.
Essentially, the question before the Delhi High Court was as to whether using the mark of ‘Ford’ in respect of footwear would infringe the mark of the Ford motor company. The Court explained the position in the following words:
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
(Emphasis added)
It was then held that ‘Ford’ was a mark which had a reputation in
This may be because the Court was dealing with an application for return of plaint under Order VII, Rule 11 of the CPC. It is a settled position of law that in dealing with application for return or rejection of a plaint, the description of facts contained in the plaint must be taken as correct. In the plaint, the fact that the Ford mark had a reputation in
It is noteworthy, however, that in discussing the law on the point, the Court referred to the Parliamentary discussions (in particular on a statement in the discussions that “The proposed Bill … seeks to extend protection for well-known trademarks…”) in order to hold that Section 29 (4) was an exception to the general scheme of the act; and that “confusion” was not required to be shown under this exception for “well-known marks”. It appears that the Court was equating “well-known marks” and “marks with reputation”. The term “well-known trademark” is used in Section 11 (2) (b) of the Act (dealing with grounds for refusal of registration of trademarks); while Section 29 (4) specifically uses the word “marks with reputation and not “well-known trademarks”. Given this, it is possible to argue that the judgment should not have equated the two concepts. At the same time, it is essential to note that the two provisions are otherwise rather similar, and there is no real reason for distinguishing between the two concepts.
In this connection, the following propositions made by Dr. Gangjee in his article referred to earlier are apposite:
Despite such elaborate prescriptions for well-known marks, the statute remains strangely reticent about marks with a “reputation,” and we must look elsewhere for guidance on this point. Assuming such a differentiation was intended, one resource that explores these distinctions is Frederick Mostert’s comparative work on the international protection of well-known marks. This species of mark was first incorporated into the
Such incoherence may be avoided by resorting to the Trade Mark Rules of 2002. In particular, Rule 48(b)(vi), which specifies the content for notices on opposition to registration, appears to pragmatically equate the concepts of “well-known” and “reputation.” It is submitted that uniformly adopting the “well-known” standard is the more favorable approach, since detailed statutory guidelines are provided for this category and it requires a higher threshold of public awareness. The mark under consideration should truly deserve this broader protection.
To conclude, it can be said that the decision presents the following picture of dilution under the statutory framework:
- Section 29 (4) is an exception to the general scheme of the Act which requires the “likelihood of confusion” approach. ‘Dilution’ under the Section does not require a finding of confusion.
- In the ultimate analysis, mere similarity of marks and the fact that a mark has a reputation in
India - While the Court did not lay down exhaustively the test for determining when a mark can be said to have a “reputation”, it does have the merit of equating the concepts of “marks with reputation” and “well-known marks”. The legal tests for the two are presumably the same.
(I am grateful for the comments I received on an initial draft of this note from several experts, including Dr. Dev Gangjee, Shamnad Basheer, and others.)
On Dr. Gangjee’ statement that dilution is “merely a genus of damage within passing off and reliant upon a determination of confusion or deception.”
I beg to differ. To me, passing off is what a mark does to the consumer, while dilution is what one mark does to another. When we talk about Blurring and tarnishment as being limbs to dilution, we look at the effect of one mark over the other, and the two concepts are quite clear and distinct from passing off.
Hi,
Just to clarify, that statement was made in the context of dilution under common law. The statutory model is undoubtedly distinct. Under common law, actions will lie for passing off; and dilution is not an independent cause of action. Dr. Gangjee cites the Caterpillar decision of the Delhi HC (2002) as one which treats dilution as an independent cause of action. But he cites several other decisions where the confusion test is applied, and dilution is not a separate cause of action. (pp.108-110 of the article)
(I received a comment from a reader, Mr. Peter Groves, who was unable to post his comment directly and so sent it to me through email. The comment is reproduced below.)
When our Trade Marks Act came into operation in 1994 (and yours is very similar to it) the first case that raised a dilution claim failed because the deputy judge insisted that confusion had to be present: Baywatch Productions v Home Video Channel [1997] FSR 22. It has always struck me as a clear case of precisely the sort of thing the dilution action was introduced to stop – the claimants’ Baywatch trade mark, and the defendants’ series of pornographic videos under the name Babewatch. It’s good that the Indian courts have avoided that pitfall.
The provisions on dilution in the 1994 Act have always baffled me a bit – well, lots of things baffle me. The Act talks about a trade mark with a reputation, but don’t all trade marks have a reputation? I suppose they don’t, actually: the reputation is something separate from the trade mark, of which the trade mark is an indication that allows the public to recognise the goods they like and to buy them on the strength of that reputation, which is the business’s reputation not the trade mark’s. So to talk of a trade mark with a reputation is odd. I think a well-known mark is a different matter: the mark is well-known because of the reputation of its owner. Moreover, legally speaking, a well-known trade mark is something the Paris Convention recognises (as your posting mentions).
Our Trade Marks Act comes from a European Community Directive, and it is instructive to look at other language versions of teh directive. Well, for me, it might be useful to look at the French one as I know a little French, and the French version of the drirective uses words that might be better translated as “a trade mark of repute”. I reckon this is something rather different from a trade mark with a reputation, but I’m not sure where the difference lies!
The French legislation which implements the directive also has an interesting approach. It affords protection against dilution only to “well-known” trade marks (using the same expression as in the provision that deals with the Paris Convention type of well-known mark). I think that’s wrong (but I haven’t bothered telling the French government!).
Thanks for touching on an intersting area of trade mark law, and telling me about how it is treated in India. I hope you find my comments as interesting as I found your posting!
Regards
Peter Groves
Dear Divs
I wonder if you’ve had a chance to read my arguments on why ‘dilution’ (the quotes are intended) is a species of harm/damage under the third limb of the passing off – goodwill, misrepresentation and damage.
Very simply, where two marks are confusingly or deceptively similar [Coca Cola and Cokie Cola, both used on soft drinks], lets presume there is a misrepresentation under passing off. Consumers are confused and the ability of Coca Cola to clearly identify the origin of its products is impaired. In other words its distinctiveness (the ability to indicate a products origin and distinguish it from others) is impaired. And dilution/blurring is defined as ‘detrimental to distinctive character’.
Here dilution flows from confusion; confusion is always a sub-set of dilution. That’s why its possible to fit it – somewhat awkwardly – under passing off, but not as an independent cause of action. As Mihir observes, in the TMA 1999 it is an independent cause of action. Distinctiveness can be potentially detrimentally affected even in situations where there is no confusion.
Best wishes,
Dev
Hi Mihir,
A very interesting post. Thank you so much for that.
You have mentioned this to be the first judgement from the DB stressing on the aspect of dilution. I am not too sure if that is correct.
In light of the above discussions, even in a passing off action, a dilution action in unrealted goods has been protected. Additionally, I wonder if the term “dilution” has ever been interpreted?
“Given this, it is possible to argue that the judgment should not have equated the two concepts. At the same time, it is essential to note that the two provisions are otherwise rather similar, and there is no real reason for distinguishing between the two concepts.”
Sophistry, it seems, is the hallmark of a lawyer.
Dev, it was really good to see a post by you in SpicyIP. Your writing, as always, was of a high standard. While I have to shamefully admit that I haven’t yet read your Transnat’l L. & Contemp. Probs. article, I am deeply concerned by the free speech implications of s.29 TMA. As I see it, the only part of it which affords any kind of free speech protection is the “without due cause” requirement. (Because the section goes on to say “takes unfair advantage of or is detrimental to”, and the “is detrimental to” would, unless a high enough standard is set by the courts, be easy to prove.) That is something I’d like Mihir to address as well, since he asserts that the court laid down “unfair advantage” as a requirement. But isn’t it a “unfair advantage” (to “dilutor”) or “detriment” (to “dilutee”)? Is the court wrong in its assertion? Have you misread the judgment? Or am I not seeing something very obvious here?
And even “without due cause” seems to place a burden on the defendant of having a “cause” for the alleged dilutionary (dilutory?) act, since it seems that once an assertion of “without due cause” is made, the burden lies on the defendant to show the existence of the same. Proof of there not having been a cause is of course easier to come about than proof of there having been a cause for using the same or a similar trade mark. “Cause”, thus, to me seems to be a heavy burden, even though “without due cause” seems to be the only free speech affordance.
I know I’ve been rather cryptic in my free-speech comments above. If it is impossible for you to understand, then I guess I’d give another shot at explaining myself, but circumstances don’t seem to permit to do so for a while. Until then,
Anon. Cow.
@ Anon,
Thank you very much for your comments. In case you are aware of any other decision interpreting 29(4), could you please send it to my by email or, let me know the citation through the comments?
Thanks a lot!
Mihir
@AC
Sorry about the sentence construction there 🙂 Also, yes the requirement is advantage or detriment. My point was not that the judgment requires advantage; but that it requires the demonstration of advantage/detriment at trial through evidence. Similarity + reputation are not enough to succeed at trial. In the facts of the case, the plaintiff pleaded unfair advantage in the plaint; so I just mentioned that aspect.
Will comment in a bit more detail later.
Mihir
@Mihir
I hadn’t (and still haven’t) read the judgment, so it was a question of doubt — not rhetorical. Thanks for the clarification.
Any Dick and Harry can get a Trade Mark in India for any goods or service whether he is really manufacturing the goods or providing services or not. For registration of trade mark reputation or famousness is not required. Please correlate this case with Infosys Vs Jai Infosys, Hari Potter Vs Hari Puttar case. TATA Godrej Wipro HCL are famous trade marks. Famous,Reputation and Well Known comes into picture in the litigation stage. One Trade mark used and well known in UP may not be known by people in Kerala. Similarity, distinguishness and Deceptiveness should be criteria for deciding the cases. Ford Motors and Ford Shoe there is no relation between these two. There are not similar in any case and deceptive in any case since products are not similar. No fool will buy shoe(Ford) instaed of a car(Ford) and Vice versa. If you take reputation and famous into picture like the Ford case(Car and Shoe) here quite a good no. of the Trade Marks registered should be cancelled from Trade Marks register as per Court’s interprretation.
ECJ deals blow to famous marks in Intel case
The European Court of Justice has raised the bar for famous brand owners wishing to prove dilution in Europe in a ruling today More
Dear Dev,
You state:” confusion is always a sub-set of dilution”
How so?
Like Divs, I’m not entirely convinced that conceptually, “dilution” ought to be accomodated within the broad genus of “passing off”. Thomas Mc Carthy expresses this best. See here http://www.inta.org/downloads/tmr_McCarthy.pdf, where he notes in particular that “The mark that confuses does not necessarily dilute”.
I’m reproducing the entire paragraph of the McCarthian analysis below:
“Dilution by blurring and infringement by a likelihood of confusion are not stops along the same railway line: they are different lines altogether.
They are separate lines because they are
separate kinds of consumer perception. In the United States, some courts and commentators see blurring and confusion merely as different points along a single line continuum of consumer perception. In my opinion, this is a seriously erroneous view and misses the key difference between the two doctrines. The mark that confuses does not necessarily dilute. It does not because dilution is and should be a separate legal theory positing a different kind of damage to a mark caused by a different form of consumer perception. Any attempt to weld the two doctrines together is bound to result in error and bafflement. Examples are the 2003 European Court of Justice decisions in Davidoff and Adidas.”
Dear Shamnad and Anon. Cow.
Apologies for the slowness of the response.
I agree with the spirit of McCarthy’s argument that dilution (blurring) and confusion should normatively be two separate actions, but he doesn’t explain why this is the case.
Conceptually, if (i) dilution is defined as detriment to distinctiveness and (ii) distinctiveness is the ability of a sign to indicate the origin of its goods from a specific commercial undertaking as opposed to other undertakings, then (iii) confusion intereferes with the origin indicating ability of the sign as well.
By that yardstick, genericide also intereferes with the origin indicating ability of a sign. Once every competitor starts calling their product hoover or escalator, the original TM is no longer distinctive. However the original TM owner always has a strong case under likelihood of confusion to prevent generic use (any early competitors who used ‘hoover’ on their vacuum cleaners would be using identical signs on identical goods – very easy to prove confusion and stop them)
A lot depends on how one concpetualises the harm in dilution. If the harm is damage to brand value or affecting a mark’s pullling power, or a marks uniqueness then dilution and confusion may be different things.
However once dilution is conceptualised narrowly as detriment to distinctiveness – and this is what the ECJ has endorsed in Intel, the US Dilution Revision Act spells out in statutory language and the Indian Act specifies, then confusion could be treated as a sub-set of dilution type harm.
Dilution is therefore what we could call the non-confusing intereference with the origin indicating ability of a sign. The relationship which is being harmed is the sign’s distinctiveness – not merely its uniqueness, not its brand equity, not its selling power as detatched from distinctiveness.
Here this connects to Anon. Cow’s comments. If dilution is defined as detriment to distinctiveness, then uses for parody or critical purposes should not be infringing (along the lines of the recent US Chewy Vuitton decision). Anyone who makes fun of a Barbie doll is (a) first recognising the original TM as identifying Mattel’s doll and (b) then making fun of he values associated with it. If anything, step (a) strengthens a TM’s distinctiveness – the ability of BARBIE to indicate the doll.
Also, as you noted, due cause remains a potential platform for developing either pro-competitive or free speech defences.
Dev
Dev,
I’m still not able to fully appreciate your broad statement that “confusion” will always involve “dilution” as well (you state that “confusion” is a subset of “dilution”).
While I appreciate that this may be so in some cases, I’m not entirely sure that it is necessarily true in all cases? Consider a highly (and inherently) distinctive brand like Kodak. Assume that Kodak Inc files its first TM lawsuit against a third party using the name “Kodak’ to sell cameras, alleging that the consumer associates the third party product with the original TM owner i.e. Kodak Inc. Since the consumer thinks that this product emanates from the original Kodak Inc, how is there a loss of distinctiveness in terms of Kodak Inc’s ability to distinguish its goods from others? Why do we assume that the mere fact that a third party uses this name would, in some way, cause a detriment to the very distinctiveness of the trademark? Particularly when the mark is a highly distinctive one and there is proof of clear customer confusion.
In short, shouldn’t the issue (whether or not “confusion” also entails “dilution”) be a case specific enquiry than a given in every case? And I think this may be what McCarthy was trying to get at.
For those following this thread, without benefit of having the Trade Marks Act beside them, let me down two sections:
—-
Section 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.
And section 29(8):
A registered trade mark is infringed by any advertising of that trade mark if such advertising –
(a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or
(b) is detrimental to its distinctive character; or
(c) is against the reputation of the trade mark.
—-
@Shamnad
While I agree with you, I think there is much confusion being caused by ambiguous nature of the term “distinctiveness”.
You ask, “is there a loss of distinctiveness in terms of Kodak’s ability to distinguish its goods from others?” I think that question could be answered in many contradictory ways.
1) Yes, there is a loss of distinctiveness, because the fake ‘Kodak’ won’t be as good in quality as the original Kodak, and thus, the distinctive (that which distinguishes Kodak from the rest) quality would be lost. (Basically, Kodak would be distinguishable from the fake ‘Kodak’, and hence cause loss of distinctiveness.)
2) Yes, there is a loss of distinctiveness, because the fake ‘Kodak’ might be as good as the original Kodak, and thus the distinctive quality that is associated only with ‘Kodak’ might be lost when it comes to light that the camera that has been purchased is a fake (but is just as good as would be expected).
3) No, there is no loss of distinctiveness, because Kodak Inc. can still distinguish it’s cameras from all others, and a third party using the name Kodak doesn’t automatically cause loss of distinctiveness.
4) No, there is no loss of distinctiveness, because the fake ‘Kodak’ may prove to be as good as the real one, and if the consumer doesn’t know the difference, no lack of distinctiveness exists.
5) No, there is no loss of distinctiveness, because the fake ‘Kodak’ is expressly sold (in Burma Bazaar, or Chinatown, for instance) as a fake. So, as long as the qualities associated with Kodak aren’t associated with the fake product, the distinctiveness of ‘Kodak’ isn’t lost.
—
Problems can be found with all of these responses. For instance, on the last one, Dev would say that I am conflating brand equity and selling power with distinctiveness. True, but I don’t think it is satisfactorily explained _why_ distinctiveness means A and not B. Instead, all we have is “courts have interpreted it to mean A and not B”.
So the question still remains as to what “distinctiveness” means, which I think could possibly boil down to what lens we view it from: from that of the manufacturer/the product or from that of the consumer. This distinction that Divs also suggests in her first comment, I believe is an important one.
For instance, a real Kodak and a fake one might not be distinct from the product sense (they both look alike and have the name “Kodak” written on them), but would be distinct from the consumer’s angle (since she knows which is which depending on where she buys it, on the price, the warranty, etc.).
—
@Dev
About reducing dilution to “detrimental to distinctiveness”. Do you think s.29(4) TMA permits that? It clearly says “takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered trade mark”. So, repute and brand value can clearly be diluted, and not just distinctiveness. Perhaps you address this in your article, but it hasn’t come out clearly in your comments here.
I’m wondering where that would leave the likes of Sharad Haksar and his Coca-Cola campaign. (1) Sharad Haksar is not a “permitted user”. (2) Photography (and putting up billboards) are “in the course of trade” for him. (3) It is identical with the Coca-Cola TM since it _is_ the Coca-Cola TM that is photographed. (4) It is tough to make out the requirements of s.29(4)(b), but I think a clever lawyer (like Mr. Anand) would be able to by saying something like “The trade mark has been used in relation to Mr. Haksar’s photography service, to popularise it, while piggybacking on the popularity of Coca-Cola’s trade mark”. (5) Coca-Cola has a reputation in India. (6) There is no “due cause” for usage of that particular trade mark in a campaign about water shortage in Chennai, since the (hypothetically) Cauvery water dispute is to blame for that, not Coca-Cola. (7) It is detrimental to the repute of the Coca-Cola trade mark.
A similar argument could be made out (for “detrimental to the repute of the registered trade mark”) for the recent Slumdog Millionaire case in respect of Coca-Cola, again. IPKat reported that case. Boyle said, “Coca-Cola don’t want to be seen in a rubbish dump (scene) giving drinks to (the orphaned) children, so we had to change the brand.”
I think it is exceedingly hard to make an argument in favour of dilution, as drawing a balance between free speech and dilution/tarnishment is exceedingly difficult if not straight out impossible. And lawyers who argue out trade mark cases in court are very often cleverer and more adept at finding holes than the lawyers/bureaucrats who draft the law and try to close up those holes.
A.C.
Hi,
My comments are with reference to Mr.Gangjee’s observations on confusion and dilution in general (i.e. confusion is always a subset of dilution) and not in connection with s.29(4) of the TM Act.
I think it would be redundant on my part if I were to take the usual line about confusion being consumer-centric and dilution being producer-centric. I differ with the conclusion Mr.Dev arrives at with the Coke hypothetical for the following reasons:
1.I would like to approach the issue from the identity angle (Re Akerlof and Kranton) for I believe that the law of trademarks may be referred to as the law of identity and reputation. When one refers to identity in the context of trademarks, whose identity is being referred to here? Is it the producer in the absolute or the product in the absolute or the producer with reference to the product as perceived by the consumers? In other words, the question in simpler terms is if identity of the producer is circumscribed with reference to context. This is precisely where one has to distinguish between classical or traditional trademark law and the doctrine of dilution for the former relies on context and the latter seeks to divorce the both the identity and reputation of the producer from the product or a particular market segment.
2.How so, would be the next question. The creation of an identity of the self is a cyclical process i.e. in the initial stages, the quality and characteristics of the creation speaks for the pedigree or otherwise of the creator. Over a point of time, with accumulation of goodwill of the product through word of mouth, the very same features become synonymous with the creator to such an extent that the goodwill enjoyed by the producer with reference to one particular good is transferred automatically to the producer himself and in turn to another good thereby divorcing the contingent relationship between the goodwill of a particular good and the goodwill of the producer. This is the culmination of all efforts of the producer where he himself has become a brand; analogously speaking, from a personality, he has acquired a persona of his own.
3.Let me explain this with the help of an example. Assume that I am from those parts of the country where The Hindu newspaper is not known or is not that popular as much as, say The Times of India. If I were to come down to the South and suddenly pick up The Hindu by chance or because of someone’s recommendation and I find the quality of The Hindu better than any other newsdaily I have ever read, then I become a regular subscriber. I then become so particular about reading the Hindu wherever I go, that even if I am in Bengal, I insist on getting the nearest edition possible, say, from Vizag. Please note that during this period, I am slowly beginning to recognise The Hindu group as a brand beyond its product even though its reputation is because of its products. So tomorrow if The Hindu releases a new publication (like the Folio which used to be in circulation earlier), I may subscribe to the new publication of The Hindu without a second thought simply because I have faith in the brand. This is the stage where a dilution claim becomes relevant. In another words, it is reputation of a particular mark which qualifies it for a dilution claim not only for bringing disrepute to its reputation, but the other limb-distinctiveness-as well.
4.On the other hand, confusion is context-specific; the question of the field of business of the defendant cannot be done away with here. This distinction between confusion and dilution cannot be whittled down by saying that anything which erodes the distinctive nature of a mark amounts to dilution because reputation of the mark is a condition precedent for any dilution claim even if the ground for claiming dilution is blurring and not tarnishment. To claim dilution of a mark in the absence of reputation, is to dilute dilution.
5.Therefore, unless in the Coke example, one takes into account the reputation of Coke, the dilution claim is not valid. If in the same Coke example, I were to substitute Coke with Bovonto (which is a little known soft drink brand), can one still claim dilution by a defendant because of impairment of distinctiveness? I very much doubt it.
6.Confusion being a consequence of constant dilution does not make the former the universal set and the latter a subset.
Bests,
J.Sai Deepak Iyer.
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