India introduced a statutory right to prevent “dilution” of well known marks for the first time in 2003 (through the Trademarks Act 1999, which came into force in September 2003). We’d blogged about this provision in the past in several of our blog posts
A friend of mine queried me on the “retrospectivity” of the provision. He pointed to Section 159 of the Act to argue that the provision cannot apply to third parties who’d used the “mark” prior to September 2003 (when the new trademarks act first came into force). In other words, consider the following scenario.
Kodak (RIP) is a well known mark in India and several other parts of the world. Assume that Kodak registers its mark in India in several classes associated with their core business in the early 70’s. Along comes Rupa Traders which begins selling “Kodak” underwear through all of its major outlets in Jan, 2002. Could Kodak have sued Rupa Traders for dilution (under section 29(4)) before an Indian court in the year 2004?
Section 159 appears to answer this query with a resounding No! It reads:
“Notwithstanding anything contained in this Act, where a particular use of registered trade mark 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”
A literal reading of this provision suggests that a trademark proprietor (such as Kodak) can use section 29(4) to only enjoin those acts which take place for the first time after the coming into force of the Trademarks Act 1999 (i.e. September 2003). If any acts that allegedly dilute the rights of well known mark holders were first committed prior to September 2003, then section 159 permits the continuation of such acts even after the advent of the “dilution” provision in the statute.
Seems clear enough to me–but I’d be happy to hear alternative views on this. And more importantly, if you know of any cases where this argument has been raised or dealt with or where section 159 has been invoked (whether in the context of dilution or otherwise), please let us know.