ipr
Short Description
bgbfvg...
Description
DILUTION OF TRADEMARKS THROUGH CASE LAWS
(Intellectual Property Laws-Project Report)
Submitted by: 1. Rupin Bal 1!1" 1"t# Semester (Section $ B) %. &aina '!1" 1"t# Semester (Section $ B) Submitted to: r. asmeet *aur +,an ulati
UNIVERSITY INSTITUTE OF LEGAL STUDIES, PANJAB UNIVERSITY, CHANDIGARH
Contents
1.
INTRODUCTION............ INTRODUCTION...................... ..................... ..................... ..................... ..................... ..................... ..................... ..................... ...........1 1
2. UNFOLDING UNFOLDING THE EVOL EVOLUTION UTION OF TRADEM TRADEMARKS: ARKS: A HISTOR HISTORY Y OF A BILLIO BILLIONNDOLLAR BUSINESS................ BUSINESS.......................... ..................... ..................... ..................... ...................... ..................... ............................ .................. 2 3.
MEANING: MEANING: WHAT WHAT CONSTITUTES CONSTITUTES TRADEMA TRADEMARKS?. RKS?..... ........ ......... ............. ............... .............. ............... ..........3 ..3
4.
DILUTION DILUTION OF TRADEM TRADEMARKS.. ARKS...... ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ .......... ............. ............... ..............4 ......4
5.
4.1
DILUTION DILUTION DOCTRINE. DOCTRINE..... ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........... .............. .............. ............... ...........5 ...5
4.2
COMMON COMMON FORMS OF DILUTION DILUTION.... ........ ........ ........ ........ ........ ........ ......... ............ ............... ............... .............. .......... ...
4.3
INTERNA INTERNATION TIONAL AL STA STATUS...... TUS.......... ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........ ........... .......... ...
DOCTRINE DOCTRINE OF DILUTION DILUTION IN INDIA... INDIA....... ........ ........ ........ ........ ........ ........ ........ ......... ............ .............. ............... ..............! ......! 5.1
.
NATURE NATURE AND SCO"E SCO"E OF OF SECTIO SECTION N 2#$4% OF THE ACT....... ACT.............. .............. ............... ...........& ...&
CASE-LAWS........... CASE-LAWS..................... ..................... ..................... ..................... ...................... ..................... ..................... ..................... ................. ....... #
!. CONCLUSION CONCLUSION AND SUGGESTION................. SUGGESTION........................... ..................... ..................... ..................... ...................... ...........1 1
1'"()*
ACKNOWLEDGEMENT
The success and final outcome of this project required a lot of guidance and assistance from many people and I am extremely fortunate to have got this all along the completion of my project work. Whatever I have done is only due to such guidance and assistance and I would not forget to thank them. I respect and thank Dr. Jasmeet for giving me an opportunity to do the project work on the topic “Dilution of Trademarks through Case laws.” I am thankful to and fortunate enough to get required help from my friends li!rary staff and my family while I was working on this project.
2'"()*
1
INTRODUCTION
An apple a day, used to keep the doctor away; The apple a day, earns millions of dollars today!
"ardly anyone of us now remem!ers that #$uma% is actually an animal from &at family' #(pple% can also !e edi!le and #Tick mark% )*ike+ simply implies an affirmative response. ,ne of the most amusing transitions the world is witnessing is a #-a!!it% !ecoming synonyms with #$lay!oy% a #&rocodile% turning to #acoste% and a #Twin/tailed 0ermaid% revising its name to #1tar!ucks%. That%s the power of a Trademark2 3ven without our reali4ing #Trademark% has !ecome another way of referring to !rands. It is rather very complex to understand that how unknowingly a Trademark may influence purchasing decision of its consumers. 5or this reason the corporate houses must understand the importance of trademark as an asset for their !usinesses and as a tool for effective commerce. In today%s world a trademark is not considered as a mere logo associate with the product !ut !estows distinctiveness to it. &onsumer%s su!/conscious mind feels a sense of satisfaction regarding quality and genuineness of the product when he sees a well/recognised famous trademark on it. "ence it would not !e incorrect to say that a #trademark% acts as a #trust/ mark% or #quality/mark% for the consumers. In light of the growing importance of trademarks countries across the glo!e started recognising trademark as an intellectual product or intangi!le property' with various acts of copying or infringing of the trademark right attracting civil and criminal penalties. (nother up/surging concept which is drawing national as well as international attention is that of Trademark Dilution. This project report seeks to discuss some legal concepts relating to dilution of trademarks through case laws. 6ut !efore we move on to the actual concept of dilution of trademarks let%s have a !rief look at the meaning of trademarks and the concept of doctrine of dilution.
1'"()*
! UNFOLDING THE EVOLUTION OF TRADEMARKS" A HISTORY OF A BILLION#DOLLAR BUSINESS The earliest marks were pro!a!ly those markings on animals so a farmer rancher or lord could distinguish what animals !elonged to whom. (rtefacts from places such as ancient 3gypt have !een found with various sym!ols carved thereon for religious and superstitious reasons. 7$otters marks7 appeared in relics left from the 8reek and -oman periods and were used to identify the maker )potter+ of a particular vessel. 9se of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit as those marks often allowed owners to claim goods that were lost. $roducers often relied on identifying marks for example to demonstrate ownership of goods recovered at sea. (round the :;th century a mark called a 7erc#ants ar/ 7 appeared and sym!ols among traders and merchants increased significantly. These marks which can !e considered one kind of 7proprietary mark7 essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks pirates and other disasters. The 3nglish in the :th centuries when dramatic emergence of merchant and craft guilds trademark/like sym!ols and logos started to appear as identifiers for these firms. ocal guilds often developed reputations for the quality of their products and when they did the names of the towns or regions in which those guilds operated !ecame repositories of goodwill. To maintain that goodwill guilds needed to !e a!le to restrict mem!ership and identify and punish mem!ers who produced defective products. 8uilds therefore required their mem!ers to affix distinguishing marks to their products so the guilds could police their ranks effectively. These sym!ols were different from modern marks in that they emerged to !enefit the guilds and were not for the !enefit of the production mark owner. The Industrial -evolution sparked the advent of what is now modern/day capitalism. 8radually the guild systems disintegrated and free !usiness was esta!lished. 0arks !egan to actively identify the source of goods rather than o!ligatory guild mem!ership. (!out this time special criminal laws protecting trademarks were also developed out of early forgery
2'"()*
counterfeiting and fraud laws. &ivil protection was gradually and systematically esta!lished against those who would use another?s mark without permission )7infringers7+.: The first modern trademark laws emerged in the late :@th century. In 5rance the first comprehensive trademark system in the world was passed into law in :A>B with the 70anufacture and 8oods 0ark (ct7. In 6ritain the :AC 0erchandise 0arks (ct made it a criminal offense to imitate another?s trade mark ?with intent to defraud or to ena!le another to defraud?. In :AB> the Trade 0arks -egistration (ct was passed which allowed formal registration of trade marks at the 9E $atent ,ffice for the first time. -egistration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks !egan on : January :ABC. In the 9nited 1tates &ongress first attempted to esta!lish a federal trademark regime in :AB;. This statute purported to !e an exercise of &ongress? &opyright &lause powers. "owever the 1upreme &ourt struck down the :AB; statute in the Tradeark Cases later on in the decade. In :AA: &ongress passed a new trademark act this time pursuant to its &ommerce &lause powers. &ongress revised the Trademark (ct in :@;>.< The anham (ct of :@=C updated the law and has served with several amendments as the primary federal law on trademarks.=
$ MEANING" WHAT CONSTITUTES TRADEMARKS% ( trademark is any word name sym!ol or design or any com!ination thereof used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.> Though no standard international definition
1 The "istory #f Trademark $aw a%aila&le at httpFGGwww.ta!!erone.comGTrademarksGTrademarkaw G"istory G"istory.shtml )ast Hisited 5e!. :+.
2 6ently ionel The aking of odern Trade arks $aw' The Construction of the $egal Concept of Trade ark ()*+*- in T-(D3 0(-E1 (*D 6-(*D1F (* I*T3-DI1&I$I*(- &-ITI93 )ionel 6ently et. al. eds. ;;A+.
3 The "istory and De%elopment of Trademark $aw a%aila&le at httpFGGwww.iip.or.jpGtranslationGonoGch.pdf. 4 -oger W. Dyer Jr. onetary Damages under the $anham Act' ighth Circuit "olds Actual Confusion is /ot a 0rere1uisite BB 0o. . -ev. );:+ at C@ a%aila&le at httpFGGscholarship.law.missouri.eduGmlrGvolBBGiss:G:; )ast Hisited 5e!. :+.
3'"()*
of trademarks is availa!le !ut 0rticle 1(1) o2 3RIPS provides a definition for 7sign7 which is used as or forms part of the definition of 7trademark7 in the trademark legislation of many jurisdictions around the world. The 3rade ar/s 0ct4 1555 in India incorporates the concept of Kwell known marksL as appears in (rticle C 6is of the $aris &onvention for the $rotection of Industrial $roperty. 1ec. ):+ )4!+ provides for definition of trademarks as followsF “(2&- 3trade mark3 means a mark capa&le of &eing represented graphically and which is capa&le of distinguishing the goods or ser%ices of one person from those of others and may include shape of goods, their packaging and com&ination ofcolours; (i- in relation to Chapter 455 (other than section )6-, a registered trade mark or a mark used in relation to goods or ser%ices for the purpose of indicating or so as to indicate a connection in the course of trade &etween the goods or ser%ices, as the case may &e, and some person ha%ing the right as proprietor to use the mark; and (ii- in relation to other pro%isions of this Act, a mark used or proposed to &e used in relation to goods or ser%ices for the purpose of indicating or so to indicate a connection in the course of trade &etween the goods or ser%ices, as the case may &e, and some person ha%ing the right, either as proprietor or &y way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collecti%e mark;”
& DILUTION OF TRADEMARKS We have already reali4ed the commercial importance a trademarks holds for the corporate houses. Thence the modern trademarks laws enlist various civil and penal consequences 5 :> 9.1.&. M ::B. 0rticle 14 3RIPS: “Any sign, or any com&ination of signs, capa&le of distinguishing the goods or ser%ices of one undertaking from those of other undertakings, shall &e capa&le of constituting a trademark. 7uch signs, in particular words including personal names, letters, numerals, figurati%e elements and com&inations of colours as well as any com&ination of such signs, shall &e eligi&le for registration as trademarks. 8here signs are not inherently capa&le of distinguishing the rele%ant goods or ser%ices, em&ers may make registra&ility depend on distincti%eness ac1uired through use. em&ers may re1uire, as a condition of registration, that signs &e %isually percepti&le.”
4'"()*
which may !e attracted on violating the trademark rights of the owner. The extent to which a trademark owner may prevent unauthori4ed use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered the similarity of the trademarks involved the similarity of the products or services involved and whether the owner?s trademark is well known )Dilution+. 4.1D+,+/0 D/+0*
Trademarks have dual functions. 5irst they indicate the product?s source. 1econd trademarks have a marketing value and create a !ond !etween the consumer and the !rand. The trademark infringement doctrine addresses the first function whereas trademark dilution addresses the second. The dilution doctrine provides protection for marks even when the traditional 7likelihood of confusion7 test for infringement is not met. If defendant?s use will tarnish degrade or dilute the distinctive quality of plaintiff?s mark an injunction may issue as relief against dilution.B Dilution is therefore different from trademark infringement !ecause trademark infringement always involves a pro!a!ility of customer confusion whereas dilution can occur even if customers wouldn%t !e misled.A Trademark dilution is defined as the lessening of the capacity of a famous mark to identify and distinguish goods or services regardless of the presence or a!sence of competition !etween the owner of the famous mark and other parties or of likelihood of confusion. This typically occurs as the result of !lurring or tarnishment of the famous mark.@ In other words unlike ordinary trademark infringements dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead dilution protection law aims to protect sufficiently strong and well known trademarks from losing their singular association in the pu!lic mind with a particular product. ! 1heldon 0ak -ose N (nderson cDonald9s Corp. %. Arche Technologies, 5nc.' Trademark Dilution without Tarnishment ):@@>+ a%aila&le at httpFGGwww.usip.comGpdfG(rticleOTrademarksGtmdilwo.pdf.
& 8hat is Trademark Dilution: a%aila&le at httpFGGwww.nolo.comGlegal/encyclopediaGwhat/trademark/ dilution.html )ast Hisited 5e!. := ;:>+
# Trademark Dilution a%aila&le at httpFGGwww.inta.orgGTrademark6asicsG5act1heetsG$agesGTrademarkDilution.aspx )ast Hisited 5e!. := ;:>+.
5'"()*
Thus Dilution theory regards trademark not only as a commercial signature !ut also as a #silent salesman6 who directly comes in contact with the consumers.:; 4.2C//0 F/ / D+,+/0
It is necessary here to define the two types of trademark dilution namely Blurrin, and 3arnis#ment. In ead Data Central %. Toyota )) the &ourt held that !lurring includes #the
whittling away of an esta!lished trademark%s selling power through its unauthori4ed use !y others upon dissimilar products%. ( mark is said to !e tarnished when the impugned mark links such mark to products that are of poor quality or which portray such mark in an unwholesome or unsavoury context that is likely to reflect adversely upon the owner%s product. 4.3I0*0(+/0(, R*/)0++/0 / D+,+/0 D/+0*
(rticle C!is of the $aris &onvention requires countries to prohi!it the use of a trademark that is registered or well known.. as !eing already the mark of a person entitled to the !enefits of this &onvention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well/known mark or an imitation lia!le to create confusion therewith. While this section does not provide protection from dilution per se it does recogni4e the need to protect well/known marks against reproductions in addition to the traditional protection against imitation lia!le to create confusion. "owever some commentators !elieve that the $aris &onvention only protects famous marks against confusion a protection granted !y traditional trademark infringement rights. T-I$1 went one step further and extended the protections of the $aris &onvention 1ection C !is in (rticle :C 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 !etween 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 !e damaged !y such use. (rgua!ly this su!section provides a call for anti/ dilution protection. (s one commentator noted the requirement that consumers perceive a
16 T.8. (githa Trademark dilution' 5ndian Approach >; )A did not provide for trademark dilution as is in the case of 1ection @)=+ of the Trademarks (ct :@@@ !y which the anti/dilution provision has !een first incorporated in a statute. 6ut the principle of dilution was evolved !y our courts prior to the (ct having regard to internationally
recogni4ed
standards.
In Daimler
en2
Aktiegesellschaft
v. "y&o
"industanone:< of the issues !efore the single judge !ench was whether the defendant could
use the mark #63*P% on underwear. Interestingly the "on%!le Judge applied the doctrine of dilution without using the word #dilution% even once in the entire judgment. "owever the "on%!le Judge used the word #dilute% once towards the end of the judgment while stating #5n my %iew, the defendant cannot dilute, that &y user of the name “en2” with respect to a product like underwears.% The judgment focused only on the great injustice that would !e
done if the defendant were allowed to continue to use the mark and a!solutely no analysis of dilution or any related legal principle was made.:= The new Trade 0arks (ct :@@@does not contain any reference to ?dilution of trademark? per se !ut it introduces the concept of a Kwell known trademarkL defined under 1ection of the new (ct. 1ection :: of the new (ct lays down the criteria for determination of Kwell/knownL status of a trademark !y the -egistrar. 9nder 1ection :: of the new (ct it would also !e a valid ground for refusal of an application for registration of a trademark if it is similar to a Kwell/knownL registered trademark regardless of the goods or services. The new (ct requires the -egistrar to take into consideration K!ad faithL in !alancing the interests of the parties
12 Eeola -. Whittaker Trademark Dilution in a )Dilution (ct+. In order to extend protection from dilution to $anavision?s marks the court had to answer the following three questions affirmativelyF i. ii. iii.
Is the 7panavision7 trademark famousR' Is Toeppen?s use of the 7panavision7 trademark a comer cial useR' and Did Toeppen?s use of 7panavision7 as a domain name actually dilute the trademarkR
The district court held that the 7panavision7 trademark was famous. The court noted that $anavision had continuously used the mark since :@>=.: $anavision?s extensive advertising included a display of the 7panavision7 trademark at the end of every movie that used its filming products. The court also relied on the fact that 7panavision7 is not a word found in 26 1ee $anavision @=> 5. 1upp. at :@A. $anavision also invoked &alifornia trademark law however the court held that &alifornia trademark law is su!stantially similar to federal law and proceeded to consider only federal law.
21 1ee $anavision @=> 5. 1upp. at :
View more...
Comments
