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DILUTION OF TRADEMARKS THROUGH CASE LAWS

(Intellectual Property Laws-Project Report)

Contents

1.

INTRODUCTION................................................................................................ 1

2. UNFOLDING THE EVOLUTION OF TRADEMARKS: A HISTORY OF A BILLIONDOLLAR BUSINESS................................................................................................. 2 3.

MEANING: WHAT CONSTITUTES TRADEMARKS?..............................................3

4.

DILUTION OF TRADEMARKS.............................................................................4

5.

4.1

DILUTION DOCTRINE.................................................................................5

4.2

COMMON FORMS OF DILUTION.................................................................6

4.3

INTERNATIONAL STATUS............................................................................6

DOCTRINE OF DILUTION IN INDIA....................................................................7 5.1

6.

NATURE AND SCOPE OF SECTION 29(4) OF THE ACT................................8

CASE-LAWS...................................................................................................... 9

7. CONCLUSION AND SUGGESTION......................................................................16

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1. INTRODUCTION An apple a day, used to keep the doctor away; The apple a day, earns millions of dollars today! Hardly anyone of us now remembers that ‘Puma’ is actually an animal from Cat family; ‘Apple’ can also be edible and ‘Tick mark’ (Nike) simply implies an affirmative response. One of the most amusing transitions the world is witnessing is, a ‘Rabbit’ becoming synonyms with ‘Playboy’, a ‘Crocodile’ turning to ‘Lacoste’ and a ‘Twin-tailed Mermaid’ revising its name to ‘Starbucks’. That’s the power of a Trademark! Even without our realizing, ‘Trademark’ has become another way of referring to brands. It is rather very complex to understand that how unknowingly a Trademark may influence purchasing decision of its consumers. For this reason the corporate houses must understand the importance of trademark as an asset for their businesses and as a tool for effective commerce. In today’s world, a trademark is not considered as a mere logo associate with the product but bestows distinctiveness to it. Consumer’s sub-conscious mind feels a sense of satisfaction regarding quality and genuineness of the product when he sees a well-recognised famous trademark on it. Hence, it would not be incorrect to say that a ‘trademark’ acts as a ‘trustmark’ or ‘quality-mark’ for the consumers. In light of the growing importance of trademarks, countries across the globe started recognising trademark as an intellectual product or intangible property; with various acts of copying or infringing of the trademark right attracting civil and criminal penalties. Another 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. But before we move on to the actual concept of dilution of trademarks, let’s have a brief look at the meaning of trademarks and the concept of doctrine of dilution.

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2. UNFOLDING THE EVOLUTION OF TRADEMARKS: A HISTORY OF A BILLION-DOLLAR BUSINESS The earliest marks were probably those markings on animals so a farmer, rancher or lord could distinguish what animals belonged to whom. Artefacts from places such as ancient Egypt have been found with various symbols carved thereon for religious and superstitious reasons. "Potters marks" appeared in relics left from the Greek and Roman periods and were used to identify the maker (potter) of a particular vessel. Use 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. Producers often relied on identifying marks, for example, to demonstrate ownership of goods recovered at sea. Around the 10th century, a mark called a "Merchants Mark," appeared, and symbols among traders and merchants increased significantly. These marks, which can be considered one kind of "proprietary mark," essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks, pirates, and other disasters. The English in the 13th century created trademark laws to avoid any replication of products from a certain company to another. In the 14th and 15th centuries when dramatic emergence of merchant and craft guilds, trademark-like symbols and logos started to appear as identifiers for these firms. Local 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 became repositories of goodwill. To maintain that goodwill, guilds needed to be able to restrict membership and identify and punish members who produced defective products. Guilds therefore required their members to affix distinguishing marks to their products so the guilds could police their ranks effectively. These symbols were different from modern marks in that they emerged to benefit the guilds, and were not for the benefit of the production mark owner. The Industrial Revolution sparked the advent of what is now modern-day capitalism. Gradually, the guild systems disintegrated, and free business was established. Marks began to actively identify the source of goods rather than obligatory guild membership. About this time, special criminal laws protecting trademarks were also developed out of early forgery,

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counterfeiting, and fraud laws. Civil protection was gradually and systematically established against those who would use another's mark without permission ("infringers").1 The first modern trademark laws emerged in the late 19 th century. In France the first comprehensive trademark system in the world was passed into law in 1857 with the "Manufacture and Goods Mark Act". In Britain, the 1862 Merchandise Marks Act made it a criminal offense to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875 the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876.2 In the United States, Congress first attempted to establish a federal trademark regime in 1870. This statute purported to be an exercise of Congress' Copyright Clause powers. However, the Supreme Court struck down the 1870 statute in the Trade-Mark Cases later on in the decade. In 1881, Congress passed a new trademark act, this time pursuant to its Commerce Clause powers. Congress revised the Trademark Act in 1905.3 The Lanham Act of 1946 updated the law and has served, with several amendments, as the primary federal law on trademarks.4

3. MEANING: WHAT CONSTITUTES TRADEMARKS? A trademark is any word, name, symbol, or design, or any combination 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. 5 Though no standard international definition

1 The History Of Trademark Law available at http://www.tabberone.com/Trademarks/TrademarkLaw /History /History.shtml (Last Visited Feb. 13, 2015).

2 Bently, Lionel, The Making of Modern Trade Marks Law: The Construction of the Legal Concept of Trade Mark (1860-80) in TRADE MARKS AND BRANDS: AN INTERDISCIPLINARY CRITIQUE, (Lionel Bently et. al. eds., 2008).

3 The History and Development of Trademark Law available at http://www.iip.or.jp/translation/ono/ch2.pdf. 4 Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds Actual Confusion is Not a Prerequisite, 77 Mo. L. Rev. (2012) at 269 available at http://scholarship.law.missouri.edu/mlr/vol77/iss1/10 (Last Visited Feb. 13, 2015).

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of trademarks is available, but Article 15(1)6 of TRIPS provides a definition for "sign" which is used as or forms part of the definition of "trademark" in the trademark legislation of many jurisdictions around the world. The Trade Marks Act, 1999 in India, incorporates the concept of “well known marks” as appears in Article 6 Bis of the Paris Convention for the Protection of Industrial Property. Sec. 2 (1) (zb) provides for definition of trademarks as follows: “(zb) "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination ofcolours; (i) in relation to Chapter XII (other than section 107), a registered trade mark or a mark used in relation to goods or services for the purpose of indicating or so as to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods or services for the purpose of indicating or so to indicate a connection in the course of trade between the goods or services, as the case may be, and some person having the right, either as proprietor or by 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 collective mark;”

4. DILUTION OF TRADEMARKS We have already realized the commercial importance a trademarks holds for the corporate houses. Thence the modern trademarks laws enlist various civil and penal consequences 5 15 U.S.C. § 1127. 6 Article 15, TRIPS: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.”

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which may be attracted on violating the trademark rights of the owner. The extent to which a trademark owner may prevent unauthorized 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). 4.1Dilution Doctrine

Trademarks have dual functions. First, they indicate the product's source. Second, trademarks have a marketing value and create a bond between the consumer and the brand. 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 "likelihood of confusion" 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.7 Dilution is therefore different from trademark infringement, because trademark infringement always involves a probability of customer confusion, whereas dilution can occur even if customers wouldn’t be misled.8 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 absence of competition between the owner of the famous mark and other parties or of likelihood of confusion. This typically occurs as the result of blurring or tarnishment of the famous mark.9 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 public mind with a particular product. 7 Sheldon Mak Rose & Anderson, McDonald's Corp. v. Arche Technologies, Inc.: Trademark Dilution without Tarnishment (1995) available at http://www.usip.com/pdf/Article_Trademarks/tmdilwo.pdf.

8 What is Trademark Dilution? available at http://www.nolo.com/legal-encyclopedia/what-trademarkdilution.html (Last Visited Feb. 14, 2015),

9 Trademark Dilution available at http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx (Last Visited Feb. 14, 2015).

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Thus, Dilution theory regards trademark not only as a commercial signature but also as a ‘silent salesman’ who directly comes in contact with the consumers.10 4.2Common Forms of Dilution

It is necessary here to define the two types of trademark dilution, namely, Blurring and Tarnishment. In Mead Data Central v. Toyota11 the Court held that blurring includes, ‘the whittling away of an established trademark’s selling power through its unauthorized use by others upon dissimilar products’. A mark is said to be 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. 4.3International Recognition to Dilution Doctrine

Article 6bis of the Paris Convention requires countries to prohibit the use of a trademark that is registered or well known.., 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 well-known mark or an imitation liable to create confusion therewith. While this section does not provide protection from dilution per se, it does recognize the need to protect well-known marks against reproductions in addition to the traditional protection against imitation liable to create confusion. However, some commentators believe that the Paris Convention only protects famous marks against confusion, a protection granted by traditional trademark infringement rights. TRIPS went one step further and extended the protections of the Paris Convention Section 6 bis in Article 16 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. Arguably, this subsection provides a call for antidilution protection. As one commentator noted, the requirement that consumers perceive a 10 T.G. Agitha, Trademark dilution: Indian Approach 50 (3) JILI 341 (2008). 11 875 F.2d 1026 (2d Cir. 1989) 6 | Page

"connection between" the senior mark and the junior mark "could be taken to mean only the 'mental association' required by dilution."12

5. DOCTRINE OF DILUTION IN INDIA The old law in India, i.e the Trade and Merchandise Marks Act, 1958, did not provide for trademark dilution, as is in the case of Section 29(4)2 of the Trademarks Act, 1999 by which the anti-dilution provision has been first incorporated in a statute. But, the principle of dilution was evolved by our courts prior to the Act, having regard to internationally

recognized

standards.

In Daimler

Benz

Aktiegesellschaft

v.

Hybo

Hindustanone13 of the issues before the single judge bench was whether the defendant could use the mark ‘BENZ’ on underwear. Interestingly, the Hon’ble Judge applied the doctrine of dilution without using the word ‘dilution’ even once in the entire judgment. However, the Hon’ble Judge used the word ‘dilute’ once, towards the end of the judgment while stating, ‘In my view, the defendant cannot dilute, that by user of the name “Benz” with respect to a product like under-wears.’ The judgment focused only on the great injustice that would be done if the defendant were allowed to continue to use the mark and absolutely no analysis of dilution or any related legal principle was made.14 The new Trade Marks Act, 1999does not contain any reference to 'dilution of trademark' per se, but it introduces the concept of a “well known trademark” defined under Section 2 of the new Act. Section 11 of the new Act lays down the criteria for determination of “well-known” status of a trademark by the Registrar. Under Section 11 of the new Act, it would also be a valid ground for refusal of an application for registration of a trademark, if it is similar to a “well-known” registered trademark, regardless of the goods or services. The new Act requires the Registrar to take into consideration “bad faith” in balancing the interests of the parties

12 Keola R. Whittaker, Trademark Dilution in a Global Age, U. Pa. J. Int'l Econ. L, Vol. 27:3 (2006) 907-38 at 920 availabe at https://www.law.upenn.edu/journals/jil/articles/volume27/issue3/Whittaker27U.Pa.J. Int'lEcon.L.907(2006).pdf.

13 AIR 1994 Delhi 239. 14 Trademark Dilution: Yea or Nay (2013) available at http://www.selvamandselvam.in/trademark-dilutionyea-or-nay/ (Last Visited Feb. 12, 2015)

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involved in the enforcement of “well-known” trademarks. Thus dilution of trademark would occur from the infringement of a “well known” trademark.15 5.1Nature and Scope of Section 29(4) of the Act

First and foremost, for the application of Section 29(4), the trademark should be registered and should have a reputation in India. Thus, a different terminology “a reputed trademark” is used here instead of “well-known trademark” which is defined in the Act. The intent of the legislature is not clear as to why there has been a substitution. However, courts have tried to bring a distinction between the two in a few cases that have come before them, though not successfully. 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: 1. without due cause takes unfair advantage of the distinctive character or reputation of registered trademark 2. without due cause is detrimental to the distinctive character or repute of the registered trademark16 The Delhi High Court analyzed the doctrine of dilution to some extent in ITC Limited v. Philip Morris Products SA and Ors.17 Wherein the Court held as under: “It may be seen …. that dilution of trademark is a species of infringement. Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and services, courts have, over the 15 INTERNATIONAL TRADEMARK ASSOCIATION REPORT, The Protection Of Well- Known Marks In Asia-Pacific, Latin America And Africa (2004) available at http://www.inta.org/Advocacy/Documents/INTAWellKnownMarksAsiaPacificLatinAmericaAfrica.pdf.

16 Palak Jain, Trademark Dilution in India RGNUL Student Law Review (2014) available at http://www.rslr.in/rslr-blog/trademark-dilution-in-india (Last Visited Feb. 14, 2015)

17 2010 (42) PTC 572 (Del.). 8 | Page

years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods – or unrelated products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar junior marks, but for dissimilar goods is, in substance the protection against dilution (or Blurring or tarnishment) of the mark.” The Court, while referring to section 29 (4) of the Trade Marks Act, 1999 (the Act), recognized the essentials for dilution as under: 1. The impugned mark must be identical or similar to the injured mark; 2. The one claiming injury due to dilution must prove that her/his 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 repute of the registered trade mark. Here, the Indian Courts have taken a more lenient view than U.S. Courts. The judgment merely states that the mark must have ‘a reputation in India’, whereas according to US law the mark must necessarily be famous. The reputation of the mark is of great significance. The user of a mark that is even averagely well known cannot claim dilution of that mark. Distinction needs to be made between a ‘famous’ mark and a mark with ‘reputation’. The reasoning behind this is simple, dilution rights being indeterminate in nature, the standard of fame required to claim them must be high as well. A mark which is not highly distinct cannot be diluted. It is also unclear whether a mark which has reputation in a particular sector of the public or only in a particular area within India would also be entitled to protection from dilution, within that sector or area.18

6. CASE-LAWS 6.1Panavision International v. Dennis Toeppen19 (Internet Trademark Case)

18 Supra 14. 19 141 F.3d 1316 (9th Cir. 1998). 9 | Page

FACTS: Plaintiff Panavision, owner of the marks Panavision and Panaflex in connection with theatrical motion picture and television camera and photographic equipment, sought to enjoin defendant Toeppen from using the domain names “panavision.com” and “panaflex.com.” Toeppen did not use either domain name in connection with the sale or promotion of any goods or services. Toeppen’s “panavision.com” website displayed an aerial view of Pana, Illinois, and the “panaflex.com” website contained only the word “hello.” When Panavision requested that Toeppen relinquish the “panavision.com” domain name, Toeppen demanded $13,000 from Panavision. Panavision filed this action against Toeppen in the District Court for the Central District of California. Panavision alleged claims for dilution of its trademark under the Federal Trademark Dilution Act of 1995 and under the California Anti-dilution statute, California Business and Professions Code. District Court’s Decision: The district court framed the dilution issue as whether "the defendant violated federal ... law by intentionally registering the plaintiffs trademarks as his Internet domain names for the purpose of exacting payment from the plaintiff in exchange for the termination of the registrations of the domain names. ' ' 20 The court then broke this issue into three components according to the Federal Trademark Dilution Act of 1995 (Dilution Act). In order to extend protection from dilution to Panavision's marks, the court had to answer the following three questions affirmatively: i. ii. iii.

Is the "panavision" trademark famous?; Is Toeppen's use of the "panavision" trademark a comer cial use?; and Did Toeppen's use of "panavision" as a domain name actually dilute the trademark?

The district court held that the "panavision" trademark was famous. The court noted that Panavision had continuously used the mark since 1954. 21 Panavision's extensive advertising included a display of the "panavision" trademark at the end of every movie that used its filming products. 22 The court also relied on the fact that "panavision" is not a word found in 20 See Panavision, 945 F. Supp. at 1298. Panavision also invoked California trademark law, however, the court held that California trademark law is substantially similar to federal law and proceeded to consider only federal law.

21 See Panavision, 945 F. Supp. at 1303. 22 See id. 10 | P a g e

the dictionary, indicating that it was an inventive word meriting stronger protection. Even if "panavision" were a descriptive mark, defined as a word, picture, or symbol that directly describes an aspect of the good, the mark would be protectable because it had a strongly established secondary meaning as affiliated with photographic equipment. The district court next held that Toeppen's use of the marks was a commercial use. The court asserted that if Toeppen had simply registered the domain names but not demanded any money for their use, his actions would not have been considered commercial.23 Instead, according to the court, Toeppen's "business" was the registration of this and other domain names with the intent of selling them to the trademark owners who wanted to use them as their own domain names.24 Finally, the district court held that Toeppen's use of "panavision.com" actually diluted Panavision's federally registered "panavision" trademark. However, the court did not reach this conclusion through traditional trademark dilution analysis. The two established categories of trademark dilution are blurring and tarnishment. The underlying property issue at stake in Panavision concerns the assignment of property rights over this new type of property, domain names. The current first-come, first-served system falls short of promoting either efficient use of the Internet or viable trademark protection. Applying trademark analysis is a more appropriate mechanism for regulating ownership of Internet domain names.25 Appellate Court’s Decision: On appeal, the Ninth Circuit affirmed and adopted the rationale and analysis of the district court. The court agreed that Toeppen’s use of Panavision’s trademarks as domain names lessened the capacity of the marks to identify and distinguish Panavision’s goods and services. Not only would Toeppen’s use force potential customers to search through the hundreds of websites retrieved by a search engine to find Panavision’s true website, but it would also remove control over the PANAVISION and PANAFLEX trademarks and reputations from the rightful owner of the marks. 23 See Panavision, 945 F. Supp. at 1303. 24 See id. at 1300. 25 Ughetta Manzone , Panavision International, L.P. v. Toeppen, Berkeley, Technology Law Journal Volume 13 Issue 1 (Jan 1998) available at http://scholarship.law.berkeley.edu/cgi/viewcontent.cgi? article=1170&context=btlj. (Last Visited Feb. 15, 2014).

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The court found that defendant’s scheme to extort money from plaintiff prevented plaintiff from using its own trademark as a domain name to establish a website easily located by Internet users, unless plaintiff paid his fee.26 Ultimately, the Court found that while cyber squatters did not fall under the traditional definitions of blurring and tarnishment, they did fall under the broad definition of dilution under the Lanham Act 45. The court found that Panavision customers would become frustrated if they could not find the company website through domain search, and the Panavision trademarked would dilute as a result. They furthered with the idea that prospective users searching for P's service would stumble upon D's site and instead of searching further, due to frustration, anger, or the belief that P's site does not exist, would search no further.27 6.2Moseley v. V Secret Catalogue, Inc.28 (“Victor’s Little Secret” Case)

This case is the Court’s first opportunity to construe the FTDA. The Supreme Court was asked to resolve a split among the federal circuit courts and determine whether dilution under the FTDA requires a showing of actual economic harm or whether a showing that a defendant’s mark is likely to cause dilution is sufficient. Facts: The petitioners, Victor and Cathy Moseley, opened a store in a strip-mall in Elizabethtown, Kentucky, named “Victor’s Secret” in 1998, selling lingerie and adult novelties, among other items. The respondent, owner of the “Victoria’s Secret” trademark, was not amused, and sent a cease-and-desist letter to the Moseleys. In response the Moseleys changed the store’s name to “Victor’s Little Secret,” but Victoria’s Secret was not satisfied and sued. District Court’s Decision: Because the Moseleys acknowledged the famous status of the Victoria's Secret mark, the only question before the district court was whether using the name Victor's Little Secret diluted the distinctive quality of the Victoria's Secret trademark. The court granted summary judgment to Victoria's Secret on the dilution claim, holding that the

26 Internet Trademark Case Summaries available at http://www.finnegan.com/Panavision-Intl-LP-v-Toeppen01-01-1998/ (Last Visited Feb. 13, 2015).

27 Panavision International v. Toeppen available at http://www.casesofinterest.com/tiki/Panavision+International+v.+Toeppen (Last Visited Feb. 13, 2015).

28 2010 WL 1979429 (6th Cir. May 19, 2010). 12 | P a g e

two marks were sufficiently similar to cause dilution and that the Victor's Little Secret mark caused dilution through its "tarnishing effect" on the Victoria's Secret mark. SIXTH Circuit COURT: The case reached the Sixth Circuit, which affirmed a finding that the “Victoria’s Secret” mark was diluted under the FTDA, under a “likelihood of dilution” standard. SUPREME COURT: The Supreme Court reversed the Sixth Circuit's grant of summary judgment on the dilution claim and remanded the case. The main question before the Supreme Court was - Does the Federal Trademark Dilution Act require objective proof of actual injury to the economic value of a famous mark for relief? The Court held: i.

that the FTDA "unambiguously requires a showing of actual dilution, rather than a

ii.

likelihood of dilution" and that Victoria's Secret failed to prove actual dilution of their famous mark absent evidence showing that the mark had lost some capacity to identify and distinguish goods or services sold in their stores or advertised in their catalogues.

Consequent Events: Remand, TARA, 2006 and Decision ahead: The Trademark Dilution Revision Act of 2006 (“TDRA”) was expressly intended to overrule the Supreme Court’s “actual harm” standard for dilution, which Congress deemed “an undue burden for trademark holders who contest diluting users.” The new language in the TDRA provided that the standard for proving a dilution claim is now a “likelihood of dilution” and that both dilution by blurring and dilution by tarnishment are actionable claims. On remand from the Supreme Court after the 2003 reversal, the district court reconsidered the case based on the new dilution standard in the TDRA. The Moseleys did not introduce any evidence to disprove a probability of tarnishment, and so the district court concluded that the connection between the “Victor’s Little Secret” mark and the sexual goods sold under it disparaged and reduced the positive associations and selling power of the VICTORIA’S SECRET mark. The district court again issued a permanent injunction against the Moseleys’ use of the name “Victor’s Little Secret.” The Moseleys renamed their store “Cathy’s Little Secret” and appealed to the Sixth Circuit. The Sixth Circuit affirmed the injunction against “Victor’s Little Secret” and ruled that Congress’s decision to pass the TDRA supported its finding of dilution by tarnishment.

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The Moseleys had also argued that the TDRA should not apply to them, because it is not retroactive.

The court rejected this argument noting that new statutes may be applied to

pending cases where prospective relief is sought for ongoing conduct. This decision was appealed up to the Supreme Court again, but was not granted certiorari. 6.3Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan29

Decided in 1993 by the High Court of Delhi, this was perhaps the first Indian ruling that looked in detail into the concept of dilution of well-known marks. Facts: In this case defendant sold underwear and undergarments for men with the representation thereof of a man with his legs separated and hands joined together above his shoulders, all within a circle to indicate the strong suggestion of the link between the three pointed star of “Mercedes Benz” car and the undergarments sold by the defendant Daimler Benz Aktiegessellschaft, Germany, the plaintiff, who owns the famous three-pointed star BENZ logo depicted above, sued the Indian underwear company for passing off. The plaintiff’s logo was registered in India in 1951 Court’s Decision: Ignoring the defense of honest concurrent use by the defendant, the High Court of Delhi granted the plaintiff’s injunction and found that it would be a great perversion of the law relating to trademarks if a mark such as MERCEDES BENZ with the three-pointed star were humbled by indiscriminate imitation by anyone including persons like the defendant who made undergarments. The Court held: Such a mark is not up for grabs—not 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. It was further held by the Court that trademark law was not intended to protect a person who would deliberately derive the benefit of someone else’s reputation with reference to goods, especially when such reputation extended worldwide. The Court further went on to hold:1 18. 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 that by user [sic] of the name “Benz” with respect to a product like under-wears. 29 AIR 1994 Delhi 239. 14 | P a g e

This judgment is still regarded as a milestone decision on trademark dilution in India and its findings continue to be cited in trademark disputes involving well-known marks. This is perhaps the first and only case in India enjoining a defendant from using the plaintiff’s wellknown mark on the sole ground of free-riding, without analysis of likelihood of confusion or deception. In fact, the High Court ruled out confusion and deception by acknowledging the ubiquitous reputation of the name BENZ in connection with cars. 6.4ITC Ltd. v. Philip Morris Products SA & Ors30

In the dispute between ITC and Philip Morris & Others for the alleged trade mark dilution of ITC owned Welcome Group 'Namaste' logo by Philip Morris' stylized logo of the Marlboro trademark, the Delhi High Court has ordered that ITC is not entitled to a temporary injunction against Philip Morris. The Delhi High Court refused to grant an injunction against the use of a device mark by Philip Morris in relation to its Marlboro brand of cigarettes in India. The trademark action filed by ITC was based on the registration and use of its W-namaste logo. The Delhi High Court held that the 1999 Act has enjoined protection against dilution, if the following essential elements are established – 1. 2. 3. 4.

the impugned mark is identical or similar to the senior mark; the senior or injured mark has a reputation in India; the use of the impugned mark is without due cause; 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.

It was further held that as the law does not provide for a presumption of infringement in the case of dilution of trade mark, each of the aforesaid elements has to be established before an injunction can be granted on this ground. The court also said that the test of similarity of marks, namely dilution, was a notch higher than required in the said Act. It also held that in deciding the question of the similarity of the two marks in a dilution action, the Court must focus on the 'global' look rather than on the common elements of the two marks. The court further held that though the 'aura' of the ITC mark could go beyond the niche hospitality services and extend to other luxury goods; there was nothing to show that such association could extend to cigarettes. The court considered this aspect to be crucial as ITC itself sold cigarettes without the said mark. There was also nothing on record to show that the use of Phillip Morris's mark would be detrimental to the distinctive character of the ITC mark. The Court further held “In the case of logos and other marks, the application of the “identity” or 30 2010 (42) PTC 572 (Del.). 15 | P a g e

“similarity” test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective.31

7. CONCLUSION AND SUGGESTION

31 Vaish Associates Advocates, Intellectual Property and Information Technology Laws, Vol. III Issue 2 (2010) at 3available at http://www.vaishlaw.com/new/fp_ipit/_IP-IT-Laws%20Newsletter-October-2010-Vaish %20Associates-India.pdf.

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TABLE OF CASES

1. 2. 3. 4. 5.

Daimler Benz Aktiegesellschaft v. Hybo Hindustanone AIR 1994 Delhi 239. ITC Limited v. Philip Morris Products SA and Ors.2010 (42) PTC 572 (Del.). Mead Data Central v. Toyota 875 F.2d 1026 (2d Cir. 1989) Moseley v. V Secret Catalogue, Inc 2010 WL 1979429 (6th Cir. May 19, 2010). Panavision International v. Dennis Toeppen 141 F.3d 1316 (9th Cir. 1998).

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BIBLIOGRAPHY

BOOKS/JOURNALS REFERRED 1. T.G. Agitha, Trademark dilution: Indian Approach 50 (3) JILI 341 (2008). 2. TRADE MARKS AND BRANDS: AN INTERDISCIPLINARY CRITIQUE, (Lionel Bently et. al. eds., 2008).

WEB-ARTICLES/WEBLINKS/WEB-JOURNALS REFERRED 1. INTERNATIONAL TRADEMARK ASSOCIATION REPORT, The Protection Of Well- Known Marks In Asia-Pacific, Latin America And Africa (2004) available at http://www.inta.org/Advocacy/Documents/INTAWellKnownMarksAsiaPacificLatinA mericaAfrica.pdf. 2. Internet Trademark Case Summaries available at http://www.finnegan.com/Panavision-Intl-LP-v-Toeppen-01-01-1998/. 3. Keola R. Whittaker, Trademark Dilution in a Global Age, U. Pa. J. Int'l Econ. L, Vol. 27:3 (2006) 907-38 at 920 availabe at https://www.law.upenn.edu/journals/jil/articles/volume27/issue3/Whittaker27U.Pa.J. Int'lEcon.L.907(2006).pdf. 4. Palak Jain, Trademark Dilution in India RGNUL Student Law Review (2014) available at http://www.rslr.in/rslr-blog/trademark-dilution-in-india. 5. Panavision International v. Toeppen available at http://www.casesofinterest.com/tiki/Panavision+International+v.+Toeppen. 6. Roger W. Dyer Jr., Monetary Damages under the Lanham Act: Eighth Circuit Holds Actual Confusion is Not a Prerequisite, 77 Mo. L. Rev. (2012) at 269 available at http://scholarship.law.missouri.edu/mlr/vol77/iss1/10 7. Sheldon Mak Rose & Anderson, McDonald's Corp. v. Arche Technologies, Inc.: Trademark Dilution without Tarnishment (1995) available at http://www.usip.com/pdf/Article_Trademarks/tmdilwo.pdf. 8. The History and Development of Trademark Law available at http://www.iip.or.jp/translation/ono/ch2.pdf. 9. The History Of Trademark Law available at http://www.tabberone.com/Trademarks/TrademarkLaw /History /History.shtml 10. Trademark Dilution available at http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx. 11. Trademark Dilution: Yea or Nay (2013) available at http://www.selvamandselvam.in/trademark-dilution-yea-or-nay/. 12. Ughetta Manzone , Panavision International, L.P. v. Toeppen, Berkeley, Technology Law Journal Volume 13 Issue 1 (Jan 1998) available at http://scholarship.law.berkeley.edu/cgi/viewcontent.cgi?article=1170&context=btlj.

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13. Vaish Associates Advocates, Intellectual Property and Information Technology Laws, Vol. III Issue 2 (2010) at 3available at http://www.vaishlaw.com/new/fp_ipit/_IP-ITLaws%20Newsletter-October-2010-Vaish%20Associates-India.pdf. 14. What is Trademark Dilution? available at http://www.nolo.com/legalencyclopedia/what-trademark-dilution.html.

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