Author: ashwin

By: Ayushee Subhadarshini

As it is said an invention is not your own until it is patented- so what is patent? How do we patent our invention? The simple answer to this is patent is the Exclusive legal right given to the inventor so as to protect its invention. we may say that it is a form of intellectual property. Basically, it is a title given to the owner of the invention for a certain time period which protects and secures the invention from any third party interference. In order to get a patent the inventor in return has to disclose all the information of the product, method, process, research etc of the invention.

Patents can be a three types- utility patent, design patent and plant patent. In utility patent the invention may be a product or process and it can be patented for up to 20 years .For example, engines of automobiles. Design patent it is a kind of registration in which the appearance of a particular design is patented it may be extended for up to 15 years. For example, logo of a brand (Note- design patent only count for appearance and not any functional aspect) .Plant patent is not found in India. In this if a farmer crossbreeds and produces a new variety of plant it may be patented.

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A big question arises on what can be patented- first a process or method can be patented .a new process which may be short, more efficient and user-friendly, which may give good quality products can be patented. Second a composition can also be patented like combination of certain substances or an active ingredient with other substances or mixture of certain elements or chemicals or substances. Therefore any useful composition is patentable. The third one is research .a research on some product process or approach can also be patented because this research might be used while making a product so it is patentable.

There are certain criteria which are needed for patenting. The invention must be new or novel. it should be of total originality ,it should not be found anywhere in the world .it should be an inventive step .either it may have some Technical Advancement some economic significance or both etc. it should be an inventive product the product; should be capable of industrial application in essence it should be fit for use in industries.

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Now there are inventions which cannot be patented.[1] Section 3 and 4 of Indian Patent Act 1970 lists out non patentable subject matter like scientific discoveries ,living beings ,plants ,animals ,organisms, new form of known substances ,mere addictive combination, traditional knowledge ,business methods ,mathematical methods and atomic energy etc.

There are certain procedures which are needed to be followed for getting a patent granted:

First the complete concept or idea of the invention should be written down in detail. it should include what is the invention or Idea, its working mechanism, how the invention helps in solving a problem ,the field of the invention, advantages of it ,elements or objects or composition involved in it ,any competitors of the invention etc.

If the invention includes research then the lab record should also be included. Visual illustrations play an important role- so sketches drawings, charts; diagrams should be designed to explain the working mechanism of the invention. As we know that all inventions cannot be patented so checking upon patentability is a very important step.

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Second step includes the drafting of patent application. as we know that a patent has both technical and legal aspects, for drafting a patent application it requires a lot of skills and practice .filing it on own would be a huge mistake as it might cause hindrance in the opportunity. this being the most crucial step requires a good patent agent or an attorney who will not only file the application but would stay and supervisor in the whole process like till the commercialization phase where the real money comes in by providing license or by selling the patent rights .this step costs depending on the fees of patent attorney or agent and it may require a time period of 8 to 15 working days.

After the drafting and reviewing of application by the inventor the patent is filed in a government office where a receipt is generated with an application number. there are three types of applications which can be filed in the patent office- the first one is the provisional application which is filed at an early stage of the research or development of the invention, it secures the filing date, 12 months is provided for giving the complete specifications and it is low in cost .the complete patent application is drafted when all the necessities and specifications required are available to file a patent. The international patent application provides protection to patent rights outside the country as well because as we know that patents are territorial in nature it can only be secured inside the country.

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Fourth step includes an examination request where an examiner is appointed by the controller to review the patent application only after receiving the request for examination .The examination report is generated after the review .it is a kind of prosecution where the patent application is prosecuted at every step before the grant of patent.

Fifth step includes the response to the objections. Mainly patent applications receive some or the other kind of objection in the examination report .the patent agent or attorney may give a written response to the objections raised. After analyzing it, if the objection is still not resolved then a meeting or communication of any kind is set up between the inventor with the examiner in the presence of attorney to clear up the objection.

In the sixth step the application is placed in order for grant. Once it meets all the patents criteria and is cleared of any hindrance the patent is granted.

There are certain advantages of filing a patent:

• A patent certainly gives protection to the invention and stops others from copying it.
• It also helps to protect it from competition at early stages of invention.
• It can also be used as a source of revenue by selling the patent rights or by providing license one can collect royalties from it.
• A premium can also be charged for an invention because it is unique and no one else’s making it.
• It gives more credit profit to an inventor and their company as well.

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Being advantageous at times there are also certain disadvantages of a patent:

• Makes the invention a public record i.e., information of it is publicly available .rather than keeping it a secret may help to stay afar from competitors.
• Applying for a patent is time consuming during which the certain invention may become outdated.
• For filing an application ,patent agent or attorney is required who charge heavy amount .putting money somewhere where the probability of getting the result is not a short is not a good move.
• Patents are time specific -filing dates, Annual fees all must be checked accordingly or it may get cancelled anytime.
• The territorial nature of patent provides service to exposure outside the country.

Landmark cases on Patent in India:

[2]Bajaj Auto Limited versus TVS Motors Company – in this case the defendants infringed the patent which concerns the invention of the technology of improved internal combustion engines of the plaintiff.      This case is important as it also includes the doctrine of pith and substance.

[3]Novartis AG vs. Union of India- in this case Novartis filed patent application for its new version of cancer drug that is glivec. The case was regarding the filing of patent application for a new version of a known drug molecule. This is prohibited under Section 3(d) of Indian Patents Act, 1970. since the existing drugs patent has already expired the generic version which is also cheaper in cost is permissible for supply. so the application for leave it is rejected.

[4] F. Hoffmann-La Roche Ltd. & Anr. v. Cipla Ltd-In this case the plaintiff filed a suit for injunction, for curbing infringement and for claiming damages .The defendant argued that the drug was for treatment of cancer and was a derivative of parent drug, the composition was same except for one alternative .This was upheld in the Supreme Court.

Section 118-124 of the Patents Act,1970 provides provisions of penalties.

Section 108 of the Patents Act,1970 provides provisions for relief.

                     Act                                                 Punishment

Contravention of secrecy provisions  relating to certain inventions	Imprisonment up to 2years or fine or both
Falsification of entries in register,etc	Imprisonment up to 2 years or fine or both
Unauthorized claim of Patents  rights	Fine up to 1-lakh rupees
Wrongful use of words “patent office”	Imprisonment up to 6 months or fine or both
Refusal or failure to supply information	Fine up to 10-laks or imprisonment up to 6 months or both
Practice by non-registered patent agents	Fine up to 1-lakh rupees, up to 5 lakhs in second offence.
Offence by companies	Liable for proceedings, punished accordingly.

           

RELIEF IN AN ACTION FOR INFRINGEMENT

 

PATENT OFFICES IN INDIA

PATENT OFFICE	TERRITORIAL JURISDICTION
Mumbai	The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu and Dadra & Nagar Haveli
Delhi	The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi and the Union Territory of Chandigarh
Chennai       Kolkata	The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and the Union Territories of Pondicherry and Lakshadweep.   Rest of India (States of Bihar, Jharkhand, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh and Union Territory of Andaman and Nicobar Islands)

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Conclusion

Patent filing may seem a long and complex process but one should always remember the importance of a patent. Patent would always ensure that no third party can claim your rights without permission and order. Legal bodies are always out there to help people when necessary. An intelligent approach matters the most while filing a patent. With technological and digital advancements patent filing may become easier day by day. Make in India has a real significance over patents. We should not only encourage inventions and grant them patent, it also signifies the product to work in India. This helps in building up of the economy. It helps in more turnover for businesses, more credibility and many more to it.

[1] Indian Patent Act 1970

[2] MIPR 2008 (1) 217

[3] (2007) 4MLJ 1153

[4] I.A 642/2008 in CS (OS) 89/2008

By: Himali Sylvester

Introduction

 It has often been espoused that homo sapiens are inherently ‘possessive’ in nature. In other words, it could be said that human beings are born with the unique ability of ‘claiming’ possession over materials. It was not too long ago that the discourse of property and possession unfolded. The two erudite minds in the 17th century, Jean Jacques Rousseau and John Locke both discussed property in starkly different ways. Rousseau contemplated that the need for property is not an inherent human characteristic and that it is a product of ‘general will’ sanctioned by the State.^[1] On the other hand, John Locke strongly condoned that those human beings in the state of nature are governed by human reasoning with a deep-seated need to assert control over what they believed to be their own.

Consequently, when this certain ‘own’ was taken away from an individual, she felt the need to protect it and therewith arose the concept of ‘right’. Such individual right received the consent of the community and became moral right and eventually, with the sanction of the state, such right transcended to become a legal right. For a large part of history however, the idea or notion of possession was confined to only tangible objects -to actual physical possession -to that which a man might pass from hand to hand. It is only in the dawn of history, with the palpable advent of literature and printer, that rights over intangible property came to be realised.

The Greeks

The Greek contribution to drama and literature cannot be undermined. One cannot help but be reminded of Homer and the rhapsodists who cannot ever fade from human memory. It must however, be prudently noted that rhapsodists published their poems by word of mouth and the spoken poem flew away with the voice of the speaker and lingered only in the memory. Even when the poems and proses were translated to writing, after paper made it possible to preserve the labours of the poet and the historian, these authors had not any thought of making money by multiplying copies of their works, yet. The dramatists in Rome felt quite content with the compensation they had received and thus, the question of rights over the theatrical performance did not particularly arise. At the time, there was a notable trend of transcribing drama into text and of making copies of popular proses. While authors complained about the mangled translations, they still hadn’t realised that wide-spread copying and transcription of their intellect was in some way a moral wrong. In fact, some authors considered it a matter of ‘honour’ to allow their literary labour to be widely circulated.

 

Advent of the Printing Press

It was only after Gutenberg had set up as a printer, that the possibility of definite profit from the sale of the works of the author became visible to the author. Until then authors had felt no sense of wrong. With the invention of printing, there was a chance of profit and as soon as the author saw that this profit diminished by an unauthorised reprint of her work, she felt conscious of the injury caused and thus, protested against it in as many ways as possible. With time, public will be inclined towards the authors and some sort protection was granted to them in the form of ‘copyrights’, by penalising ones that seek unauthorised copies of an author’s work.

The World Order

Traces of copyright grants can be seen in many European states, i.e the then divided continental Europe. The Senate of Venice issued an order, in 1469, that John of Spira should have the exclusive right for five years to print the epistles of Cicero and of Pliny^[2]. This privilege was an exceptional exercise of the power of the sovereign state to protect the meritorious work of a worthy citizen. It granted only a limited protection for about two literary works. But it established a precedent. A precedent which has been carried down over centuries so much so that for four hundred years now, any book published in Venice is, by international conventions, protected from pillage for a period of at least fifty years.

In 1491, Venice gave Peter of Ravenna, and the publisher of his choice, the exclusive right to print and sell his Phamnix,3-the first recorded instance of a copyright awarded directly to an author. Germany issued its first copyright at Nuremberg in I501. France covered that privilege only for one edition of a book and if the book was sent for a next edition, a second patent had to be obtained.

Early Days of England

The King’s supremacy in England accorded certain privileges to authors and publicists that the sovereign considered sacred and important. In 1518, the King’s Printer by the name Richard Pynson, issued the first book cum privilegio. The book’s title page declared that no one else should print or import in England any other copies for two years. Further, in I530, a privilege for seven years was granted to John Palsgrave as commensuration for the value of his work and the time spent on it. This event has been noted as the first recognition of the nature of copyright as furnishing a reward to the author for his labor in England.

Wynkyn de Worde in the year 1533 procured the sovereign’s protection for the second edition of his book, Witinton’s Grammar. Ten years prior to that, the first edition of Worde’s book had been released which during the decade had again been reprinted by Peter Trevers without authorisation. Protesting against the despoilment, Worde in his subsequent editions vigorously condemned Trevers’ actions and on account of that, Worde applied and secured protection for his works. This is another notable example of copyrights unfolding in England.

Timeline of Statutory Development

Details	Dates
Star Chamber Decree supporting copyright	1637
Ordinance of the Commonwealth concerning licensing was pronounced. Copyright was subordinate to political objects.	1643
Licensing Act The Act enacted gives copyright coupled with license.	1662
British Statute of Anne First Copyright Act was enacted. Copyright to be for fourteen years, and if author then alive, for fourteen years more. Conjointly, the author possessed the power to regulate price	1710
Copyright to be for twenty-eight years absolutely, and further for the life of the author, if alive	1812
Fine Arts Copyright Act Copyright to be for the life of the author and seven years longer, or for forty-two years, whichever term last expires.	1842
The Copyright Act	1911

 

Statutory Development

The Printers and Binders Act,1534, banned the import of foreign works and enabled the Lord Chancellor to limit the price of books. A charter was granted by Philip and Mary in 1556, intending to prevent the propagation of the Protestant Reformation. The Stationers’ Company received its Royal Charter which gave the company the power to decree who could print books. It also granted the company the right to seize illicit or pirated works^[3]. Further censorship was introduced by Henry VIII who required that all books should be approved before publication.

In another instance, the famous ‘Decree of Star Chamber concerning printing’ issued in I637 set forth the following:

‘that no person or persons whatsoever shall at any time print or cause to be imprinted any book or pamphlet whatsoever, unless the same book or pamphlet, and also all and every the titles, epistles, prefaces, poems, preambles, introductions, tables, dedications and other matters and things whatsoever thereunto annexed, or therewith imprinted, shall be first lawfully licensed.’

1. Licensing Act

The Licensing Act of 1662 conferred upon the company the right to sue for any infringement.

To bestow such a right, a register of licensed books was maintained wherein certain members were accorded the powers to search and seize books that were not licensed. Understandably, the Licensing Act could not operate for too long as it failed to distinguish between intellectual piracy and physical piracy.

2. British Statute of Anne

With the enactment of the Statute of Anne, 1710, first time in British history, ‘copyright’ was statutorily recognised as a legal right. It afforded security and entitlement upon authors with the intention of promoting extensive learning.

Key requisites of the Act 

1. As per the provisions of the Act, the Author of a book yet to be printed shall have the sole right printing for 14 years and if the author survives the 14 years, an additional 14 years of the aforesaid right shall be granted to him.
2. Infringers must forfeit the infringing books found in their custody and shall be fined with half amount to be paid to the crown and the other half to the plaintiff.
3. Only books entered for publication in the ‘Register Book’ of Stationer’s Company can be sued for infringement.

Precedents

1. Bach v. Longman^[4]

Brief Facts – The case discussed on the issue of whether or not printed music fell within the purview of copyright protection as conferred by the Statute of Anne.

Ratio Decidendi- It was held by the Court that printed music fell perfectly within the scope of protection granted by the Statute of Anne.

1. Gyles v. Wilcox^[5]

Ratio Decidendi – The doctrine of fair abridgement was propounded for the first time in UK history. The main discourse in the case revolved around whether or not an abridgement of copyright inherently constituted copyright infringement, or whether they could qualify as a separate, new or derivative work. The Justice ruled that abridgement fell under two categories:

1. True abridgements
2. Coloured shortenings

True abridgements include a genuine effort shown on the part of the editor to constitute a new work which is not intended to infringe upon the copyright of the original.

1. Walter v. Lane

Brief Facts – Certain reporters working for The Times newspaper took down some notes during a series of speeches delivered by the Earl of Rosemary, a renowned politician.  The verbatim speeches were then transcribed and published in the newspaper, The Times.  Using these published speeches with verbatim quotes from the paper edition, the respondent published a book. The issue was whether journalists have copyrights.

Ratio decidendi – The court held that the reporters were authors under the Copyright Act 1842. The effort, skill and time that spent was sufficient to make them original. According to Lord Brampton, writing reports required considerable intellectual skill and labour beyond the mere mechanical operation of writing.

3. Fine Arts Copyright Act and Copyrights Act

As the name suggests, the Fine Arts Copyrights Act extended the terms of copyright to fine arts as well. Fine arts would include music, dance, paintings etc. Successively, the Copyright Act of 1911 was passed which consolidated all protections with respect to the Berne Convention and the salient features of Act included:

1. Extension of term of copyright to life and 50 years posthumously.
2. The need to register in the ‘Register of Stationers’ to receive protection was done away with
3. Work that remained unpublished is also entitled to protection
4. The Act includes all forms of arts such as literature, painting, music, photography etc.

Current Regime

1. Copyright, Designs and Patents Act, 1988

Currently, copyrights in UK is governed by the Copyright, Designs and Patents Act enacted in 1988. For copyright to subsist the literary, dramatic, musical and artistic work must adhere to the ‘originality’ criterion. Obviously, such work should not be copied from another and must be produced based on individual skill, judgement and own work. Additionally, the work must be recorded in writing and must meet the UK qualification of nationality of the author or the requisite of ‘place of first publication’. The copyright should not have already expired.

It has often been said that the aforementioned statute provides a close list of works that can claim copyright. However, in the decision of Brompton Bicycle Ltd. v. Chedech^[6] it was held that a close list may not always be efficacious in the protection and enforcement of copyright. In another landmark case of Express Newspapers v. News (UK) Ltd^[7] , the precedent set in Walter v. Lane was upheld, reiterating that journalists are also authors. 

1. Duration of Copyright Protection

 Terms of protection include:

1. For literary, dramatic, musical and artistic works for a period of the author’s life and 70 years after her/his death.
2. For computer generated literary, dramatic, musical and artistic works copyrights subsists for 50 years from the end of the calendar year in which the work was made.

• In a film the copyright expires 70 years after the last date in the calendar year of the death of the principal director, the author of the screen play and the composer of music, if any in the movie.

1. Copyright in a sound recording ends 50 years from the last day in the calendar year that it was published.
2. Copyright in broadcast also subsists fro 50 years from the end of calendar year in which it was published.
3. Copyright in the typographical arrangement of published edition expires at the end of 25 years from the end of calendar in which the edition was first published.

Landmark Case Law pertaining to a Current Discourse

Temple Island Collections Ltd v New English Teas Ltd^[8]

Brief facts – The Claimant’s photograph was a picture of a bright red bus with the Houses of Parliament and Big Ben in black and white in the backdrop. Additionally, Westminster Bridge, and the river in black and white was present in the foreground. The Defendant used a similar photograph in their souvenir products, just that the picture was taken from a different angle. The claimants sued the defendants for infringement of copyrights.

Judgement – Judge Birss found that the Defendant’s photograph infringed the Claimant’s copyright in its photograph.

Discourse – The decision raised several questions in the legal fraternity and its potential impact on what is known as the stark difference between idea and expression. The English Courts have recognised a principle in copyright cases which embraces the idea that a line should be drawn between the idea behind a work, which tends not to be protected by copyright, and the expression of that idea, which can be protected.  It has often been contended by many commentators hat, in the aforementioned circumstance it was the idea that was similar and not the expression of it and hence, the defendants cannot be sued for copyright violation.

Conclusion

The copyright system adopted by UK dates back to a gradual development and evolution that took place over many centuries. The current system is an aggregate and consolidation of various principles, ideas and rules that evolved overtime to protect the intellectual labour of creative authors and it is no doubt that it was the English-speaking race that persevered for the first time to change the special privilege of copyright to a statutory right that today governs all ‘useful works of art’.

 

^[1] Matt Schrage, Rousseau and Locke on property and state, MODERN POLITICAL THOUGHT (Apr. 17, 2021, 9:50 PM IST), https://blogs.harvard.edu/mattschrage/2018/04/26/rousseau-and-locke-on-property-and-the-state/.

^[2] Brander Matthews, The evolution of copyright, JSTOR (11-04-2021 21:48 UTC ), https://www.jstor.org/stable/2139530.

^[3] The UK Copyright Service, https://copyrightservice.co.uk/copyright/history-copyright (last visited Apr.17, 2021).

^[4] 2 Cowper 623 (1777).

^[5] (1740) 26 ER 489.

 

 

 

By: Muskan Sharma

Introduction

Trademark Dilution is an act when someone uses a trademark, without any authority, that tarnishes or blurs the image of a famous mark. Dilution is a type of violation of a trademark, in which the defendant’s use, though not causing the likelihood of confusion, blurs distinctiveness or tarnishes the image of the plaintiff’s famous mark. The protection provided by Section 29(4) of the Trademarks Act, 1999, to the dissimilar goods and services, is based upon the ‘doctrine of dilution’.

The irony is that the expression ‘dilution’ has not been used expressly anywhere in the Trademarks Act, 1999. A plain reading of Section 29(4) of the Trademarks Act, 1999 reveals that a person infringes an already registered trademark if he, not being a person authorized with the permitted use, uses a trademark which—

1. is similar to or identical with the already registered trademark, and
2. is used to represent those goods and services which are way different from those for which the trademark was first registered, and

• the registered trademark is a famous mark, and

1. is detrimental to the distinctive characteristics of the registered trademark.

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Importance of Doctrine of Dilution

The purpose behind the protection of trademarks is to avoid weakening or dilution of trademarks. If the subsequent user resorts to the use of the similar or near the similar mark in respect of the same goods or services, it would not only decrease the value of the famous mark i.e. trademark of the prior user but ultimately result in dilution of the mark itself. Such an invasion made by the subsequent user is nothing but a commercial invasion. It may yield greater profits to the subsequent user for sometime but will harm the market in the long run.

A Trademark is like a property and no unauthorized person is allowed to commit trespass on it. Such a kind of dilution or weakening of the famous mark, therefore, need not be accompanied by the element of confusion.

In Caterpillar Inc. v. Mehtab Ahmed[1], the Delhi High Court has highlighted the importance of the ‘Doctrine of Dilution’. The Delhi High Court observed:

“So far as doctrine of dilution is concerned, it is an independent and distinct doctrine. The underlying object of this doctrine is that there is presumption that the relevant customers start associating the mark or trade mark with a new and different source. It results in smearing or partially affecting the descriptive link between the mark of the prior user and its goods. In other words, the link between the mark and the goods is blurred. It amounts to not only reducing the force or value of the trade mark but also it gradually tapers the commercial value of the marks slice by slice. Such kind of dilution is not a fair practice that is expected in trade and commerce”[2].

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Trademark Dilution in India and USA

Indian Courts have recognized the following as essentials of dilution under Section 29(4) of the Trademarks Act, 1999:

1. The impugned mark should be similar or identical to the injured mark,
2. The one claiming injury caused by dilution must prove that his trademark is a famous mark,

• The use of the impugned mark is without any due cause and authorization, and

1. The use of the impugned mark amounts to taking unfair advantage of the reputation of the famous mark or is detrimental to the distinctive characteristics of the famous mark.

The US Courts have a stricter approach than Indian Courts. In India, the trademark needs to have a reputation whereas according to the US laws, the trademark should be a famous mark. In the US, the user of an averagely well-known trademark cannot claim for dilution of a trademark. A clear distinction has to be made between a mark with a reputation and a famous mark. Dilution rights are indeterminate in nature and therefore, the standard of fame required to claim dilution rights should be high. A trademark that is not distinct and famous cannot be diluted.

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In the USA, the Trademark Dilution Revision Act, 2006 has been enacted to deal with Trademark Dilution. The Act provides that to determine whether the impugned mark satisfies the required degree of fame, the following factors should be taken into account:

1. The extent, duration, and geographic reach of publicity and advertising of the trademark, whether publicized or advertised by the owner or third party,
2. The volume, amount, and geographic extent of sale of goods or services offered under the representation of the famous mark,

• The extent of the recognition of the famous mark, and

1. Whether the famous mark was registered in some register or under any previous legislation.

Forms of Trademark Dilution

Trademark dilution does not cause confusion and comes mainly into two forms:

1. Blurring, and
2. Tarnishment

Take the example of ‘Coca Cola’ and ‘Coke’. Both the names and the shape of the bottle in which the beverage often comes are famous marks. If a third firm markets its product as ‘Coca Cola’, it will lead to ‘trademark infringement’. If a third firm markets its product as ‘Sugary Cola’ in Coke-shaped bottles, it can weaken the uniqueness of the characteristics of the bottle. This will amount to Blurring. However, if another firm sells vodka and label it as ‘Coca Cola Vodka’, it can damage the brand image associated with the name ‘Coca Cola’. It will amount to tarnishment.

Therefore, a conclusion can be drawn that when it affects characteristics associated with the name of a famous brand or a famous mark, it is blurring. However, if the process leads to the weakening of the distinctiveness of the name of the famous brand or famous mark, it is tarnishment.

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Dilution by Blurring

Blurring refers to the subverting of the distinctiveness caused by the unauthorized use of a famous mark on dissimilar products. Blurring takes place when a third party uses a trademark in such a way that it decreases the likelihood that the famous mark will be a unique identifier of the prior registered products and services. It hinders the market growth of the owner of the famous mark being used.

Dilution by Tarnishment

Dilution of a trademark may also be performed by either sullying or impairing a distinctive quality of a trademark of an already existing user. This is usually known as ‘dilution by tarnishment’. The purpose behind such an invasion is to degrade, tarnish, or dilute the distinctive quality of a trademark. For instance, if an attempt is made to communicate an idea that a particular product of a senior user is injurious to the health or is inferior in quality and some epithet is used in the advertisement. If one has to convey the idea that Coca Cola is not good for health, and his advertisement campaign states Drink Cocaine in the same font and script as used by the senior user, he will be considered liable for dilution of a trademark.

The act of dilution of a trademark by way of tarnishment is mostly with regard to strong, well-recognized, and famous trademarks. It has the effect of weakening or diminishing the identification value and strength of the trademark. There is no need to establish the likelihood of confusion with regard to affiliation, source, and connection. This is so as some potential buyers may be confused as to the source or affiliation while others may identify the source or affiliation without any hassle.

Landmark Cases

• Bata India Ltd. v. M/S. Pyare Lal & Co. Meerut City & Ors.[3]

The Plaintiff company ‘Bata India Ltd.’ came to know about ‘Batafoam’ which used to deal in sofas, cushions, mattresses, and similar items. ‘Batafoam’ was using the name ‘Bata’ in the same form and style and an average customer would’ve mistaken both the trademarks as the same.

The Hon’ble Allahabad High Court held that this action of the defendant of using Bata’s trademark will cause damage to the reputation of the plaintiff. It is a trespass on the right of the plaintiff over the trademark ‘Bata’. Bata’ is neither a fancy name nor a paternal name and not related to the defendant in any case. It is a name well-known in the shoe industry. The Court observed that the defendant is causing not just deception in the minds of the buyers but an injury to the plaintiff as well.

• Daimler Benz Aktiegesellchaft and Anr Hybo Hindustan[4]

The Delhi High Court observed that the use of the trademark ‘Benz’ for underwear by the defendant whereas the plaintiff has been already using the same trademark ‘Benz’ for cars would be discrimination against the usage of the pre-acquired trademarks by the plaintiffs. The Delhi High Court, therefore, granted the injunction which the plaintiff sought against the defendant.

• Ford Motor Company CR Borman[5]

In the present case, the question before the Court was whether the use of the trademark ‘Ford’ to represent shoes by the defendant amounts to an infringement of the plaintiff’s right over the famous mark ‘Ford’ to represent automobiles.

The Court observed that the use of a famous mark for two different classes of products also amounts to tarnishment of a trademark. Therefore, the defendant’s action of using the trademark ‘Ford’ to represent shoes does amount to an infringement of the plaintiff’s right over the famous mark ‘Ford’ to represent automobiles.

• ITC Ltd. v. Philip Morris Products SA[6]

The plaintiff was the owner of the ‘WELCOMEGROUP’ logo containing a device displaying folded hands. In a suit for dilution of trademark, the Hon’ble Court stated that the plaintiff has to pass a more stringent test (than the deceptive similarity standard) of proving similarity or identity. The observed that a global look, rather than a focus only on the mutual elements of the mark, is to be taken while deciding if the impugned or junior mark infringes, by dilution of an existing registered mark. The plaintiff’s mark resembles a ‘W’ but the gesture of ‘Namaste’ is discernible. All the defendant’s previous marks resemble ‘M’ (Maybe Marlboro). Considering the overall marks for the logo, without cataloguing minutely the dissimilarities or similarities, this court discerns no ‘similarity’ or ‘identity’ in the overall presentation of the two marks.

• Bayerische Motoren Werke AG Om Balajee Automobile (India) Private Limited[7]

In the present suit, the applicant moved an application before the Delhi High Court seeking ad interim injunction against the defendant for using ‘DMW’ mark for e-rickshaws it manufactures. The plaintiff pleaded that ‘BMW’ is a famous mark and represents the existence of ‘Bayerische Motoren Werke’, A German automobile manufacturing company. The defendant used a deceptively similar mark for e-rickshaws. The last two letters of both the trademarks are ‘M’ and ‘W’ and the first letter of both marks ‘B’ and ‘D’ are phonetically similar. Therefore, the mark ‘DMW’ and ‘BMW’ are deceptively similar.

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The Delhi High Court observed that the defendant had adapted to the essential features of the famous mark of the plaintiff and the phonetic and visual resemblance was apparent. ‘DMW’ mark was supposed to cause confusion in the minds of the buyers due to the deceptive similarity between the two.

The Court held that in the case of famous marks like ‘BMW’, the use of a phonetically and visually similar trademark by the defendant does constitute infringement under Section 29(4) of the Trademarks Act, 1999 because it is detrimental to the reputation of plaintiff’s famous mark ‘BMW’. It was further held that the ‘deceptively similar’ standard was not a part of the infringement under Section 29(4) of the Trademarks Act, 1999, and the question of deceptive similarity would not arise in trademark dilution cases.

Conclusion

Trademark Dilution is, therefore, a process of trademark infringement where the subsequent use of a trademark dilutes the essence of a famous mark and uses the diluted mark for his own publicity and advertisement. Trademark dilution can be carried out by two methods namely, Blurring and Tarnishment. The idea behind the protection of famous marks from the process of trademark dilution is to preserve their uniqueness and distinctive characters. It also prevents the birth of confusion in the minds of buyers with respect to the goods and services associated with a brand’s famous mark.

In India, the trademark dilution regime is governed by Section 29(4) of the Trademarks Act, 1999 whereas in the US, the trademark dilution regime is regulated by the Trademark Dilution Revision Act, 2006. In India, there needs to be some level of reputation of the already registered trademark to constitute a case of trademark dilution whereas in the US, the already registered trademark should be a famous one to constitute a case of trademark dilution. The concept of Trademark Dilution under both regimes is similar to a great extent but there are slight distinctions like the standard of ‘reputation’ and ‘fame’.

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[1] 2002 (25) PTC 438 (Del)

[2] Ibid.

[3] AIR 1985 All 242

[4] AIR 1994 Delhi 236

[5] MIPR 2008 (3) 418

[6] 2010 (42) PTC 572 (Del)

[7] CS (COMM) 292/2017