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Trademark Dilution in India

Updated: Apr 22

Trademark dilution occurs when the use of a similar mark weakens the uniqueness of a famous trademark, without requiring proof of confusion. Unlike traditional infringement, dilution laws protect famous marks regardless of confusion. Only well-known marks enjoy protection under dilution acts, preserving their reputation. The Trade Marks Act, 1999 addresses trademark dilution in India.


What is a Trademark?

The Trade Marks Act of 1999 addresses trademark matters in India. Trade Marks are significant corporate assets, and while registration is not required by law, it is recommended since unregistered trademarks receive little protection. If another firm tries to use the same or a similar mark after registration, there will be a suitable legal procedure to block it. A trademarked name distinguishes all of the proprietor’s products and services from those of others, and it also protects the proprietor’s reputation from damage due to counterfeit items. A trademark is valid for 10 years and can be renewed perpetually by making periodic fees in accordance with the country's rules. Trademark rights are private property rights that are enforced through judicial orders.

A trademark must be a 'mark' in addition to other essential criteria and the absence of banned characteristics. As a result, the legal definition of the mark as provided in Section 2(1)(m) of the Trade Marks Act, 1999 is critical, which states that a mark comprises a device, brand, heading, label, ticket, name, signature, word, letter, numerical, form of products, packaging, or combinations of colours or any combination thereof.
Trademark Dilution India

As a result, the definition is inclusive rather than exhaustive. So, everything that can be represented graphically in single-dimensional, two-dimensional, or three-dimensional space may be regarded as a mark. A company’s emblem is a mark, as is a graphical depiction of a certain combination of characters, style, or combination of multiple colours on a product or in the company’s name. The Trade Marks Act, among other things, allows for the registration of service marks, the filing of multi class applications, the expansion of a trademark's registration period to ten years, and the acknowledgment of the idea of well-known marks. India follows both codified law and common law concepts, allowing for infringement and passing off cases against trademark infringement.


With the rising intensity in trademark activities, there has been a significant increase in trademark dilution and infringement cases. While the awareness about trademark dilution rights is comparatively lower than trademark infringement, it is important to note that trademark dilution can be equally detrimental to a company. In the competitive realm of business, a brand's identity stands as a hallmark of its success. The recognition and distinctiveness of a trademark are not merely symbolic but represent the culmination of a company's efforts, innovations, and reputation. 


What is Trademark Dilution?

Trademark Dilution is regarded as the surface of trademark infringement, where the owner of a mark receives protection against its use that may weaken the uniqueness of a famous trademark. Dilution differs from trademark infringement as there is no specific requirement to prove a likelihood of confusion for protecting the mark. Instead, all that is needed is the use of a famous mark by a third party, causing dilution of the superior quality of the trademark. Under the clause of the trademark dilution act, only famous marks enjoy protection against dilution.

The following points are considered while determining whether a mark is recognized or not:

  • The extent and duration of use of the mark.

  • The extent and duration of advertising for the mark.

  • The geography in which the mark has been used.

  • The level of distinctiveness of the mark (either through the inherent nature of the mark itself or via acquired distinctiveness.

  • The level of recognition of the mark.

  • The method through which the product has been marketed and distributed.

  • The use of a mark by third parties.

  • Whether the mark has been registered.

Generally speaking, a mark cannot be deemed "famous" until it has attained a significant level of public recognition. When a mark has widespread public awareness, it is easily identifiable. Brand names that are visually familiar to people all over the world, like Nike, Coca-Cola, Colgate, Sony, Ikea, etc., would logically qualify as well-known trademarks. A well-known brand's gradual loss of uniqueness and distinctiveness is referred to as trademark dilution in legal parlance. This happens when someone else uses a mark that is similar to or exact to the original, which could cause the original brand's identity to become diluted or lost. 


Put more simply, when a powerful and well-known trademark is used without authorisation, it could either lose its distinctiveness (blurring) as a result of being linked to other goods or services, or it could suffer (tarnishment) as a result of the unfavourable associations that are brought about by the unlawful use. Dilution of a trademark is particularly important for well-known brands whose identities are very valuable. The purpose of trademark dilution regulations is to shield these companies from unintentional associations or unfavorable impressions brought about by other people's use of marks that are confusingly similar to their own. Laws against trademark dilution are essential for maintaining a brand's distinctiveness since they stop the brand's distinct identity and reputation from eroding. 


Trademark Dilution in India: The Trade Marks Act, 1999 addresses trademark dilution in India. In particular, trademark dilution is recognized and forbidden by Section 29(4) of the Act. It declares that any use of a mark that is identical to or similar to a registered trademark constitutes infringement and dilutes the original mark's distinctiveness.

The purpose of this clause is to shield well-known trademarks from unapproved usage that could damage their reputation or distinctiveness. Both tarnishment and blurring are regarded as kinds of dilution under Indian law. While tarnishment occurs when an unauthorized use of a mark negatively affects public image of the brand and causes reputational damage, blurring occurs when an unauthorized use of a mark loses its distinctiveness through linkage with other products or services. Businesses operating in India need to be vigilant about protecting their trademarks and can seek legal remedies under the Trade Marks Act to prevent dilution.

How Trademark Dilution Occurs?

  1. Blurring of Trademark: It happens when a well-known symbol of identification is ruined or damaged as a result of improper use by another person. When a mark is used by a third party, it becomes less likely that the mark will be used to uniquely identify the owner's product, which will hurt sales. Trademark blurring occurs when multiple third parties submit applications for, register, or use nearly identical or confusingly similar trademarks. Regrettably, trademark obscurity results from the widespread unauthorized use of trademarks in commerce.

  2. Tarnishment of Trademark: When a trademark gets tarnished, it's because the mark being challenged associates the original mark with subpar items. Furthermore, the contested mark presents the original in an offensive manner that is probably not the best way to represent the owner's goods. Due to the prevalence of dishonest producers and dealers in nations like Bangladesh, China, India, and others, trademark tarnishment is a widespread issue. They are prepared to offer the goods at a low price while using the original mark with minor modifications, seriously harming the owner's brand equity.

  3. Freeriding of Trademark: When a trademark owner begins to profit from a favorable association between their owned mark and a well-known third-party mark, this is known as trademark freeriding. Some nations also refer to trademark freeriding as parasitic exploitation. Thus, freeriding is seen as a criminal violation in many nations, notably the European Union (EU). In trademark law, however, free riding cannot be regarded as harm or damage as the defendant's profits do not result in the plaintiff's loss.

Types of Marks on the Level of Dilution

  • Generic Trademark: These trademarks end up being generic or synonymous with a certain category of goods or services. Due to the term's widespread use or underlying meaning, it is strongly associated with the connected class of services, which goes against the trademark holder's wishes. These types of marks cannot be registered unless they have gained recognition via consistent use. Blurred trademark dilution and the use of generic trademarks are comparable. 

  • Descriptive Trademark: These are phrases that denote the features of a good or service that are covered by the mark. It's comparable to using an adjective. The trademark office primarily rejects descriptive trademarks as belonging to the absolute grounds of rejection, making them unregistrable. 

  • Suggestive Trademark: These trademarks don't describe the goods or services; instead, they make ideas or allusions to them. Customers must use ingenuity when using these trademarks. Although this is done indirectly, a suggestive trademark offers a quality or qualities of goods and services for offering.

  • Arbitrary Trademark: Another name for it is whimsical marks. These trademarks are made up of a term or symbol that is unrelated to the goods or services offered. Descriptive trademarks, which describe specific aspects of products or services, are very distinct from arbitrary trademarks. Furthermore, an arbitrary trademark is registrable and has trademark rights, in contrast to a descriptive trademark. 

  • Coined/Invented Trademark: Trademarks of this kind have the best chance of being registered. Invented names that have no connection to any dictionary definition are known as minted trademarks. The goal of creating a coined or invented trademark is to positively identify the offering's product or service with the mark. 

How to Protect Against Trademark Dilution:

  • Preserving Uniqueness: Trademark dilution laws ensure that a brand's distinctive elements remain unique and recognizable. By preventing the unauthorized use of similar or identical marks, these laws help maintain the brand's individuality in the marketplace. Example: The trademark "Aspirin" serves as a prominent illustration of trademark dilution. Initially owned by the German pharmaceutical company Bayer, "Aspirin" was associated with a specific brand of acetylsalicylic acid pain reliever. Over time, widespread usage led to the loss of its distinctiveness, ultimately turning "aspirin" into a generic term for any acetylsalicylic acid pain reliever.

  • Preventive Blurring: Unauthorized use of a trademark in connection with different products or services can lead to blurring, where the distinctiveness of the original mark is weakened. Trademark dilution laws prohibit such blurring, preserving the clarity and strength of the brand's association with specific goods or services. Example: For instance, a local coffee shop is blurring out the logo of the very famous coffee brand ‘Starbucks’ and using it with some minor or major changes. 

  • Avoiding Tarnishment: Tarnishment occurs when the unauthorized use of a mark creates negative associations or damages the reputation of the original brand. Trademark dilution laws protect against tarnishment, ensuring that the brand's image remains positive and untarnished by unauthorized associations. Example: For an instance: some company mocks the font style of the famous beverages company ‘Coca-Cola’ by using it in ‘Enjoy Cocaine’

  • Maintaining Brand Value: A brand's value is often closely tied to its distinctiveness and reputation. Trademark dilution laws contribute to maintaining and even enhancing this value by preventing actions that could dilute the brand's identity or harm its standing in the eyes of consumers.

  • Consumer Confidence: Consumers often rely on trademarks as indicators of quality and source. By curbing dilution, trademark laws help maintain consumer confidence. Consumers can trust that products or services bearing a specific trademark are associated with the consistent quality and reputation of the brand they recognize.

  • Long-term Brand Strategy: Trademark dilution laws encourage businesses to adopt a long-term perspective on brand strategy. Companies are motivated to invest in building and maintaining strong brands, knowing that legal protections exist to safeguard their efforts from dilutive activities by others.

  • Encouraging Innovation and Creativity: Knowing that their trademarks are protected from dilution, businesses are more likely to invest in innovation and creativity. This fosters healthy competition and ensures that brands continue to evolve and stay relevant in the market.

  • Marketplace Stability: Trademark dilution laws contribute to a stable marketplace by discouraging actions that could create confusion or negatively impact the perceived quality of goods and services. This stability benefits both consumers and businesses, fostering a fair and competitive business environment. Example: The worldwide registered trademark of XEROX, became a victim of its own fame as it was understood as a common verb in some parts of the world. In 2003 this company faced a great deal of difficulty when it realized that its brand was diminishing in value and a long running battle to stop its name from being declared as generic. But Xerox is actually a proper trademark and is not synonymous to the photocopying process.

Trademark Dilution on a Global Scale:

Particularly in the age of globalization, the idea of trademark dilution has important ramifications on a worldwide level and is not limited to geographical boundaries. Brands encounter difficulties in keeping their trademarks unique in a variety of international marketplaces as they grow globally. A basis for the worldwide protection of trademarks is provided by international treaties and agreements, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS urges member nations to enact strong measures against trademark dilution and sets minimum requirements for the protection of intellectual property rights, including trademarks. Nonetheless, different jurisdictions have different policies on the enforcement of trademark dilution laws. Global businesses often encounter challenges in navigating the diverse legal landscapes of different countries, requiring a strategic and comprehensive approach to protect their brands effectively.


In conclusion, a corporation may suffer from trademark dilution just as much as it would from trademark infringement. Trademark dilution rights are somewhat less well-known than infringement, yet they can nonetheless be enforced just as severely, if not more so, to safeguard a brand's distinctiveness. Gaining an understanding of trademark dilution can be challenging. To sum up, trademark dilution regulations are an essential instrument for safeguarding the uniqueness of a brand. These rules help to preserve a brand's integrity, worth, and favourable reputation in the marketplace by prohibiting unlawful use that could muddy or destroy its identity. 


Frequently Asked Questions (FAQs) about Trademark Dilution in India:


Question 1) What is trademark dilution?

Answer 1) Trademark dilution occurs when a famous trademark loses its distinctiveness or uniqueness due to unauthorized use by others, even if there's no likelihood of confusion.


Question 2) How does trademark dilution differ from trademark infringement?

Answer 2) Trademark infringement involves unauthorized use of a mark that causes confusion among consumers, while trademark dilution involves the weakening of a famous mark's distinctiveness, regardless of confusion.


Question 3) What factors determine if a trademark is famous enough to be protected from dilution?

Answer 3) Factors include the duration, extent, and geographic reach of the mark's use, the amount of advertising and publicity, and the degree of recognition among relevant consumers.


Question 4) Can any unauthorized use of a famous mark constitute dilution?

Answer 4) No, dilution generally requires that the unauthorized use tarnishes or blurs the distinctiveness of the famous mark.


Question 5) How can trademark owners protect their marks from dilution?

Answer 5) Trademark owners can protect their marks through federal registration, diligent enforcement against infringing or diluting uses, and through actions such as licensing agreements and co-branding arrangements.

 

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