What is Trademark Tarnishment and How to Deal with It?

Dilution is a type of violation of a trade mark, in which the defendant’s use, while not causing a likelihood of confusion, blurs distinctiveness or tarnishes the image of the plaintiff’s mark. The protection extended under Section 29(4) of the Trademark Act, 1999 even to dissimilar goods and services is actually based upon the “Doctrine of Dilution.”

The Court, while referring to section 29 (4) of the Trade Marks Act, 1999, 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 trademark.

An important aspect for protecting trademarks is to avoid weakening or dilution of the trademarks. If the subsequent user adopts the similar or near similar mark in respect of same goods it would not only decrease the value of the trademark of a prior user but ultimately may result in dilution of the mark itself.

Such an invasion of the subsequent user is nothing short of commercial invasion. Trademark is like a property and no unauthorised person is allowed to commit trespass. Such kind of dilution or weakening of the trademark need not, therefore, be accomplished with an element of confusion.

In Caterpillar Inc. v. Mehtab Ahmed and Others, the Delhi High Court held that so far as the doctrine of dilution is concerned it is an independent and distinct doctrine. The underlying object is that there is a presumption that the relevant customers start associating the mark or trademark 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 marks slice by slice. Such kind of dilution is not a fair practice that is expected in trade and commerce.

Dilution of trade mark may also be made by way of sullying or impairing distinctive quality of a trade mark of a senior user. This is common parlance is known as dilution by tarnsihment.

The object of such an invasion is to tarnish, degrade or dilute the distinctive quality of a trademark. For example, if an attempt is made to communicate a message that a particular product of a senior user is injurious to health or is inferior in quality and some epithet is used in the advertisement. If one has to convey the message that Coca-Cola is bad for health, and his advertisement campaign says Drink Cocaine in the same font and stylised script as used by the senior user, he will be liable for dilution.

It is different from traditional infringement. Infringement laws are designed to protect consumers whereas dilution statutes protect owners. A dilution claim is not based on infringement or deception. It is based on the value of the trademark to its owner, which has been termed the mark’s ‘commercial magnetism’.

Tarnishment is subsumed under the term ‘dilution’. Trademark tarnishment not only blurs a mark’s distinctiveness but also mars a marks positive assational value.

The Act if dilution of the trademark by way of tarnishment is always with regard to well recognised, strong and famous trademarks. It has the effect of diminishing or weakening the strength and identification value of the trademark. There is no need to establish the likelihood of confusion as to the source, affiliation and connection. This is so as some potential purchasers may be confused as to source or affiliation while others may not.

The doctrine of dilution, even though recognized by courts in reference to Section 29(4) as a remedy independent of an infringement action, owes its development to and flourishes in the protective blanket of passing off. Thus, to make it a successful independent cause of action, what is required is clarity in the provision by resolving the issues mentioned above.

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