DILUTION OF TRADEMARKS
DILUTION OF TRADEMARKS
THROUGH CASE LAWS
THROUGH CASE LAWS
(Intellectual Property Laws-Project Report) (Intellectual Property Laws-Project Report)
Submitted by: Submitted by: 1 1.. RRuuppiin n BBaall 1!1" 1!1" 1"
1"t#t#Semester (Section $ B)Semester (Section $ B)
%
%.. &&aaiinnaa '!1" '!1" 1"
1"t#t#Semester (Section $ B)Semester (Section $ B)
Submitted to: Submitted to: r. asmeet *aur +,an ulati r. asmeet *aur +,an ulati
UNIVERSITY INSTITUTE OF LEGAL STUDIES, PANJAB
UNIVERSITY INSTITUTE OF LEGAL STUDIES, PANJAB
UNIVERSITY, CHANDIGARH
UNIVERSITY, CHANDIGARH
Contents
Contents
1.
1. INTRODUCTION.INTRODUCTION...11 2.
2. UNFOLUNFOLDING DING THE EVTHE EVOLOLUTION UTION OF TROF TRADEMADEMARKS: A HARKS: A HISTORISTORY OF A BIY OF A BILLIOLLION- N-DOLLAR
DOLLAR BUSINESS...BUSINESS... 22 3.
3. MEANIMEANING: WHANG: WHAT CONSTIT CONSTITUTES TRTUTES TRADEMAADEMARKS?.RKS?...3..3 4.
4. DILDILUTION UTION OF OF TRTRADEMADEMARKS..ARKS...4...4 4.1
4.1 DILDILUTION DOCTRUTION DOCTRINE.INE...5...5 4.2
4.2 COMMCOMMON ON FORMS FORMS OF OF DILDILUTIONUTION...... 4.3
4.3 INTEINTERNARNATIONTIONAL AL STSTAATUS..TUS...... 5.
5. DOCTDOCTRINE OF RINE OF DILDILUTION IN UTION IN INDIINDIA...A...!...! 5.1
5.1 NANATURE TURE AND AND SCO"SCO"E OE OF SF SECTIOECTION N 2#$4% 2#$4% OF OF THE THE ACT.ACT...&...& .
. CASE-LAWSCASE-LAWS... ## !.
!. CONCLCONCLUSION USION AND AND SUGGESTION...SUGGESTION...11
1 '
ACKNOWLEDGEMENT
The success and final outcome of this project required a lot of guidance and assistance from many people and I am extremely fortunate to have got this all along the completion of my project work. Whatever I have done is only due to such guidance and assistance and I would not forget to thank them.
I respect and thank Dr. Jasmeet for giving me an opportunity to do the project work on the topic“Dilution of Trademarks through Case laws.”
I am thankful to and fortunate enough to get required help from my friends li!rary staff and my family while I was working on this project.
1
INTRODUCTION
An apple a day, used to keep the doctor away; The apple a day, earns millions of dollars today!
"ardly anyone of us now remem!ers that #$uma% is actually an animal from &at family' #(pple% can also !e edi!le and #Tick mark% )*ike+ simply implies an affirmative response. ,ne of the most amusing transitions the world is witnessing is a #-a!!it% !ecoming synonyms with #$lay!oy% a #&rocodile% turning to #acoste% and a #Twin/tailed 0ermaid% revising its name to #1tar!ucks%. That%s the power of a Trademark2
3ven without our reali4ing #Trademark% has !ecome another way of referring to !rands. It is rather very complex to understand that how unknowingly a Trademark may influence purchasing decision of its consumers. 5or this reason the corporate houses must understand the importance of trademark as an asset for their !usinesses and as a tool for effective commerce.
In today%s world a trademark is not considered as a mere logo associate with the product !ut !estows distinctiveness to it. &onsumer%s su!/conscious mind feels a sense of satisfaction regarding quality and genuineness of the product when he sees a well/recognised famous trademark on it. "ence it would not !e incorrect to say that a #trademark% acts as a #trust/ mark% or #quality/mark% for the consumers.
In light of the growing importance of trademarks countries across the glo!e started recognising trademark as an intellectual product or intangi!le property' with various acts of copying or infringing of the trademark right attracting civil and criminal penalties. (nother up/surging concept which is drawing national as well as international attention is that of Trademark Dilution.
This project report seeks to discuss some legal concepts relating to dilution of trademarks through case laws. 6ut !efore we move on to the actual concept of dilution of trademarks let%s have a !rief look at the meaning of trademarks and the concept of doctrine of dilution.
! UNFOLDING THE EVOLUTION OF TRADEMARKS" A
HISTORY OF A BILLION#DOLLAR BUSINESS
The earliest marks were pro!a!ly those markings on animals so a farmer rancher or lord could distinguish what animals !elonged to whom. (rtefacts from places such as ancient 3gypt have !een found with various sym!ols carved thereon for religious and superstitious reasons. 7$otters marks7 appeared in relics left from the 8reek and -oman periods and were used to identify the maker )potter+ of a particular vessel. 9se of marks to indicate ownership of goods was particularly important for owners whose goods moved in transit as those marks often allowed owners to claim goods that were lost. $roducers often relied on identifying marks for example to demonstrate ownership of goods recovered at sea.
(round the :;th century a mark called a 7erc#ants ar/ 7 appeared and sym!ols among
traders and merchants increased significantly. These marks which can !e considered one kind of 7proprietary mark7 essentially were used to prove ownership rights of goods whose owners were missing due to shipwrecks pirates and other disasters.
The 3nglish in the :<th century created trademark laws to avoid any replication of products
from a certain company to another.
In the :=th and :>th centuries when dramatic emergence of merchant and craft guilds
trademark/like sym!ols and logos started to appear as identifiers for these firms. ocal guilds often developed reputations for the quality of their products and when they did the names of the towns or regions in which those guilds operated !ecame repositories of goodwill. To maintain that goodwill guilds needed to !e a!le to restrict mem!ership and identify and punish mem!ers who produced defective products. 8uilds therefore required their mem!ers
to affix distinguishing marks to their products so the guilds could police their ranks effectively. These sym!ols were different from modern marks in that they emerged to !enefit the guilds and were not for the !enefit of the production mark owner.
The Industrial -evolution sparked the advent of what is now modern/day capitalism. 8radually the guild systems disintegrated and free !usiness was esta!lished. 0arks !egan to actively identify the source of goods rather than o!ligatory guild mem!ership. (!out this time special criminal laws protecting trademarks were also developed out of early forgery
counterfeiting and fraud laws. &ivil protection was gradually and systematically esta!lished against those who would use another?s mark without permission )7infringers7+.:
The first modern trademark laws emerged in the late :@th century. In 5rance the first
comprehensive trademark system in the world was passed into law in :A>B with the 70anufacture and 8oods 0ark (ct7. In 6ritain the :AC 0erchandise 0arks (ct made it a criminal offense to imitate another?s trade mark ?with intent to defraud or to ena!le another to defraud?. In :AB> the Trade 0arks -egistration (ct was passed which allowed formal registration of trade marks at the 9E $atent ,ffice for the first time. -egistration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks !egan on : January :ABC.
In the 9nited 1tates &ongress first attempted to esta!lish a federal trademark regime in :AB;. This statute purported to !e an exercise of &ongress? &opyright &lause powers. "owever the 1upreme &ourt struck down the :AB; statute in theTradeark Cases later on in the decade. In :AA: &ongress passed a new trademark act this time pursuant to its &ommerce &lause powers. &ongress revised the Trademark (ct in :@;>.< The anham (ct of :@=C
updated the law and has served with several amendments as the primary federal law on trademarks.=
$ MEANING" WHAT CONSTITUTES TRADEMARKS%
( trademark is any word name sym!ol or design or any com!ination thereof used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.> Though no standard international definition
1The "istory #f Trademark $aw a%aila&le at httpFGGwww.ta!!erone.comGTrademarksGTrademarkaw G"istory G"istory.shtml )ast Hisited 5e!. :< ;:>+.
2 6ently ionel The aking of odern Trade arks $aw' The Construction of the $egal Concept of Trade ark ()*+*- in T-(D3 0(-E1 (*D 6-(*D1F (* I*T3-DI1&I$I*(- &-ITI93 )ionel 6ently
et. al. eds. ;;A+.
3The "istory and De%elopment of Trademark $aw a%aila&le at httpFGGwww.iip.or.jpGtranslationGonoGch.pdf.
4 -oger W. Dyer Jr. onetary Damages under the $anham Act' ighth Circuit "olds Actual Confusion is /ot a 0rere1uisite BB 0o. . -ev. );:+ at C@ a%aila&le at httpFGGscholarship.law.missouri.eduGmlrGvolBBGiss:G:; )ast Hisited 5e!. :< ;:>+.
of trademarks is availa!le !ut 0rticle 1(1) o2 3RIPS
provides a definition for 7sign7 which is used as or forms part of the definition of 7trademark7 in the trademark legislation of many jurisdictions around the world.
The 3rade ar/s 0ct4 1555 in India incorporates the concept of Kwell known marksL as appears in (rticle C 6is of the $aris &onvention for the $rotection of Industrial $roperty. 1ec. ):+ )4!+ provides for definition of trademarks as followsF
“(2&- 3trade mark3 means a mark capa&le of &eing represented graphically and which is capa&le of distinguishing the goods or ser%ices of one person from those of others and may include shape of goods, their packaging and com&ination ofcolours;
(i- in relation to Chapter 455 (other than section )6-, a registered trade mark or a mark used in relation to goods or ser%ices for the purpose of indicating or so as to indicate a connection in the course of trade &etween the goods or ser%ices, as the case may &e, and some person ha%ing the right as proprietor
to use the mark; and
(ii- in relation to other pro%isions of this Act, a mark used or proposed to &e used in relation to goods or ser%ices for the purpose of indicating or so to indicate a connection in the course of trade &etween the goods or ser%ices, as the case may &e, and some person ha%ing the right, either as proprietor or &y way of permitted user, to use the mark whether with or without any indication of the identity of that person, and includes a certification trade mark or collecti%e mark;”
& DILUTION OF TRADEMARKS
We have already reali4ed the commercial importance a trademarks holds for the corporate houses. Thence the modern trademarks laws enlist various civil and penal consequences
5 :> 9.1.&. M ::B.
0rticle 14 3RIPS:“Any sign, or any com&ination of signs, capa&le of distinguishing the goods or ser%ices of one undertaking from those of other undertakings, shall &e capa&le of constituting a trademark. 7uch signs, in particular words including personal names, letters, numerals, figurati%e elements and com&inations of colours as well as any com&ination of such signs, shall &e eligi&le for registration as trademarks. 8here signs are not inherently capa&le of distinguishing the rele%ant goods or ser%ices, em&ers may make registra&ility depend on distincti%eness ac1uired through use. em&ers may re1uire, as a condition of registration, that signs &e %isually percepti&le.”
which may !e attracted on violating the trademark rights of the owner. The extent to which a trademark owner may prevent unauthori4ed use of trademarks which are the same as or similar to its trademark depends on various factors such as whether its trademark is registered the similarity of the trademarks involved the similarity of the products or services involved and whether the owner?s trademark is well known )Dilution+.
4.1D+,+/0 D/+0*
Trademarks have dual functions. 5irst they indicate the product?s source. 1econd trademarks have a marketing value and create a !ond !etween the consumer and the !rand. The trademark infringement doctrine addresses the first function whereas trademark dilution addresses the second.
The dilution doctrine provides protection for marks even when the traditional 7likelihood of confusion7 test for infringement is not met. If defendant?s use will tarnish degrade or dilute the distinctive quality of plaintiff?s mark an injunction may issue as relief against dilution.B
Dilution is therefore different from trademark infringement !ecause trademark infringement always involves a pro!a!ility of customer confusion whereas dilution can occur even if customers wouldn%t !e misled.A
Trademark dilution is defined as the lessening of the capacity of a famous mark to identify and distinguish goods or services regardless of the presence or a!sence of competition !etween the owner of the famous mark and other parties or of likelihood of confusion. This
typically occurs as the result of !lurring or tarnishment of the famous mark.@
In other words unlike ordinary trademark infringements dilution protection extends to trademark uses that do not confuse consumers regarding who has made a product. Instead dilution protection law aims to protect sufficiently strong and well known trademarks from losing their singular association in the pu!lic mind with a particular product.
! 1heldon 0ak -ose N (nderson cDonald9s Corp. %. Arche Technologies, 5nc.' Trademark Dilution without Tarnishment ):@@>+ a%aila&le at httpFGGwww.usip.comGpdfG(rticleOTrademarksGtmdilwo.pdf.
&8hat is Trademark Dilution: a%aila&le at httpFGGwww.nolo.comGlegal/encyclopediaGwhat/trademark/ dilution.html )ast Hisited 5e!. := ;:>+
#Trademark Dilution a%aila&le at
httpFGGwww.inta.orgGTrademark6asicsG5act1heetsG$agesGTrademarkDilution.aspx )ast Hisited 5e!. := ;:>+.
Thus Dilution theory regards trademark not only as a commercial signature !ut also as a #silent salesman6 who directly comes in contact with the consumers.:;
4.2C//0 F/ / D+,+/0
It is necessary here to define the two types of trademark dilution namely Blurrin, and
3arnis#ment. In ead Data Central %. Toyota)) the &ourt held that !lurring includes #the
whittling away of an esta!lished trademark%s selling power through its unauthori4ed use !y others upon dissimilar products%. ( mark is said to !e tarnished when the impugned mark links such mark to products that are of poor quality or which portray such mark in an unwholesome or unsavoury context that is likely to reflect adversely upon the owner%s product.
4.3I0*0(+/0(, R*/)0++/0 / D+,+/0 D/+0*
(rticle C!is of the $aris &onvention requires countries to prohi!it the use of a trademark that is registered or well known.. as !eing already the mark of a person entitled to the !enefits of this &onvention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well/known mark or an imitation lia!le to create confusion therewith. While this section does not provide protection from dilution per se it does recogni4e the need to protect well/known marks against reproductions in addition to the traditional protection against imitation lia!le to create confusion. "owever some commentators !elieve that the $aris &onvention only protects famous marks against confusion a protection granted !y traditional trademark infringement rights.
T-I$1 went one step further and extended the protections of the $aris &onvention 1ection C !is in (rticle :C to goods or services which are not similar to those in respect of which a trademark is registered provided that use of that trademark in relation to those goods or services would indicate a connection !etween those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to !e damaged !y such use. (rgua!ly this su!section provides a call for anti/ dilution protection. (s one commentator noted the requirement that consumers perceive a
16 T.8. (githa Trademark dilution' 5ndian Approach >; )<+ JII <=: );;A+.
11 AB> 5.d :;C )d &ir. :@A@+
7connection !etween7 the senior mark and the junior mark 7could !e taken to mean only the ?mental association? required !y dilution.7:
' DOCTRINE OF DILUTION IN INDIA
The old law in India i.e the Trade and 0erchandise 0arks (ct :@>A did not provide for trademark dilution as is in the case of 1ection @)=+ of the Trademarks (ct :@@@ !y which the anti/dilution provision has !een first incorporated in a statute.
6ut the principle of dilution was evolved !y our courts prior to the (ct having regard to internationally recogni4ed standards. In Daimler en2 Aktiegesellschaft v. "y&o "industanone:< of the issues !efore the single judge !ench was whether the defendant could
use the mark #63*P% on underwear. Interestingly the "on%!le Judge applied the doctrine of dilution without using the word #dilution% even once in the entire judgment. "owever the "on%!le Judge used the word #dilute% once towards the end of the judgment while stating # 5n my %iew, the defendant cannot dilute, that &y user of the name “en2” with respect to a product like underwears.% The judgment focused only on the great injustice that would !e
done if the defendant were allowed to continue to use the mark and a!solutely no analysis of dilution or any related legal principle was made.:=
The new Trade 0arks (ct :@@@does not contain any reference to ?dilution of trademark? per se !ut it introduces the concept of a Kwell known trademarkL defined under 1ection of the new (ct. 1ection :: of the new (ct lays down the criteria for determination of Kwell/knownL status of a trademark !y the -egistrar. 9nder 1ection :: of the new (ct it would also !e a valid ground for refusal of an application for registration of a trademark if it is similar to a Kwell/knownL registered trademark regardless of the goods or services. The new (ct requires the -egistrar to take into consideration K!ad faithL in !alancing the interests of the parties
12 Eeola -. Whittaker Trademark Dilution in a <lo&al Age 9. $a. J. Int?l 3con. Hol. BF< );;C+ @;B/<A at @; a%aila&e at httpsFGGwww.law.upenn.eduGjournalsGjilGarticlesGvolumeBGissue<GWhittakerB9.$a.J.
Int?l3con..@;B);;C+.pdf.
13 (I- :@@= Delhi <@.
14Trademark Dilution' =ea or /ay );:<+ a%aila&le at httpFGGwww.selvamandselvam.inGtrademark/dilution/ yea/or/nayG )ast Hisited 5e!. : ;:>+
involved in the enforcement of Kwell/knownL trademarks. Thus dilution of trademark would occur from the infringement of a Kwell knownL trademark.:>
5.1Nature and Scope of Section 29(4) of the Act
5irst and foremost for the application of 1ection @)=+ the trademark should !e registered and should have a reputation in India. Thus a different terminology Ka reputed trademarkL is used here instead of Kwell/known trademarkL which is defined in the (ct. The intent of the legislature is not clear as to why there has !een a su!stitution. "owever courts have tried to !ring a distinction !etween the two in a few cases that have come !efore them though not
successfully.
(s per the ingredients of 1ection @)=+ trademark infringement in the form of dilution is said to have occurred if the person in the course of trade or !usiness uses the mark which isF
:. identical with or similar to the registered trademark having reputation in India' and . such use is on different goods or services than those covered !y the registration.
1uch 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 resultsF
:. without due cause takes unfair advantage of the distinctive character or reputation of registered trademark
. without due cause is detrimental to the distinctive character or repute of the registered trademark :C
The Delhi "igh &ourt analy4ed the doctrine of dilution to some extent in 5TC $imited %. 0hilip orris 0roducts 7A and #rs.:B Wherein the &ourt held as underF
K 5t may &e seen >. that dilution of trademark is a species of infringement. Though trademarks are concerned with protection of marks which ha%e ac1uired a degree of distincti%eness, in relation to particular goods and ser%ices, courts ha%e, o%er the 15 I*T3-*(TI,*( T-(D30(-E (11,&I(TI,* -3$,-T The $rotection ,f Well/ Enown 0arks In (sia/$acific atin (merica (nd (frica );;=+ a%aila&le at
httpFGGwww.inta.orgG(dvocacyGDocumentsGI*T(WellEnown0arks(sia$acificatin(merica(frica.pdf.
1 $alak Jain Trademark Dilution in India -8*9 1tudent aw -eview );:=+ a%aila&le at httpFGGwww.rslr.inGrslr/!logGtrademark/dilution/in/india )ast Hisited 5e!. := ;:>+
1! ;:; )=+ $T& >B )Del.+.
years recogni2ed that in relation to marks which ha%e achie%ed notoriety as to ha%e a reputation a&out the 1uality of products which the manufacturer, or ser%ices the originator (of the mark- is associated with, then, e%en in relation to dissimilar goods ? or unrelated products, protection of such &rand name, mark or ac1uired
distincti%eness is essential. This measure of protection to marks in relation to similar @unior marks, &ut for dissimilar goods is, in su&stance the protection against dilution
(or lurring or tarnishment- of the mark.L
The &ourt while referring to section @ )=+ of the Trade 0arks (ct :@@@ )the (ct+ recogni4ed the essentials for dilution as underF
:. The impugned mark must !e identical or similar to the injured mark'
. The one claiming injury due to dilution must prove that herGhis 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 repute of the registered trade mark.
"ere the Indian &ourts have taken a more lenient view than 9.1. &ourts. The judgment merely states that the mark must have #a reputation in India% whereas according to 91 law the mark must necessarily !e 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 !e made !etween a #famous% mark and a mark with #reputation%. The reasoning !ehind this is simple dilution rights !eing indeterminate in nature the standard of fame required to claim them must !e high as well. ( mark which is not highly distinct cannot !e diluted. It is also unclear whether a mark which has reputation in a particular sector of the pu!lic or only in a particular area within India would also !e entitled to protection from
dilution within that sector or area.:A
( CASE#LAWS
.1"(0(7++/0 I0*0(+/0(, 7. D*00+ T/*88*01# $I0*0* T(9*( C(*%
1&7upra ).
1# :=: 5.<d :<:C )@th &ir. :@@A+.
7083S: $laintiff $anavision owner of the marks $anavision and $anaflex in connection with theatrical motion picture and television camera and photographic equipment sought to enjoin defendant Toeppen from using the domain names Kpanavision.comL and Kpanaflex.com.L Toeppen did not use either domain name in connection with the sale or promotion of any goods or services. Toeppen%s Kpanavision.comL we!site displayed an aerial
view of $ana Illinois and the Kpanaflex.comL we!site contained only the word Khello.L When $anavision requested that Toeppen relinquish the Kpanavision.comL domain name Toeppen demanded Q:<;;; from $anavision.
$anavision filed this action against Toeppen in the District &ourt for the &entral District of &alifornia. $anavision alleged claims for dilution of its trademark under the 5ederal Trademark Dilution (ct of :@@> and under the &alifornia (nti/dilution statute &alifornia 6usiness and $rofessions &ode.
istrict 8ourt6s ecision: The district court framed the dilution issue as whether 7the defendant violated federal ... law !y 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. ? ?; The court then !roke this issue
into three components according to the 5ederal Trademark Dilution (ct of :@@> )Dilution (ct+. In order to extend protection from dilution to $anavision?s marks the court had to answer the following three questions affirmativelyF
i. Is the 7panavision7 trademark famousR'
ii. Is Toeppen?s use of the 7panavision7 trademark a comer cial useR' and
iii. Did Toeppen?s use of 7panavision7 as a domain name actually dilute the trademarkR The district court held that the 7panavision7 trademark was famous. The court noted that $anavision had continuously used the mark since :@>=.: $anavision?s extensive advertising
included a display of the 7panavision7 trademark at the end of every movie that used its filming products. The court also relied on the fact that 7panavision7 is not a word found in 26 1ee $anavision @=> 5. 1upp. at :@A. $anavision also invoked &alifornia trademark law however the court held that &alifornia trademark law is su!stantially similar to federal law and proceeded to consider only federal law.
21 1ee $anavision @=> 5. 1upp. at :<;<.
22 1ee id.
the dictionary indicating that it was an inventive word meriting stronger protection. 3ven if 7panavision7 were a descriptive mark defined as a word picture or sym!ol that directly descri!es an aspect of the good the mark would !e protecta!le !ecause it had a strongly esta!lished 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 !ut not demanded any money for their use his actions would not have !een considered commercial.< Instead
according to the court Toeppen?s 7!usiness7 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.=
5inally the district court held that Toeppen?s use of 7panavision.com7 actually diluted $anavision?s federally registered 7panavision7 trademark. "owever the court did not reach this conclusion through traditional trademark dilution analysis. The two esta!lished categories of trademark dilution are !lurring and tarnishment. The underlying property issue at stake in $anavision 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 via!le trademark protection. (pplying trademark analysis is a more appropriate mechanism for regulating ownership of Internet domain names.>
0ppellate 8ourt6s ecision: ,n appeal the *inth &ircuit affirmed and adopted the rationale and analysis of the district court. The court agreed that Toeppen%s use of $anavision%s trademarks as domain names lessened the capacity of the marks to identify and distinguish $anavision%s goods and services. *ot only would Toeppen%s use force potential customers to search through the hundreds of we!sites retrieved !y a search engine to find $anavision%s true we!site !ut it would also remove control over the $(*(HI1I,* and $(*(53S trademarks and reputations from the rightful owner of the marks.
23 1ee $anavision @=> 5. 1upp. at :<;<.
24 1ee id. at :<;;.
25 9ghetta 0an4one 0ana%ision 5nternational, $.0. v. Toeppen, erkeley, Technology aw Journal Holume :< Issue : )Jan :@@A+ a%aila&le at httpFGGscholarship.law.!erkeley.eduGcgiGviewcontent.cgiR
article::B;Ncontext!tlj. )ast Hisited 5e!. :> ;:=+.
The court found that defendant%s scheme to extort money from plaintiff prevented plaintiff from using its own trademark as a domain name to esta!lish a we!site easily located !y Internet users unless plaintiff paid his fee.C 9ltimately the &ourt found that while cy!er
squatters did not fall under the traditional definitions of !lurring and tarnishment they did fall under the !road definition of dilution under the anham (ct =>. The court found that $anavision customers would !ecome frustrated if they could not find the company we!site through domain search and the $anavision trademarked would dilute as a result. They furthered with the idea that prospective users searching for $?s service would stum!le upon D?s site and instead of searching further due to frustration anger or the !elief that $?s site does not exist would search no further .B
.2M/*,*; 7. V S** C((,/)*< I0.2& $=V+/> L+,* S** C(*%
This case is the &ourt%s first opportunity to construe the 5TD(. The 1upreme &ourt was asked to resolve a split among the federal circuit courts and determine whether dilution under the 5TD( requires a showing of actual economic harm or whether a showing that a defendant%s mark is likely to cause dilution is sufficient.
7acts: The petitioners Hictor and &athy 0oseley opened a store in a strip/mall in 3li4a!ethtown Eentucky named KHictor%s 1ecretL in :@@A selling lingerie and adult novelties among other items. The respondent owner of the KHictoria%s 1ecretL trademark was not amused and sent a cease/and/desist letter to the 0oseleys. In response the 0oseleys changed the store%s name to KHictor%s ittle 1ecretL !ut Hictoria%s 1ecret was not satisfied and sued.
istrict 8ourt6s ecision: 6ecause the 0oseleys acknowledged the famous status of the Hictoria?s 1ecret mark the only question !efore the district court was whether using the name Hictor?s ittle 1ecret diluted the distinctive quality of the Hictoria?s 1ecret trademark. The court granted summary judgment to Hictoria?s 1ecret on the dilution claim holding that the
2 5nternet Trademark Case 7ummaries a%aila&le at httpFGGwww.finnegan.comG$anavision/Intl/$/v/Toeppen/ ;:/;:/:@@AG )ast Hisited 5e!. :< ;:>+.
2! 0ana%ision 5nternational %. Toeppen a%aila&le at
httpFGGwww.casesofinterest.comGtikiG$anavisionUInternationalUv.UToeppen )ast Hisited 5e!. :< ;:>+.
2& ;:; W :@B@=@ )Cth &ir. 0ay :@ ;:;+.
two marks were sufficiently similar to cause dilution and that the Hictor?s ittle 1ecret mark caused dilution through its 7tarnishing effect7 on the Hictoria?s 1ecret mark.
SI93 8ircuit 8;<R3F The case reached the 1ixth &ircuit which affirmed a finding that the KHictoria%s 1ecretL mark was diluted under the 5TD( under a Klikelihood of dilutionL standard.
S<PR++ 8;<R3: The 1upreme &ourt reversed the 1ixth &ircuit?s grant of summary judgment on the dilution claim and remanded the case. The main question !efore the
1upreme &ourt was / Does the 5ederal Trademark Dilution (ct require o!jective proof of actual injury to the economic value of a famous mark for reliefR
The &ourt heldF
i. that the 5TD( 7unam!iguously requires a showing of actual dilution rather than a likelihood of dilution7 and
ii. that Hictoria?s 1ecret failed to prove actual dilution of their famous mark a!sent 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.
8onse=uent +>ents: Remand4 30R04 %"" and ecision a#ead: The Trademark Dilution -evision (ct of ;;C )KTD-(L+ was expressly intended to overrule the 1upreme &ourt%s Kactual harmL standard for dilution which &ongress deemed Kan undue !urden for trademark holders who contest diluting users.L The new language in the TD-( provided that the standard for proving a dilution claim is now a Klikelihood of dilutionL and that !oth dilution !y !lurring and dilution !y tarnishment are actiona!le claims. ,n remand from the 1upreme &ourt after the ;;< reversal the district court reconsidered the case !ased on the new dilution standard in the TD-(. The 0oseleys did not introduce any evidence to disprove a pro!a!ility of tarnishment and so the district court concluded that the connection !etween the KHictor%s ittle 1ecretL mark and the sexual goods sold under it disparaged and reduced the positive associations and selling power of the HI&T,-I(%1 13&-3T mark. The district court again issued a permanent injunction against the 0oseleys% use of the name KHictor%s ittle 1ecret.L The 0oseleys renamed their store K&athy%s ittle 1ecretL and appealed to the 1ixth &ircuit. The 1ixth &ircuit affirmed the injunction against KHictor%s ittle 1ecretL and ruled that &ongress%s decision to pass the TD-( supported its finding of dilution !y tarnishment.
The 0oseleys had also argued that the TD-( should not apply to them !ecause it is not retroactive. The court rejected this argument noting that new statutes may !e applied to pending cases where prospective relief is sought forongoing conduct.
This decision was appealed up to the 1upreme &ourt again !ut was not granted certiorari.
.3D(+,* B*0@ A+*)**,,( A0. 7. H;/ H+09(02#
Decided in :@@< !y the "igh &ourt of Delhi this was perhaps the first Indian ruling that looked in detail into the concept of dilution of well/known marks.
7acts: 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 a!ove his shoulders all within a circle to indicate the strong suggestion of the link !etween the three pointed star of K0ercedes 6en4L car and the undergarments sold !y the defendant
Daimler 6en4 (ktiegessellschaft 8ermany the plaintiff who owns the famous three/pointed star 63*P logo depicted a!ove sued the Indian underwear company for passing off. The plaintiff%s logo was registered in India in :@>:
8ourt6s ecision: Ignoring the defense of honest concurrent use !y the defendant the "igh &ourt of Delhi granted the plaintiff%s injunction and found that it would !e a great perversion of the law relating to trademarks if a mark such as 03-&3D31 63*P with the three/pointed star were hum!led !y indiscriminate imitation !y anyone including persons like the defendant who made undergarments. The &ourt heldF
1uch a mark is not up for gra!sVnot availa!le 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 sym!ol a three pointed star.
It was further held !y the &ourt that trademark law was not intended to protect a person who would deli!erately derive the !enefit of someone else%s reputation with reference to goods especially when such reputation extended worldwide. The &ourt further went on to holdF: :A. In the instant case K6en4L is a name given to a very high priced and extremely well engineered product. In my view the defendant cannot dilute that !y user sicX of the name K6en4L with respect to a product like under/wears.
2# (I- :@@= Delhi <@.
This judgment is still regarded as a milestone decision on trademark dilution in India and its findings continue to !e 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 well/
known mark on the sole ground of free/riding without analysis of likelihood of confusion or deception. In fact the "igh &ourt ruled out confusion and deception !y acknowledging the u!iquitous reputation of the name 63*P in connection with cars.
.4ITC L9. 7. "+,+8 M/+ "/9 SA O36
In the dispute !etween IT& and $hilip 0orris N ,thers for the alleged trade mark dilution of IT& owned Welcome 8roup ?*amaste? logo !y $hilip 0orris? styli4ed logo of the 0arl!oro trademark the Delhi "igh &ourt has ordered that IT& is not entitled to a temporary injunction against $hilip 0orris. The Delhi "igh &ourt refused to grant an injunction against the use of a device mark !y $hilip 0orris in relation to its 0arl!oro !rand of cigarettes in India. The trademark action filed !y IT& was !ased on the registration and use of its W/namaste logo. The Delhi "igh &ourt held that the :@@@ (ct has enjoined protection against dilution if the following essential elements are esta!lished Y
:. 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 !e esta!lished !efore an injunction can !e 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 (ct. It also held that in deciding the question of the similarity of the two marks in a dilution action the &ourt must focus on the ?glo!al? look rather than on the common elements of the two marks. The court further held that though the ?aura? of the IT& mark could go !eyond 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 !e crucial as IT& itself sold cigarettes without the said mark. There was also nothing on record to show that the use of $hillip 0orris?s mark would !e detrimental to the distinctive character of the IT& mark. The &ourt further held KIn the case of logos and other marks the application of the KidentityL or
36 ;:; )=+ $T& >B )Del.+.
KsimilarityL test has to result in a conclusion that the rival marks !ear a very close resem!lance seen from an overall perspective.<:
) CONCLUSION AND SUGGESTION
31 Haish (ssociates (dvocates , 5ntellectual 0roperty and 5nformation Technology $aws Hol. III Issue );:;+ at <a%aila&le at httpFGGwww.vaishlaw.comGnewGfpOipitGOI$/IT/awsZ;*ewsletter/,cto!er/;:;/Haish
Z;(ssociates/India.pdf.
TABLE OF CASES
:. Daimler en2 Aktiegesellschaftv. "y&o "industanone (I- :@@= Delhi <@. . 5TC $imited %. 0hilip orris 0roducts 7A and #rs.;:; )=+ $T& >B )Del.+. <. ead Data Central %. Toyota AB> 5.d :;C )d &ir. :@A@+
=. oseley v. B 7ecret Catalogue, 5nc ;:; W :@B@=@ )Cth &ir. 0ay :@ ;:;+. >. 0ana%ision 5nternational v. Dennis Toeppen :=: 5.<d :<:C )@th &ir. :@@A+.
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