Month: July 2021

Introduction

SECTION 29 (4) OF THE Trademarks act, 1999 enshrines the doctrine of dilution. Trademark dilution is a concept giving the owner of a well-known trademark power to prohibit others from using the mark in a way that has the potential to reduce its uniqueness. An unauthorized user with an intention to confuse the people, makes similar marks of these prestigious trademarks. Dilution of a trademark is a ground for trademark infringement, where the owner of a well-known trademark has the rights as well as the power to prevent others from using their mark on the ground that it kills their uniqueness or reduces their reputation.

Types of Dilution

There are two types of trademark dilution- Tarnishment and Blurring. In  Mead Data Central v. Toyota, the Court held that blurring includes, ‘the whittling away of an established trademark’s selling power through its unauthorized use by others upon dissimilar products’.[1] A mark is said to be tarnished when the impugned mark links such mark to products that portray such mark in an unsavory context and which have the potential of  attacking  the original mark.

Blurring

Dilution by blurring occurs when a third party uses an identical or virtually identical mark on or in connection with goods and/or services that may be completely different and unrelated to the plaintiff’s goods or services. Diluted trademarks weaken the distinctiveness of a famous mark. Common examples of dilution by blurring would be a third party’s use of the ROLLS-ROYCE mark for toothpaste or the  POLAROID mark for shoes.

Tarnishment

Trademark dilution by tarnishment occurs to have been using an identical or similar mark in association with sexual or offensive content where the subject matter that directly criticizes or attacks the mark owner or its products or services. This form of trademark dilution may conflict with free speech rights and as such would be considered “fair use” of a trademark.[2.]

Conclusion

The Doctrine of dilution is the power given to the well-known trademark owner. This doctrine enshrined in section 29(4) of The Trademarks Act, 1999, is a remedy that will help in preventing the fraudulent activities that happen over time and to maintain the reputation of the companies.[3]

References

[1] https://selvams.com/blog/trademark-dilution-india/

[2] https://www.sonisvision.in/blogs/post/introduction-to-trademark-dilution

[3]. https://blog.ipleaders.in/doctrine-dilution-trademarks/

BY

Adv. PRANITA MAKASARE

Bsc.(HONS) Agri, LLB, LLM

WIPO in its meeting on Intellectual property and Artificial intelligence in November 2020 discussed the impact of artificial intelligence on trademarks and the impact on human perception will determine the registration and infringement of trademarks. Artificial intelligence (AI) has unparalleled potential to facilitate the management of IP, in the context of examination of trademark applications, assessing past trademark oppositions and infringement proceedings. For example, trademark IP offices have implemented several AI technologies for trademark search, trademark review and interaction with stakeholders to improve efficiency and consistency in processing of trademark applications. The trademark image search by WIPOs is an example of an AI tool used for trademark searches and trademark prosecutions[1].

Indian lawyers are still struggling to keep up with these technological advances inherent in AI and learning their advantages and disadvantages. The trademark law was introduced to differentiate the goods and services of one from those of another with an ultimate idea to avoid confusion among the public. However, the Indian trademark law has not changed ever since inception to adapt technological advancements, despite the multiple revolution and technological advancements which do affect the trademark law.

The fundamental concept of trademark is to cover human interaction between branding and purchasing emphasising on the likelihood of confusion for consumers due to phonetic, structural, and visual similarities and imperfect memories of a man with average intelligence and how it affects the purchasing process. With the onset of AI in the online market, these concepts are unlikely to be true and feasible. The existing legal doctrines like imperfect memory as held in the case Cadila Healthcare Limited v Cadila Pharmaceuticals Limited where the SC clarified that “the average consumer is an average intelligence with an imperfect memory,” or likelihood of confusion are old and obsolete. AI will neither have average intelligence of a man nor will the doctrine of confusion be applicable. Thus, there is a demand to change these obsolete doctrines to make trademark law well suited to tackle AI and the technological advances.

AI is likely to affect how trademark law is enforced in circumstance like several trademark applications, registration of new marks, unsynchronized trademark offices, vague and unclear trademark analysis by humans. The anti-counterfeiting measure using AI introduced by Amazon – the Amazon Project Zero[2]  is just one of the few examples of companies using AI for trademark or IP enforcement. The AI revolution will impact all the legal fields and will definitely not spare the trademark law as well. It is important for India to take up its game, recognizing the importance of AI inventions in the country and to reform current trademark and IP laws to engage with technological inventions in this area. Intellectual property law should be consistent with AI and monitor progress to maintain transparency in intellectual property law and provide legal solutions for AI inventions.

---

[1] https://www.wipo.int/edocs/mdocs/mdocs/en/wipo_ip_ai_2_ge_20/wipo_ip_ai_2_ge_20_1_rev.pdf

[2]  Shubham Borkar and Nitish Daniel, ‘A Comprehensive Review Of Amazon Project Zero (Anti- Counterfeiting Initiative) , Analysis In Detail Of The Policy, Issues, Takedown Mechanism And Its Applicability In India’ 6 March 2019, Mondaq < https://www.mondaq.com/india/trademark/787672/a-comprehensive-review-of-amazon-project-zero-anti-counterfeiting-initiative-analysis-in-detail-of-the-policy-issues-takedown-mechanism-and-its-applicability-in-india>