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