Introduction

• This is a leading case on the concept of dilution of trademarks.

Facts

• A dispute occurred between ITC, the Indian Tobacco Giant and Philip Morris and Others for trademark dilution of ITC owned Welcome group “W” namaste logo by Philip Marlboro (inverted M) logo to its Marlboro brand of cigarettes in India.
• The trademark dilution action filed by ITC was based on the registration and use of its “W” namaste logo.
• The plaintiff (ITC) approached the Delhi High Court for infringement of trademark.

Issue Involved

• Whether the plaintiff's W-NAMASTE logo has been infringed by the Defendant, through dilution?

Observations

• The Delhi HC said that Section 29(1) and (2) of the Trademark Act, 1999 establish the criteria for trademark infringement, emphasizing resemblance or deceptive similarity between registered marks in relation to similar goods.
  • Section 29(4) introduces a distinctive standard for trademark dilution, addressing dissimilar goods.
• While the Act does not explicitly mention dilution, Section 29(4) signifies Parliament's intent to protect well-known trademarks against exploitation without confusion.
• Unlike traditional infringement, dilution requires the plaintiff to establish identity or similarity, reputation, use without due cause, and detriment or unfair advantage.
• The dilution concept, protecting marks across dissimilar products, is a legal evolution from case law.
• The Trademark Act, 1999 codifies protection against dilution, demanding stringent proof for each element.
• Notably, the "deceptively similar" standard is replaced with a higher "identical or similar" requirement.
• Consequently, the Court denied the temporary injunction, emphasizing the need for a stringent test in dilution cases.

Conclusion

• The Court, after taking all facts and circumstances into consideration, held that the plaintiff is not entitled to a temporary injunction, as sought.