A recent decision of a Division Bench (Justices Vikramjit Sen and Bhayana) of the Delhi High Court in Ford Motor Co. v. C.R. Borman is perhaps the first decision to examine the concept of dilution in Section 29 (4) of the Trademarks Act, 1999. The decision is particularly important for its holding that ‘dilution’ under the Section does not require a finding of confusion.
Generally, a trade mark can be infringed only by a person who uses an identical or similar mark in relation to goods or services similar to the ones in respect of which the original trademark is registered. Thus, a person manufacturing ‘Surya’ shoe-polish would not be seen as infringing the mark of ‘Surya’ air-conditioners. On the other hand, a manufacturer of ‘Surya’ air-coolers may well be infringing the mark of ‘Surya’ air-conditioners. The reason for this is that the test for infringement is often seen to be the “likelihood of confusion test” – “Whether the use of the mark is likely to result in confusion amongst the consumers of the product?” Confusion is more likely to be caused when the two marks are used in similar businesses than otherwise. Thus, under common-law, actions for passing-off typically rest on misrepresentation and confusion; and dilution is “merely a genus of damage within passing off and reliant upon a determination of confusion or deception.” (Dev Gangjee, “The Polymorphism of Trademark Dilution in
However, this is not to say that the nature of the business is always determinative of the question of whether or not there has been infringement. In particular, under Section 29 (4) of the Trademarks Act, a trademark may be infringed even when it is used in relation to goods or services which are not similar to those for which the trademark is registered, if the registered trademark has a “reputation” in India and the use of the mark takes unfair advantage of or is detrimental to the distinctive character or repute of the registered trademark. This provision is dependent not on the typical “likelihood of confusion” test, but on the concept of “dilution”, and has been discussed earlier on this blog in a post by Dr. Gangjee.
Essentially, the question before the Delhi High Court was as to whether using the mark of ‘Ford’ in respect of footwear would infringe the mark of the Ford motor company. The Court explained the position in the following words:
Section 29 (4) is palpably an exception to the scheme of the Act and applies only to those trademarks which have earned a reputation in
It was then held that ‘Ford’ was a mark which had a reputation in
This may be because the Court was dealing with an application for return of plaint under Order VII, Rule 11 of the CPC. It is a settled position of law that in dealing with application for return or rejection of a plaint, the description of facts contained in the plaint must be taken as correct. In the plaint, the fact that the Ford mark had a reputation in
It is noteworthy, however, that in discussing the law on the point, the Court referred to the Parliamentary discussions (in particular on a statement in the discussions that “The proposed Bill … seeks to extend protection for well-known trademarks…”) in order to hold that Section 29 (4) was an exception to the general scheme of the act; and that “confusion” was not required to be shown under this exception for “well-known marks”. It appears that the Court was equating “well-known marks” and “marks with reputation”. The term “well-known trademark” is used in Section 11 (2) (b) of the Act (dealing with grounds for refusal of registration of trademarks); while Section 29 (4) specifically uses the word “marks with reputation and not “well-known trademarks”. Given this, it is possible to argue that the judgment should not have equated the two concepts. At the same time, it is essential to note that the two provisions are otherwise rather similar, and there is no real reason for distinguishing between the two concepts.
In this connection, the following propositions made by Dr. Gangjee in his article referred to earlier are apposite:
Despite such elaborate prescriptions for well-known marks, the statute remains strangely reticent about marks with a “reputation,” and we must look elsewhere for guidance on this point. Assuming such a differentiation was intended, one resource that explores these distinctions is Frederick Mostert’s comparative work on the international protection of well-known marks. This species of mark was first incorporated into the
Such incoherence may be avoided by resorting to the Trade Mark Rules of 2002. In particular, Rule 48(b)(vi), which specifies the content for notices on opposition to registration, appears to pragmatically equate the concepts of “well-known” and “reputation.” It is submitted that uniformly adopting the “well-known” standard is the more favorable approach, since detailed statutory guidelines are provided for this category and it requires a higher threshold of public awareness. The mark under consideration should truly deserve this broader protection.
To conclude, it can be said that the decision presents the following picture of dilution under the statutory framework:
- Section 29 (4) is an exception to the general scheme of the Act which requires the “likelihood of confusion” approach. ‘Dilution’ under the Section does not require a finding of confusion.
- In the ultimate analysis, mere similarity of marks and the fact that a mark has a reputation in
are not sufficient. There must be proof of unfair advantage in trial. India
- While the Court did not lay down exhaustively the test for determining when a mark can be said to have a “reputation”, it does have the merit of equating the concepts of “marks with reputation” and “well-known marks”. The legal tests for the two are presumably the same.
(I am grateful for the comments I received on an initial draft of this note from several experts, including Dr. Dev Gangjee, Shamnad Basheer, and others.)