Redefining Trademark Dilution in Indian Jurisprudence

Contributor: Manthan Patel

According to Black’s Law Dictionary, dilutions mean “The act of reducing the proportion of ownership held by current investors through issuance of new shares of common stocks”,2 but in the ambit of Intellectual Property law, it means when a famous or a well-known mark is infringed it causes dilution of such mark. Dilution is when one famous mark is infringed it loses its exclusivity. This causes erosion of the mark and it exhausts its stand-alone quality and its ability to be recognized clearly from a crowd of trademarks present in the global market.3

Distant from trademark infringement, which focuses on the confusion of the consumer, dilution deals with the unauthorized use of a trademark in a way that diminishes its uniqueness or reputation in the market. In the Landmark judgment of the Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan,4 which formed the elementary of the concept of trademark Dilution. In the particular judgment, the court prohibited the defendant from using the “Benz” mark for the undergarments, underscoring that dilution can occur without creating confusion among the consumers.

In this article, there will be a discussion on the recent judgment of Berger Paints India Limited v. JSW Paints Private Limited, which has garnered significant attention for its detailed analysis and implementation in the field of Trademark dilution. This article will delve into the specifics of this concerned case, examining how it aligns with or diverges from previous interpretations of trademark Dilution and Its likely impact on the future legal landscape of Trademark Dilution. We aim to understand the evolving nature of trademark Dilution jurisprudence in India.

Application and Criticism

In India, regarding Trademark Dilution, notably under Section 29(4) of the Trademark Act, 1999. It has broadened the scope of protection for well-known trademarks beyond the traditional “likelihood of Confusion” test as mentioned above. This provision ultimately aims to preserve the distinctiveness and reputation of registered trademarks, even when the ambit of the services is different. However, each coin has two sides, when it comes to trademark laws in India it is considered that it is still in the developing stage, and there is still room for improvement. In the same order critics point out that its exclusive focus on the potential harm to trademarks may unduly restrict competition, potentially stifling innovation and market dynamics. 7 Moreover, inference can be drawn from some important cases, such as Daimler Benz Aktiegessellschaft & Anr. v. Hybo Hindustan8 and ITC v Philip Morris Products SA & Ors. has shaped the interpretation of Section 29(4). These judgments elucidated the significance of preserving the unique identity and reputation of a well-known trademark, emphasizing the need for robust protection mechanisms. As mentioned above the surroundings of trademark dilutions in India are still evolving, with ongoing cases like Berger Paint India Limited contributing to its development.

Important Elements

Further, drawing inference from the landmark judgment of ITC v Philip Morris Products SA & Ors, wherein the important elements of trademark dilution has been mentioned and explained. These are the following main element of Trademark Dilution: –

  1. The contested mark is the same as the well-known mark or comparable to it.
  2. In India, the injured or well-known mark has a reputation.
  3. There is no justification for using the contested mark.
  4. The use of the contested mark results in the well-known mark being used without authorization

Critical Analyses of The Ruling Of Berger Paints India Limited V. Jsw Paints Private Limited

  • Brief Facts & Timeline

In the recent case of Berger Paints, before the Hon’ble High Court of Calcutta, wherein Berger Paint India Limited was the Plaintiff, and sought an injection against the defendant company, JSW, from restraining them from using the Plaintiff’s trademark “Silk”, for its paints. In this case, the plaintiff, Berger Paints a prominent paint company established in 1932, sought an injection against JSW Paints for using the term “Silk” in their paint product branding “Halo Silk”. Moreover, since 1980 Berger Paints has been using the trademark term in their paint product line and also registered approximately 250 trademarks embracing the term. Further, Berger Paints discovered the use of the term “Silk” by the defendant, JSW Paints in December 2019, and issued a cease and desist notice, which JSW Paints has refused.

  • Courts Analysis & Decision

The court’s analyses were focused on several key aspects, which have been the result of the observation of the important elements of trademark dilutions mentioned above. The following is the court’s analysis: –

  1. Firstly, the analysis of the Descriptive nature of the term “Silk” – The court held that the term “Silk” is itself a descriptive term in the context of paint products. Descriptive terms generally describe a characteristic or quality of the goods or services and are not inherently distinctive. In this case, Berger Paints were required to demonstrate that the term “Silk” has formed a secondary meaning, and especially has to associate it with their product in the minds of consumers.
  2. Secondly, Berger Paints failed to establish the necessary secondary meaning of the term “Silk” – While Berger Paints provided evidence of Extensive use and marketing of their “Silk” products, the court found that this was not sufficient to establish that “Silk” has acquired the necessary secondary meaning. The court emphasized that Berger Paint had accepted trademark registration conditions that did not grant exclusive rights to the word “Silk”.
  3. Confusion among the consumers – The court in the concerned case considered whether an average consumer might mistakenly believe that JSW’s “Silk” paint products were associated with or endorsed by Berger Paints. Given the descriptive nature of the term and the distinct branding of JSW Paints, the court concluded that there was no substantial likelihood of consumer confusion. Consequently, in this concerned case of Berger Paints India Limited v. JSW Paints Private Limited, before the Hon’ble Justice Krishna Rao, the Hon’ble High Court of Calcutta, Denied the injunction and allowed JSW Paints to continue using “Silk” to describe their paint finish

Conclusion

In conclusion, the judgment of Berger Paints India Limited v. JSW Paints Private Limited provided a holistic idea about the details and practical approach of trademark dilution, particularly with regard to the descriptive terms within any specific industry in question. While it does not necessarily provide a new interpretation of trademark dilution, nevertheless it reinforces the existing principles and emphasizes the importance of contextual and practical consideration in Trademark Disputes in India. Further, this concerned judgment will definitely serve as a significant reference point for future disputes in the ambit of trademark Dilution, while highlighting the complexities and nuances of trademark laws in India.

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