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Introduction

Trademarks are extremely valuable in India’s vast and competitive market because they represent a company’s identity and reputation. However, as the world of commerce evolves, so do the issues surrounding trademark protection. One such looming challenge is trademark dilution, a concept that holds significant weight in protecting brand integrity. This article provides a comprehensive analysis of trademark dilution as it pertains to India and offering guidance to businesses on effectively handling this diverse domain.

Understanding Trademark Dilution

Trademark dilution is a legal concept that refers to the weakening or tarnishing of a famous or well-known trademark’s distinctive quality or reputation. In traditional trademark infringement, the focus is on how likely it is that consumers will get confused. But dilution laws are meant to protect the uniqueness and distinctiveness of very strong trademarks even when there isn’t any confusion.

Key Elements of Trademark Dilution

• Popularity & Uniqueness – Trademark dilution is most commonly applied to highly distinctive and well-known marks. A distinctive mark is one that is distinct and easily distinguishable from other marks in the same industry.
• Reputation – In the relevant market, the well-known mark must have a strong reputation among consumers. This reputation is frequently attributed to the mark’s long history of use, extensive advertising, and widespread recognition.
• Use of a Similar or Identical Mark – Dilution of a trademark occurs when a third party uses a mark that is identical or similar to a well-known mark. Unlike traditional infringement, no likelihood of confusion is required; the emphasis is on the potential harm to the distinctiveness or reputation of the famous mark.
• Absent Just Cause- Unauthorised use of a similar or identical mark must be done without a valid reason or due cause. Legitimate uses may include fair use, comparative advertising, commentary, criticism, or other situations in which the use does not harm the famous mark’s unique identity.
• Adverse Effects- The use of a similar or identical mark should be detrimental to the famous mark’s distinctive character or reputation. This harm could take the form of a blurring of the mark’s distinctiveness or a tarnishing of its positive associations.

Legal Framework

The legal framework for trademark dilution in India is enshrined in Section 29(4) of the Trademarks Act, 1999. This provision expressly recognises the concept of dilution and establishes a legal basis for action when a well-known mark is diluted. It establishes that infringement in the form of dilution occurs when an infringer takes unfair advantage of a well-known mark, resulting in a tarnished image of the mark.

The case of Daimler Benz Aktiegesellschaft & Anr. v. Hybo Hindustan, which preceded specific legal provisions, brought attention to the concept of dilution in India. The dispute centred on the defendant’s use of the BENZ mark, which featured a three-pointed human figure in a ring, for their undergarment line. The High Court issued an injunction, expressing concern that imitating a well-known brand such as Mercedes-Benz would lead the public to believe that the renowned luxury car company BENZ had entered the business of manufacturing and selling undergarments. A misunderstanding like this could dilute or tarnish the well-known brand BENZ’s reputation. The court emphasised that a well-known brand, such as BENZ, cannot be used on any product by anyone.

The Delhi High Court also addressed the issue of trademark dilution in the case of Hamdard National Foundation & Anr. vs. Hussain Dalal & Ors., also known as the Rooh Afza case. The conflict arose as a result of offensive references to the iconic brand Rooh Afza in the Bollywood film ‘Yeh Jawaani Hai Deewani.’ The court ruled that such references could harm the brand’s reputation, emphasising the importance of shielding trademarks from negative associations. While granting an injunction against the film’s television release, the court permitted its theatrical release as long as the objectionable content was removed. This case exemplifies the court’s recognition of the potential dilution of a trademark’s reputation, as well as the delicate balance in the entertainment industry between protecting intellectual property rights and artistic expression.

Forms of Trademark Dilution

Trademark dilution can manifest in various forms, primarily revolving around tarnishment and blurring. Tarnishment occurs when a well-known mark is portrayed in a negative light, adversely affecting its commercial value or reputation. If a famous luxury brand’s logo is used in connection with substandard or controversial products, it tarnishes the brand’s image by associating it with something undesirable or of lower quality.

On the other hand, blurring involves the gradual weakening of the distinctiveness of a mark due to its unauthorized use in unrelated contexts, making it less uniquely associated with the original source. If a well-known soft drink brand allows its logo to be used on products entirely unrelated to beverages, such as clothing or electronics, the distinctiveness of the brand in connection with beverages may be diluted.

Exceptions to Trademark Dilution

While Section 29(4) of the Trademarks Act, 1999 in India establishes a robust framework to combat trademark dilution, it is crucial to recognize that not every use of a similar mark automatically results in dilution. Certain exceptions are carved out to accommodate fair practices, freedom of expression, and legitimate uses of trademarks. Understanding these exceptions is essential for maintaining a balance between the protection of intellectual property rights and the preservation of fundamental freedoms.

Preventing Trademark Dilution

To prevent trademark dilution, businesses must actively protect their intellectual property rights. Seeking legal remedies in cases of infringement, obtaining trademarks for well-known marks, and actively monitoring the usage of trademarks in various contexts are crucial steps. Timely action can prevent dilution and safeguard the brand’s unique identity.

Conclusion

In the constantly shifting backdrop of India’s business environment, trademark dilution represents a significant risk to the integrity of brands. When it comes to protecting their valuable assets, it is absolutely necessary for businesses to be aware of the legal implications and to have a thorough understanding of the ins and outs of trademark dilution. By actively engaging in legal recourse, obtaining well-known status for trademarks, and maintaining vigilance over trademark usage, businesses can navigate the complexities of trademark dilution in India and ensure the enduring strength of their brands in the marketplace.

French Court Rules Against Sample Cosmetic Sales and Altered Packaging as Trademark Infringement

In a significant legal battle, Chanel emerges victorious as the French Cour de Cassation rules against the sale of Chanel cosmetic samples bearing the label “Free sample – cannot be sold,” deeming it a violation of trademark rights. The court emphasized the exhaustion of trademark rights, highlighting that the burden of proof lies with the party claiming it. Additionally, the court upheld Chanel’s objection to the alteration of packaging, asserting that the sale of cosmetic products and fragrances without their original packaging constitutes a legitimate reason for trademark opposition. This decision underscores the importance of protecting the origin function of trademarks and establishes a precedent for cases involving altered product conditions and sample distribution.

UK Supreme Court Rejects Patent for AI-Invented Creations

In a landmark decision on December 20, 2023, the UK Supreme Court upheld its earlier denial of patent protection for two inventions attributed to the AI entity, DABUS (Device for the Autonomous Bootstrapping of Unified Sentience). The court ruled against the application filed by US-based computer scientist Stephen Thaler, affirming that AI systems cannot be recognized as inventors. Thaler’s claim, asserting his ownership of the AI’s creativity, was dismissed as the court emphasized the necessity of human inventorship under the 1977 Act. This decision aligns with a similar rejection from the US Patents and Trademarks Office earlier this year. Notably, while Australia and South Africa have recognized DABUS as an inventor, the UK’s stance underscores the ongoing global debate on AI-generated inventions and patent eligibility. Thaler’s parallel patent application in India remains pending, facing objections against recognizing AI software as an inventor.

European Court of Justice Sets Precedent in Vespa 3D Trademark Validity Dispute

The European Court of Justice (ECJ) reversed a decision invalidating Piaggio’s Vespa 3D trademark. The dispute arose when two Chinese companies challenged Piaggio’s trademark validity. The ECJ emphasized that proving distinctiveness for a shape mark should not be overly difficult, and a sign should indicate the product’s origin from a specific company. The court also eased the requirement for separate evidence for each EU member state. Various types of evidence were considered, including Vespa’s global recognition in museums, design expert acclaim, movie appearances, and the existence of Vespa clubs across the EU. The ECJ’s decision is expected to impact the acceptance of 3D trademarks, particularly for iconic design products like Piaggio’s Vespa.

Pakistan Joins Global Treaty (Marrakesh Treaty) for Better Accessibility

Pakistan recently joined the Marrakesh Treaty on December 12, 2023, a global initiative to enhance accessibility for people with visual impairments. The treaty allows the exchange of copyrighted works in braille, audio, and large print formats between member countries. This move reflects Pakistan’s commitment to inclusivity and equal access to educational resources for individuals with disabilities. By aligning with global efforts, Pakistan aims to implement standardized measures that enable better reproduction, distribution, and accessibility of published works for those with disabilities. The focus on accessibility is crucial for ensuring the right to education for differently abled citizens, promoting integration into mainstream society and contributing to overall social development. The success of this initiative depends on the effective implementation of the Marrakesh Treaty within Pakistan.

Mickey Mouse Enters Public Domain as U.S. Copyright Expires

The iconic character Mickey Mouse has officially entered the public domain in the United States, marking the expiration of its copyright. As of now, the beloved cartoon character, created by Walt Disney, is no longer under copyright protection, allowing for broader use and access by the public. This development follows the conclusion of the copyright term, and Mickey Mouse is now part of the public domain, free for creative use and adaptation. Disney enthusiasts and content creators can explore new possibilities with the timeless character that has played a significant role in popular culture since its creation.

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The Indian government has introduced several amendments to the Patents Act, 1970 through the Patent (Amendment) Rules, 2024, which came into effect on March 15, 2024. These amendments aim to streamline the patent application and examination process, provide more clarity, and align with international practices. Let’s take a look at some of the significant changes:

Informing about Foreign Filings (Rule 12)

Prior to the amendment there was a specific timeframe of every 6 months provided for informing the Controller about foreign patent applications filed by the applicant.
As per the amendments, applicants must inform the Controller in writing (Form-3) about details of other patent applications filed in any country within three months from the issuance date of the first examination report. Also, the Controller may direct the applicant to furnish the fresh Form-3 for the details of the foreign applications within 2 months from the date of such communication from the Controller.

Further, the Controller may condone the delay or extend the time to file Form-3 upto three months upon a request made in Form-4.These changes bring clarity and establishes a definite timeline for applicants to disclose foreign filing information, facilitating efficient examination.

Divisional Applications (Rule 13)

No specific provisions regarding divisional application were provided in the Act prior to this amendment. A new sub-rule (2A) has been introduced, requiring divisional applications to include a specific reference to the number of the original application from which they are derived. Additionally, applicants can file additional applications concerning inventions disclosed in the original or subsequent applications. This amendment provides a structured approach to filing divisional applications and allows applicants flexibility in pursuing additional inventions disclosed in related applications.

Request for Examination (RFE) Timeline (Rule 24B)

Prior to the amendment the RFE had to be filed within 48 months from the date of priority or filing, whichever is earlier. Now, the RFE must be submitted within 31 months from the date of priority or filing, whichever is earlier. The reduced timeline for filing the RFE aims to expedite the examination process and ensure timely grant of patents.

Grace Period for Filing (Rule 29A)

Earlier No specific provisions for the 12-month grace period were provided under section 31. Rule 29A outlines the process for utilizing the 12-month grace period for filing a patent application without the invention being considered anticipated. Applicants must submit Form 31 along with the prescribed fees. This amendment provides clarity on the procedures for availing the grace period, benefiting applicants who have disclosed their inventions before filing the patent application.

Opposition Proceedings (Rules 55 and 56)

The amended Rules 55 and 56 provide detailed procedures for handling opposition representations, including timelines, submissions, hearings, and decisions by the Controller or Opposition Board. Earlier there were limited provisions for opposition proceedings. The revised rules streamline the opposition process, ensuring transparency and establishing clear guidelines for both applicants and opponents.

Certificates of Inventorship (Rule 70A)

Rule 70A allows inventors to request Certificates of Inventorship for their patents, including provisions for duplicate certificates in case of loss or damage. Earlier there were no provisions for issuing Certificates of Inventorship. This new rule acknowledges the contributions of inventors and provides a mechanism for obtaining official recognition of their inventorship.

Renewal Fees (Rule 80)

Prior to the amendment there were no specific provisions for advance payment or discounts on renewal fees. The new Rule 80 allows for payment of renewal fees for multiple years in advance, with a 10% reduction if fees are paid electronically for at least four years in advance. The ability to pay renewal fees in advance and the discount incentive can benefit patentees, especially those with a large patent portfolio.

Patent Agent Examination (Rule 110)

Earlier there were only Limited details on the structure of the qualifying examination for patent agents. The new Rule 110 outlines the specific structure of the qualifying examination, comprising three sections: Paper I (Acts and Rules), Paper II (Drafting and Interpretation), and a Viva Voce section. The revised rule provides clarity on the examination structure, ensuring consistency and transparency in evaluating prospective patent agents.

Submission of Statements (Rules 131 and 137)

Earlier the Patentees and licensees were required to submit Form 27 statements annually. The new Rule 131 now requires submission of Form 27 statements every three financial years, with a deadline of six months after each three-year period and the possibility of a three-month extension. Rule 137 clarifies exceptions to the Controller’s power to amend documents or correct irregularities. The reduced frequency of Form 27 submissions eases the compliance burden on patentees and licensees, while Rule 137 provides clarity on the Controller’s powers and exceptions.

Extension of Deadlines (Rule 138)

Earlier there were limited provisions for extending deadlines or excusing delays. The new Rule 138 empowers the Controller to extend deadlines or excuse delays for up to six months upon request, as long as the request is made using Form 4 before the original deadline expires. Multiple extensions can be requested within the six-month period. This amendment introduces flexibility and a structured approach for applicants seeking extensions, potentially mitigating the consequences of missed deadlines.

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