Indian Kanoon - Search engine for Indian Law

44. It may be seen from the preceding discussion that dilution of trademark is a species of infringement. Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and services, courts have, over the years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods - or unrelated products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar junior marks, but for dissimilar goods is, in substance the protection against dilution (or Blurring or tarnishment) of the mark. Prior to the 1999 Act, Indian law had developed through case law; the new Act changed that, and has enjoined protection against dilution, if certain essential elements are established; they are:

49. As commented earlier, the analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the enactment of Section 29 (4). The plaintiff has to fulfill a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a "global" look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark. As noted in the previous part of the judgment, the plaintiffs‟ mark is not a "stand alone" mark; it is used with the words WELCOMGROUP, or the name of the I.A. NOS.12940/2009, 12941/2009 & 12942/2009 IN CS(OS) 1894/2009 Page 37 l resort or service. Moreover, the plaintiffs‟ mark is part of the overall marks and devices which are used in relation to each hotel, restaurant, resort or service it offers, to the consumer. The defendants claim that the impugned mark is used only for a special festive pack, i.e Diwali. The plaintiff‟s mark resembles a "W" but clearly a "Namaste" is discernable. All the defendant‟s previous marks resemble "M" (perhaps depicting MARLBORO). Considering the overall marks or logos, without cataloging minutely the similarities or dissimilarities, this court discerns no "identity" or "similarity" in the overall presentation of the two. This conclusion is further fortified for the reason that the plaintiff‟s mark, in relation to hospitality industry, is a stylized logo, which has to be juxtaposed with another mark, which, the materials on record prima facie suggest, has its own distinctive market. The case law in India, on dilution - mostly pertaining to the situation existing prior to Section 29 (4) has hinged round comparison of competing word marks, which have their peculiarities. In the case of logos and other marks, the application of the "identity" or "similarity" test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective. It is, therefore, concluded, that prima facie the two trademarks are neither identical, nor similar to each other. This prima facie conclusion would also govern the plaintiff‟s copyright claim, because the W-NAMASTE of the dissimilarity between that logo or mark and the tilting "flame" logo of the defendants. The latter mark is quite different, and has its own artistic elements.