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DOCTRINE OF DILUTION UNDER LAW OF TRADEMARK- A COMPARATIVE

ANALYSIS OF LAW IN UNITED KINGDOM AND UNITED STATES OF AMERICA

Narendra Goyal, * Mukesh Kumar Singh**

Good name in man and women, dear my lord


Is the immediate jewel of their soul;
Who steals my purse, steals trash;
Its something nothing;
„Twas mine, „tis, and has been slave to thousands;
But he that filches from me my good name,
Robs me of that which not enriches him
And makes me poor indeed.
~ Shakespeare, Othello, Act III, Scene III

1. CONCEPT, HISTORY, EVOLUTION AND ACCEPTANCE

Literary legend Shakespeare rightly wrote that good name is jewel of soul. Though a trademark
is just a mark indicating same source of origin of the product for which it is used, it is worth
naming soul of the goods for which it is applied. In the jungle of products trademarks help
buyers to get exactly what they want to buy. Trademarks are the foundation of competition for
businesses and grant the freedom of choice to buyers. Therefore, it is necessary to protect the
trade name and trade mark, and its uniqueness. A trade mark is not to be diluted by anyone, so
many of the countries has protected by making a statute.

1.1 CONCEPT
Trademark law generally deals with the protection of mark from being infringed. A situation if
arises, wherein a person not authorized by the trademark owner, uses the identical or similar
_______________________________________________________________________
* BA LLB (Hons) final year student at Rajiv Gandhi National University of Law, Punjab
** BA LLB (Hons) final year student at Rajiv Gandhi National University of Law, Punjab

Electronic copy available at: http://ssrn.com/abstract=1756741


mark for selling any goods, which are directly competitive with, or has any relation with the
goods, sold by the trademark owner, is considered a infringement of trademark and accordingly
relief is granted to the owner of trademark by the court. However, in many jurisdictions, the
concept of dilution has developed recently1 to protect trademarks as a property right, securing the
investment the trademark owner has made in establishing and promoting a strong mark. 2.

Trademark dilution is a relatively new concept in intellectual property jurisprudence. The


concept of doctrine of dilution is a very complicated concept of law of trademarks, and it is
relatively difficult to explain and understand, as J.T. McCarthy, a renowned author has rightly
said ―No part of trademark law that I have encountered in my forty years of teaching and
practicing IP law has created so much doctrinal puzzlement and judicial incomprehension as the
concept of „dilution‟ as a form of intrusion on a trademark. It is a daunting pedagogical
challenge to explain even the basic theoretical concept of dilution to students, attorneys, and
judges. I have tried mightily. I believe that few can successfully explain it without encountering
blank stares of incredulity or worse, nods of understanding which mask and conceal puzzlement
and misconceptions. Even the U.S. Supreme Court has failed to grasp the contours of the
doctrine.‖3

Doctrine of dilution is a trademark law concept that permits the owner of a famous trademark to
forbid others from using that mark in a way of that would lessen its uniqueness. 4 The doctrine of
dilution is different from other types of infringement in the sense that it gives a right to the owner
of trademark to stop any person from using his trademark even in non competitive markets or in
dissimilar goods or which has no competition with the goods of owner of trademark. For
example, a famous trademark used by one company to refer to hair-care products might be

1
The concept of ‗dilution‘ is much newer than the rest of trademark law. The US enacted a law against trademark
dilution only in 1995. However, various states had begun adopting such laws shortly after World War II, and the
idea was floated in academic writing as early as 1920s.
2
Brajendu Bhaskar, ‗‗Trademark Dilution Doctrine: The Scenario Post TDRA, 2005‘ NUJS Law Review 1 NUJS L.
Rev. 637 (2008).
3
J.T. McCarthy, Proving a Trademark Has Been Diluted: Theories or Facts? 41 Houston L. Rev. 713, 726 (2004).
4
Supra note 2

Electronic copy available at: http://ssrn.com/abstract=1756741


diluted if another company began using a similar mark to refer to breakfast cereals or spark
plugs. 5

A trademark is diluted when the use of similar or identical trademarks in other non-competing
markets, means that the trademark in and of itself will lose its capacity to signify a single source.
In other words, unlike ordinary trademark law, dilution protection extends to trademark uses that
do not confuse consumers regarding who has made a product. Instead, dilution protection law
aims to protect sufficiently strong trademarks from losing their singular association in the public
mind with a particular product, perhaps imagined if the trademark were to be encountered
independently of any product (i.e., just the word Pepsi spoken, or on a billboard).6

Trademark dilution is defined as ―the impairment of a trademark‘s strength or effectiveness


caused by the use of the mark on an unrelated product, usually blurring the trademark‘s
distinctive character or tarnishing it with an unsavory association.‖ 7

Dilution, in fact, was defined in section 45 of the Lanham Act, 1946 of USA as the ―lessening of
the capacity of a famous mark to identify and distinguish goods or services, regardless of the
presence or absence of [competition] or [likelihood of confusion].‖8

Dilution usually takes the form of blurring or tarnishment. Dilution by blurring, the classic or
―traditional‖ dilution theory, occurs when current or prospective customers see the plaintiff‘s
mark used in connection with other goods and services. Although it may not cause confusion as
to the source of the product because the products may be sold in radically different markets, this

5
Ty Inc. v. Perryman, 306 F. 3d 509 (7th Cir. 2002).
6
Ty Inc. v. Perryman, 306 F. 3d 509 (7th Cir. 2002). see also Brajendu Bhaskar, ‗‗Trademark Dilution Doctrine: The
Scenario Post TDRA, 2005‘ NUJS Law Review 1 NUJS L. Rev. 637 (2008).
7
BLACK‘S LAW DICTIONARY 469 (7th ed. 1999); see, e.g., Eric A. Prager, The Federal Trademark Dilution Act
of 1995: Substantial Likelihood of Confusion, 7 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 121 (1996)
(explaining the damage caused by dilution as harm to the mark‘s uniqueness, its singularity, and its capacity to
identify the source of goods sold under it).
8
15 U.S.C. § 1127 (Supp. V 1998). NOTE- The definition of the term Dilution u/s. 45 of the Lanham Act has been
stroke down by the Trademark Dilution Revision Act, 2006

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non-infringing use nonetheless dilutes or weakens the unique and distinctive significance of the
trademark holder‘s mark to identify and distinguish its products or services. 9

The theory of Trademark dilution addresses the whittling away over time of a distinctive or
unique trademark‘s ability to identify certain goods or services, or the source of those goods or
services. 10 The dilution of a trademark represents a serious injury to a trademark because it
damages a mark‘s capacity to identify a particular source.11 The harm caused by dilution is not
done to the consumer, but ―to the mark itself—to its uniqueness, to its singularity, to its capacity
to identify the source of goods sold under it.‖12

Hence, under Doctrine of Dilution concept, the holder of trademark has right to stop the person
who unauthorized uses that trademark even in non-competitive market. The reason for this
protection to trademark is a concept of uniqueness of mark. Trademark dilution is a cause of
action for interfering with the uniqueness of a trademark. For example, consumers would
probably not think that ―Kodak soap‖ was produced by the makers of Kodak cameras, but its
presence in the market would diminish the uniqueness of the original Kodak mark. 13

In some of the cases the use of famous trademark by any other person might create confusion to
public. For instance, if there is one trademark, namely APPLE deals with computers related
business and some other person start business of mobiles using the same trademark, it shall
definitely cause confusion to the public who might connect it with the APPLE trademark dealing
with computers, as it is a very well known and famous.

9
Seth Aaron Rose ‗Towards a Solution for Dilution: Likelihood Instead of Actual Harm‘ Ohio State Law Journal
[Vol. 62: 1869 (2001)]
10
See Frank I. Schechter,‘ ―The Rational Basis of Trademark Protection,‘ 40 HARV. L. REV. 813, 825 (1927).
11
Robert C. Scheinfeld and Parker H. Bagley, ‗Trademark Dilution Act: An Evolutionary Shift In Focus‘ New
York Law Journal Volume 236—No. 99, Nov. (2006). (Original source Quoting Eric A. Prager, ―The Federal
Trademark Dilution Act of 1995: Substantial Likelihood of Confusion,‖ 7 FORDHAM INTELL. PROP. MEDIA
& ENT. L.J. 121, 123 (1996).
12
id
13
see Rebecca Tushnet, ‗Gone In Sixty Milliseconds: Trademark Law And Cognitive Science' , 86 Tex. L. Rev.
507. Feb. (2008).

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Confusion can take in different forms. Consumers might be confused into believing that the
plaintiff is actually selling the defendant's product (source confusion) or that the plaintiff
authorizes, endorses, or sponsors the defendant's product in some way (sponsorship confusion). 14
But Dilution is different. It imposes liability without any requirement of confusion. 15

There are two general types of dilution: tarnishment and blurring. 16 Tarnishment covers cases
where the defendant uses a similar mark in a way that severely clashes with the meanings that
consumers associate with the plaintiff's mark. 17 Suppose the defendant names its striptease club
"The Tiffany Club."18 This use of TIFFANY is not likely to confuse anyone into thinking that
the jewelry company is involved with the strip club, but it is likely to tarnish TIFFANY's
meaning as a symbol of elegance and prestige. 19 Dilution by blurring works differently. It is
based on the idea that multiple uses of the same mark on different products will "dilute the
distinctive quality of the mark" and make it more difficult for consumers to recall the original
product quickly. 20 To illustrate, suppose a firm names its soap "Tiffany Soap;" a car company
names its new car "The Tiffany;" a restaurant opens under the name "Tiffany;" and so on. These
uses of the TIFFANY mark may not confuse anyone about a possible connection with the
jewelry company, but they could clutter the signal sent by the mark and make it more difficult
for consumers to link it to Tiffany jewelry. Or so the blurring theory supposes. 21Therefore need
was felt by many countries for the protection of it. Under next part the origin and evolution
would be discussed.

1.2 HISTORY
The origin of trademark dilution theory is generally attributable to Frank I. Schechter, trademark
counsel for the manufacturer of BVD undergarments, and his article, ―The Rational Basis of

14
J. Thomos McCarthy, ‗McCarthy On Trademark And Unfair Competition‘ $$23:8, 24:6 (4th Ed.2007)
15
Mosley v. V Secret Catalogue, Inc., 537 U.S. 418, 429-30 (2003)
16
See Mccarthy, supranote 14, $ 24:67
17
See Daniel Klerman, ‗Trademark Dilution, Search Costs, and Naked Licnnsing‘, 74 Fordham L. Rev. 1759, 1762
(2006)
18
Ty Inc. v. Perryman, 306 F. 3d 509, 511 (7th Cir 2002) (Posner, J. used this example)
19
Rober G. Bone, ‗Schechter's Ideas In Historical Context And Dilution's Rocky Road‘, Santa Clara Computer &
High Technology Law Journal| (March 01, 2008)
20
See Danial Klerman, supranote 17, at 1762
21
See Robert G Bone, supranote 19

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Trademark Protection,‖ which appeared in the Harvard Law Review in 1927, which introduced
the concept of dilution to the legal and academic world.22Mr. Schechter severely criticized the
state of early trademark law, recommending instead that ―the preservation of the uniqueness of a
trademark should constitute the only rational basis for its protection.‖ 23 Schechter argued that the
protection of trade identity involves ―not only the question of deception of the public,‖ but
protection of the owner of the trademark who ―should be able to prevent other people from
vitiating the originality and uniqueness of that mark.‖ He noted that if courts permitted Rolls-
Royce Restaurants, Rolls-Royce Cafeterias, Rolls- Royce Pants and Rolls-Royce Candy, ―in ten
years you will not have the Rolls- Royce mark any more.‖24Even though, Schechter is known as
the father of dilution25, the concept of dilution is known to have originated in Germany in a case
concerning the mark ―Odel” for mouthwashes resulting in the cancellation of the identical mark
for steel products.26.The court recognizing the concept of dilution held that, ‗the complainant‘s
ability to compete with other manufacturers of mouthwashes will be impaired if the significance
of its mark was lessened‘. The court further recognized the immorality (“Gegen Die Guten
Sitten”) of trading upon the reputation of a famous mark on the theory that the consumer who
sees or hears the mark immediately associates the goods with the products for which the mark
has become famous. The court concluded that the owner of the mark has an interest in ―seeing
that its mark is not diluted [verwassert]: it would lose its selling power if everyone used it
[ODOL] as the designation of their goods.‖27 Schechter, however, unleashed the essence of the

22
See Frank I. Schechter, ‗The Rational Basis of Trademark Protection,‘ 40 Harv. L. Rev. 813 (1927).
23
Id. 830. Consider the four principles that Schechter set forth in support of his ―conclusion that the preservation of
the uniqueness of a trademark [is] the only rational basis for its protection:‖
(1) that the value of the modern trademark lies in its selling power; (2) that this selling power depends for
its psychological hold upon the public, not merely upon the merit of the goods upon which it is used,
but equally upon its uniqueness and singularity; (3) that such uniqueness or singularity is vitiated or
impaired by its use upon either related or non-related goods; and (4) that the degree of its protection
depends in turn upon the extent to which, through the efforts or ingenuity of its owner, it is actually
unique and different from other marks.
at 831.
24
Frank I. Schechter, ‗The Rational Basis of Trademark Protection‘, 40 Harv. L. Rev. 823, 824, (1927).
25
It is worth noting that Schechter did not mention the word ‗dilution any where in his seminal work. See also
(George E. Middleton, Some Reflections on Dilution, 42 TRADEMARK REP 175-176 (1952).
26
Civil Court, Elberfield 25 Juristiche Wochemschrift 502; XXV Markenschutz and Wettbewerb 264 (Sept. 11,
1925).
27
See supranote 23 (This seminal case is identified by many of the leading trademark authors as the origin of the
dilution doctrine.)

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concept which had been simmering under the obsolescence of the classic confusion based
infringement for long and with time came to be recognized as dilution. 28

At the same time the courts in UK and USA also thought for diversion from rigid view that they
had relating to unrelated products or services, which furthered support for the protection of
famous or well-known marks on non competing goods. In Vogue Co. v. Thompson-Hudson Co.,
the United States Court of Appeals for the Sixth Circuit granted the publisher of the Vogue
fashion magazine an injunction against the use of its V-GIRL and V marks for hats.29 In the
United Kingdom, Harrods Limited, the famous clothing retailer was granted an injunction
preventing R. Harrold Limited from offering money lending services under the HARRODS
mark.30 Even by the close of nineteenth century (1898) there was a case in the United Kingdom,
in which the Eastman Kodak Company successfully obtained an injunction against the use of the
KODAK mark on bicycles. 31 Therefore, as the time changed and technological and industrial
development took place all over the world, the courts also felt need for the changing of their rigid
view for protecting trademark owner‘s rights even in the unrelated goods or services. In other
words, courts conferred recognition to Doctrine of Dilution. But till that time, there was no
statutory recognition to Dilution Doctrine.

1.3 EVOLUTION AND ACCEPTANCE


For about 20 years from the Schechter‘s famous Article there was not much development and
expansion of Doctrine of Dilution of Trademarks in any country.

1.3.1 Evolution and Acceptance in United States of America


As such there was no concrete progress of dilution doctrine but there were sufficient judicial
decisions recognizing the Doctrine of Dilution, one of them is delivered by Judge Learned

28
http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/Confusion%20Surrounding%20En
glish%20Approach.htm (accessed on November 4, 2010, at 12.47pm)
29
300 F. 509 (6th Cir. 1924).
30
Harrods Ltd. v. R. Harrod Ltd. (1924) 41 R.P.C. 74.
31
Eastman Photographic Materials Co. v. John Griffiths Cycle Corp., 15 R.P.C. 105 (Ch. D. 1898).

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Hand32 wherein he furnished the opinion supporting the dilution doctrine. 33 Early attempts to
enact a federal dilution statute in the U.S. failed. In the early 1930s, Congress declined to pass
the “Perkins Bill,”34 drafted primarily by Schechter. During this period an array of advocates
called for action to prevent to merchants from reaping where they had not sown. 35 By 1942, the
dilution concept found well-expressed support in Justice Felix Frankfurter‘s recognition of the
―commercial magnetism‖ of a mark as a property right entitled to protection. Writing for the U.S.
Supreme Court in Mishawaka Rubber & Woolen Manufacturing Co. v. S.S. Kresge Co. 36 he
observed:
―The protection of a trademark is the law‟s recognition of the psychological function of symbols.
[a] trade-mark is a merchandising short-cut which induces a purchaser to select what he wants,
or what he has been led to believe he wants. The owner of a mark exploits this human propensity
by making every effort to impregnate the atmosphere of the market with the drawing power of a
congenial symbol. Whatever the means employed, the aim is the same - to convey through the
mark, in the minds of potential customers, the desirability of the commodity upon which it
appears. Once this is attained, the trademark owner has something of value. If another poaches
upon the commercial magnetism of symbols he has created, the owner can obtain legal
redress.”37

In 1947 the first American Anti-Dilution Statute was adopted by the State of Massachusetts, in
which, dilution was described as ‗the gradual whittling away of the trademark's selling power or

32
Yale Electric Corp. v. Robertson, 12. 26 F.2d 972 (2d Cir. 1928). which approved injunctive relief against a
defendant‘s use of a mark similar to that of the plaintiff in connection with unrelated goods:
33
Id at 974. [I]t has of recent years been recognized that a merchant may have a sufficient economic interest in the
use of his mark outside the field of his own exploitation to justify interposition by a court. His mark is his
authentic seal; by it he vouches for the goods which bear it; it carries his name for good or ill. If another uses it, he
borrows the owner‘s reputation, whose quality no longer lies within his own control. This is an injury, even
though the borrower does not tarnish it, or divert any sales by its use; for a reputation, like a face, is the symbol of
its possessor and creator, and another can use it only as a mask. And so it has come to be recognised that, unless
the borrower‘s use is so foreign to the owner‘s as to insure against any identification of the two, it is unlawful.
34
H.R. 11592, 72d Cong. (1st Sess. 1932). See also David S. Welkowitz, ‗Trademark Dilution: Federal, State, And
International Law‘ 259 (2002) at 154, Schechter actually testified in support of a different bill, known then and
now as the ―Vestal Bill,‖ H.R. 7118, 72nd Cong. (1931).
35
Miles J. Alexander, Theodore H. Davis Jr., and Lauren T. Estrin, ‗The Historic Foundation of Dilution Doctrine in
Trademark Law‘, World Extra, (May 2008)..
36
316 U.S. 203, 205 (1942).
37
id

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reputation‘. Other states soon followed suit. 38 Over two-thirds of state legislatures adopted some
form of anti dilution statutes. Although the idea behind the different states‘ laws was the same,
they each differed in their exact wording and as a consequence were interpreted in different
ways.39 Moreover, the Lanham Act that passed in 1946 did not address dilution.

1.3.1.1 The Road toward the Federal Dilution Statute


The need for federal dilution statute grew as states contradictorily applied state dilution statutes,
and dilution principles were furthered through misapplications of the existing Lanham Act 40 and
unfair competition law. This led to the need for uniformity and certainty for trademark owners.
As a result, US Congress amended the Lanham Act 41 to create a federal cause of action for
trademark dilution. Thence, Dilution was finally adopted in the federal law in 1995 through the
Federal Trademark Dilution Act (FTDA) 199542 homogenizing the concept throughout the
United States. The FTDA incorporates an action for dilution into the American Trade Marks Act
of 1946 (otherwise known as the Lanham Act).43 In some of the aspects the FTDA could not
worked clearly and caused confusion and conflicting situations. Therefore, Trademark Dilution
Revision Act was passed in 2005. This Act was actually prompted by the Supreme Court in
Moseley v. V Secret Catalogue Inc.44 in which the Court held that the FTDA requires a holder of
a famous trademark to demonstrate ―actual‖ as opposed to ―likely‖ dilution of its marks in order
to receive injunctive relief against trademark dilution. The TDRA promises clarification of the
law of trademark dilution. It addresses many of the shortcomings in the FTDA that resulted in
conflicting and confusing decisions, 45

38
Sabine Casparie-Kerdel, ‗Dilution Disguised: Has the Concept of Trade Mark Dilution Made Its Way into The
Laws Of Europe‘ E.I.P.R. 23(4), 185-195 (2001)
39
id.
40
Lanham Act § 43(c),
41
Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 218.
42
15 U.S.C. § 1125(c) (2000).
43
It defines dilution as the ―lessening of the capacity of a famous mark to identify and distinguish goods or services,
regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties,
or (2) likelihood of confusion, mistake or deception.‖ See Also Sabine Casparie-Kerdel, ―Dilution Disguised: Has
The Concept Of Trade Mark Dilution Made Its Way Into The Laws Of Europe‖ E.I.P.R. 2001, 23(4), 185-195.
44
(537 US 418 (2003) ( Victoria‘s Secret )
45
Robert C. Scheinfeld And Parker H. Bagley, ‗Trademark Dilution Act: An Evolutionary Shift In Focus‘ New
York Law Journal Volume 236—No. 99 Wednesday, (November 22, 2006)

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If we state that USA is the originator of the Doctrine of Dilution, it is not an untrue statement, as
Schechter belonged to USA only. In USA dilution doctrine gradually evolved and now it has a
full fledged statute dealing with dilution. Dilution doctrine is very well accepted by the USA. At
present US has most developed regulation on dilution. But it took a very long time to reach at
this point.

1.3.2 Evolution and Acceptance in United Kingdom


In UK dilution doctrine could not become a subject for debate. Initial evolution of dilution
doctrine was very slow. There were very little judicial decisions recognizing dilution doctrine
before passing of TMA, 1994. Some of the cases were decided under passing off remedy.

In Taittinger v. Allbev46 the producers of a nonalcoholic beverage attempted to use the term
―champagne‖ on their product. French producers of champagne had carefully cultivated a
singularity and exclusiveness which is now associated with their product. The court held that the
product had glamorous associations, reputation and goodwill. If another product were allowed to
describe itself as such it would erode the singularity and exclusivity of ―champagne‖. However
the Plaintiffs in this case had based their action on a passing off claim and successfully argued
confusion in the minds of the consumer.

While dilution theory was included in the European trade-mark law, thus, as a consequence of
European harmonization United Kingdom initiated anti dilution protection by enacting Trade
Mark Act 1994. Dilution action is recognized by TMA1994 under sections 5(2) and 10(3).47

46
[1993] FSR 641.
47
Trade Marks Act 1994 (U.K.), Section 10(3) which states ―A person infringes a registered trade mark if he uses,
in the course of trade, a sign which: (a) is identical with or similar to the trade mark; and (b) is used in relation to
goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a
reputation in the United Kingdom and the use of the sign, being without due cause, takes advantage of, or is
detrimental to, the distinctive character or the repute of the trade mark‖. The registration of the mark may be
opposed on grounds of dilution by way of Section 5(3). Section 5(3) reads: ―A trade mark which (a) is identical
with or similar to an earlier trade mark, and (b) is to be registered for goods or services which are not similar to
those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade
mark has a reputation in the United Kingdom, or in the case of a Community trade mark, in the European
Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to,
the distinctive or the repute of the earlier trade mark.‖ (These sections are based on Art. 4(3), 4(4)(a) and 5(2) of
EU Directive 89/104)

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In the year 2004 ss. 10(3)48 and 5(3)49 were amended by the Trade-mark Regulations 2004.
Accordingly the scope of protection is extended to cover identical, similar and not similar goods
and services.

Hence, gradual evolution took place and acceptance of dilution doctrine was formally recognized
by including relevant sections under the Trademark Act for the protection of the uniqueness of
mark. It is to be noted that as there was not much initial progress in UK as compare to USA for
the recognition of dilution doctrine, but at federal level the UK gave recognition to dilution
doctrine first as TMA was passed in 1994 while in US statute was passed in 1995.

1.3.3 Evolution and Acceptance in India


Statutory provisions relating to trademark dilution were introduced for the first time into Indian
law with the passing of Trade Marks Act of 1999,50 which came into effect in 2003. 51 Under
Indian trademark law, the concept of ‗dilution‘ has been mainly expressed under Section 29 (4)52
but there are other relevant sections 53 which are corresponding to section 29(4). Yet since their
inception, these provisions have remained on the shelf, largely untouched for half a decade. By
contrast, dilution features prominently in litigation based upon the common law tort of passing
off, to prevent the unauthorized use of a trademark in a wide range of circumstances. 54

48
In section 10(3)-
(a)after the words "course of trade" there shall be inserted ", in relation to goods or services,";
(b)paragraph (b) and the word "and" immediately preceding it shall be omitted."."
(http://www.opsi.gov.uk/si/si2004/20041497.htm, accessed on 6th November, 2010 at 12.01 AM.)
49
In section 5, subsection (3) (b) and the word "and" immediately preceding it shall be omitted.
(http://www.opsi.gov.uk/si/si2004/20041497.htm, accessed on 6th November, 2010 at 12.01 AM.
50
The Trademarks Act, No. 47 of 1999 [hereinafter The Act of 1999],
51
Notification No. SO 1048(E), GAZETTE OF INDIA, Sept. 15, 2003.
52
Trade Marks Act, 1999, Section 29(4): A registered trade mark is infringed by a person who, not being a
registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which --(a) is
identical with or similar to the registered trade mark; and (b) is used in relation to goods or services which are not
similar to those for which the trade mark is registered; and (c) the registered trade mark has a reputation in India
and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character
or repute of the registered trade mark. (Section reads similar to Section 10(3) of the English Act)
53
Ss. 2(1) (zg), 11(2), 11(6), 11(7), 11(8), 11(9), 11(10) of Trademark Act, 1999. Further under the Trade Mark
Rules, 2002, Rule 48(b)(vi) equates ‗well known‘ with ‗reputation‘.
54
Dev Gangjee, ‗The Polymorphism of Trademark Dilution in India‘, 17 Transnat‘l L. & Contemp. Probs. 601
(2008).

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It is pertinent to note that in India, even though statutory recognition was enforced in 2003 but it
should not be understood that there was no protection to the well known mark against
misappropriation in respect of dissimilar goods, before passing of the Act. Under the remedy of
passing off Indian Courts had applied dilution doctrine long back, even before TRIPS became
effective in January 1996, it might not be in present form but uniqueness of the mark was
protected in some of the cases. In most cases, redress has been claimed under the head of the tort
of ‗passing off‘ by the claimant.

As early as 1969, the High Court of Bombay in Sunder Parmanand Lalwani and others v Caltex
(India) Ltd55 held that use of ‗Caltex‘ for watches would mislead and cause consumer confusion
since this mark was associated by consumers and public at large with the famous petrol and
various oil products.

In Daimler Benz Aktiegesellschaft v. Hybo Hindustan56 Delhi High Court dealt with the idea of
dilution. Though the court did not explain the concept of dilution in any great detail it allowed an
injunction to the plaintiffs. The Court held that ‗Benz‘ was a mark of international repute
signifying the finest engineered cars in the world and is a symbol of status and quality par
excellence. The use of the mark ‗Benz‘ on underwear, it was held, would clearly dilute the
integrity of the mark. Hence, court granted the world-famous German automaker an injunction
against the defendants‘ use of Benz along with a ‗three-pointed human being in a ring‘ on
undergarments.
Therefore, it can be said that Indian courts without any statutorily compulsion protected well
known trademark effectively and finally it was recognized and accepted by the legislature in the
form of TMA, 1999.

55
1969 A.I.R. 24 (Bom.).
56
AIR 1994 Del 239. See also Honda Motors Co. v. Charanjit Singh & Ors., 2003 P.T.C. 26 (Del.) 1 (HONDA on
pressure cookers).

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2. DOCTRINE OF DILUTION- A COMPARATIVE ANALYSIS OF LAW IN
UNITED STATES AND UNITED KINGDOM

2.1 POSITION IN UNITED STATES OF AMERICA


Almost from the start, though, the Federal Trademark Dilution Act, failed to live up to its
promise. Trademark owners overused the law to seek protection for marks of all types, famous
and obscure. Litigation counsel invoked dilution to enjoin a variety of ills that went far beyond
the protection that Schechter had envisioned. Trial judges were confused by the nebulous
concepts of ―blurring‖ and ―tarnishment.‖ Appeals courts issued contradictory rulings, which
encouraged forum shopping. And in 2003 the Supreme Court eviscerated dilution by making it
so hard to prove that the FTDA became a toothless tiger. 57

The Trademark Dilution Revision Act, H.R. 683, is designed to bring dilution back to its roots.
The legislation clarifies that this powerful protection is meant only for marks that are truly
famous and distinctive. It provides specific standards to assist courts in determining when
dilution has occurred. It strengthens fair-use protections to ensure that dilution is not used to
suppress free speech. And it resolves the various splits that emerged among the circuits to ensure
national uniformity in the application of dilution law. 58
The foremost force for review of the FTDA is the need to undo the effects of the 2003 judgment
in Moseley v. V Secret Catalogue Inc.59 the Supreme Court in that case ruled that plaintiff must
prove actual dilution, not merely a likelihood of dilution, to succeed in a dilution claim.
Therefore, new Act came into in existence which is known as Trademark Dilution Revision Act,
2006.

2.1.1 Trademark Dilution Revision Act, 2006


TDRA came into effect after the failure of FTDA in fulfilling the aim and objectives
appropriately and also undo the effects of Moseley judgment. The TDRA, 2006 deals with some
basic points. It makes many important changes for clarifying the intention of Congress for

57
David H. Bernstein, ‗IP a Stronger Solution‘, first appeared in the July 24, 2006, issue of Legal Times‘ IP.
(www.legaltimes.com).
58
id.
59
537 U.S. 418 (2003).

13
passing of FTDA. The most important function that plays by TDRA is eliminating confusion on
key issues of dilution. In confirmation of the provisions of TDRA, The Trademark Act, 1946 was
also amended. The definition of dilution u/s 45 of Trademark Act, 1946 has been stroke down by
amendment, in confirmation of TDRA, 2006.

2.1.1.1 Provisions under the Act


i. Standard for Dilution
The TDRA establishes the ―likelihood of harm‖ 60 standard for dilution actions, as
opposed to ―actual dilution ―standard which was held in Moseley v. V Secret Catalogue
Inc. The Supreme Court in that case ruled that plaintiff must prove actual dilution, not
merely a likelihood of dilution, to succeed in a dilution claim. Nevertheless, according to
recent law of US the owner of famous trademark (plaintiff) need not to prove actual harm
caused by dilution but only need to prove is that likelihood of harm. The TDRA explicitly
states that
―Subject to the principles of equity, the owner of a famous mark that is distinctive,
inherently or through acquired distinctiveness, shall be entitled to an injunction
against another person who, at any time after the owner‘s mark has become
famous, commences use of a mark or trade name in commerce that is likely to
cause dilution by blurring or dilution by tarnishment of the famous mark,
regardless of the presence or absence of actual or likely confusion, of competition,
or of actual economic injury.‖

Hence, now it would be easy for a plaintiff to prove dilution, but problem still
arises as no criterion has been fixed either by courts or under Act itself to prove
‗likelihood of harm‘ but we can hope that some specific criterion would be
developed by courts in near future, which will put a break on any ambiguity or
uncertainty.

ii. Types of dilution recognized under the Act

60
Trademark Dilution Revision Act, H.R. 683, 109th Cong. § 2(c) (2) (2006).

14
Under TDRA two types of dilution are recognized, i.e. dilution by Blurring, and dilution
by Tarnishment. The Act also defines both types of dilution. First type is ―Dilution by
blurring‖ is association arising from the similarity between a mark or trade name and a
famous mark that impairs the distinctiveness of the famous mark. 61

Hence, for proving blurring, association must be established between a mark and famous
mark. It means consumers make an association, i.e., a ―mental connection [of] relational
significance,‖ between the plaintiff‘s mark and the defendant‘s mark; secondly, there
must be similarity between a mark and a famous mark that leads to the consumer to
associate the plaintiff‘s mark with defendant‘s mark. Thirdly, it must damage the
distinctiveness of the famous mark.

Discretion is granted to court, for determination of whether a mark or trade name is likely
to cause dilution by blurring or not, to consider all relevant factors. Under the Act, some
factors are expressly mentioned,62 which if court thinks relevant, may consider those
factors.
It is suggested that it would be better if courts do consider the relevant factors mentioned
under the Act, or legislature makes it obligatory on the part of the court to consider
factors mentioned under the Act, because of preventing courts to act arbitrarily, that may
violate the interest of any of the parties involved in the subject matter.

Second type of dilution is dilution by tarnishment. It is generally known as the second


sub type of dilution. It refers to the weakening of a mark through unsavory or unflattering
associations.
Dilution by tarnishment is association arising from the similarity between a mark or trade
name and a famous mark that harms the reputation of the famous mark. 63

61
Trademark Dilution Revision Act, H.R. 683, 109th Cong. § 2(c) (2) (B) (2006).
62
Supra note 58. (i)The degree of similarity between mark or trade name and the famous mark. ( ii)The degree of
inherent or acquired distinctiveness. (iii) The extent to which the owner of the famous mark is engaging in
substantially exclusive use of the mark. (iv) The degree of recognition of the famous mark. (v)Whether the user of
the mark or trade name intended to create an association with the famous mark. (vi) Any actual association
between the mark or trade name and the famous mark.
63
Trademark Dilution Revision Act, H.R. 683, 109th Cong. § 2(c) (2) (C) (2006).

15
Thus, plaintiff can succeed in his action for dilution of tarnishment if (i) there is
association between mark and a famous mark, (ii) similarity between a mark and famous
mark, (iii) and that similarity harms the reputation of the famous mark. Tarnishment takes
place when the mark is used by a different trader in unrelated goods that are of inferior
quality than those of the famous mark‘s holder.

iii. Criterion for Protection


Protection under the Act is granted to famous marks that are inherently distinct or acquire
distinctiveness. The Act provides, that ―a mark is famous if it is ‗widely recognized‘ by
the ‗general consuming public of the United States‘ as a designation of source...64 This
definition eliminates the concept of niche fame 65 This definition of famousness under the
TDRA guides courts to effectively adjudicate in respect of whether a mark is famous or
not, for qualifying the anti dilution protection. On this language, it is likely that marks
such as INTERMATIC,66 LEXINGTON,67 or WAWA, 68 which were found to be famous
under the terms of the FTDA, would not be found to be famous under the new terms of
the TDRA. None of these marks is ―widely recognized‖ by the ―general consuming
public‖ of the entire country.69 The TDRA‘s new standard for famousness returns federal
antidilution protection to its core principles. The antidilution right is an extraordinary
right that only extraordinary marks deserve. In essence, and as was arguably originally
intended by Schechter, the mark must be a ―household word‖ to qualify. 70

64
Trademark Dilution Revision Act, H.R. 683, 109th Cong. § 2(c) (2) (B) (2006).
65
Kurt M. Saunders, ‗Dilution Revisited: A First Look At The Trademark Dilution Revision Act‘ Pennsylvania Bar
Association Quarterly, p.74. (April 2007), see also Brajendu Bhaskar, ‘Trademark Dilution Doctrine: The
Scenario Post TDRA, 2005‘, 1 NUJS L. Rev. (2008). See also on niche fame, see J. Thomas McCarthy, ‗Proving
a Trademark Has Been Diluted: Theories or Facts?‘ 41 Hous. L. Rev. 713, 731–33 (2004).
66
See Intermatic, Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996).
67
See Lexington Management Corp. v. Lexington Capital Partners, 10 F. Supp. 2d 271 (S.D.N.Y. 1998).
68
See Wawa Dairy Farms v. Haaf, No. 96-4313, 1996 WL 460083, at *3 (E.D. Pa. Aug. 7, 1996) (―There is simply
no question that WAWA is a highly renowned, famous mark‖).
69
Barton Beebe, ‗A Defense of the New Federal Trademark Antidilution Law‘ Fordham Intell. Prop. Media & Ent
L.J. [Vol. 16:1143 at 1158 (2006).
70
id. See also TCPIP Holding Co. v. Haar Commc‘ns, Inc., 244 F.3d 88, 99 (2d Cir. 2001

16
The TDRA also launches new factors for courts to consider in determining whether a
mark possesses requisite degree of recognition or famous. First factor, the extent of
advertising of the mark; second, the extent of sales of goods offered under the mark;
third, the ―extent of actual recognition of the mark.‖ and fourth, whether the mark is
registered on the principal register.71 It is to be noted that it is not obligatory for the court
to consider these factors.

Thus, in short it can be said that, firstly, a mark must be famous as defined under the Act
and secondly, famous mark must be inherently distinct or acquire inherently
distinctiveness for obtaining protection under the Act.

iv. Relief granted under the Act


a) The legislation entitles the owner of a famous mark to injunctive relief against a
person who ―commences use of a mark or trade name in commerce that is likely to
cause dilution by blurring or dilution by tarnishment of the famous mark, regardless
of the presence or absence of actual or likely confusion, of competition, or of actual
economic injury.‖72
b) Some additional remedies are also granted under the statute. The owner of the famous
mark shall be entitled to injective relief as set forth in section 34 of Lanham Act,
1946. The owner of famous mark shall also be entitled to the remedies set forth in
sections 35(a) and 36 of Lanham Act, subject to the discretion of the court and the
principles of equity.
c) As to monetary relief, the TDRA allows recovery of profits, damages and costs, if the
defendant ―willfully intended to trade on the recognition of the famous mark,‖ or
―willfully intended to harm the reputation of the famous mark.73

v. Acts which do not constitute Dilution (Exclusions)


The statute expressly excludes some of acts from the ambit of dilution. To signal the
importance of protecting free speech, the Trademark Dilution Revision Act adds an
71
H.R. 683, 109th Cong. § 2 (2006) 15 U.S.C. § 1125(c)(2)(A)(i)–1125(c)(2)(A)(iv)).
72
Trademark Dilution Revision Act, H.R. 683, 109th Cong. § 2(c) (1) (2006).
73
Supra note 72 §1125(c) (5).

17
expanded fair-use provision. It specifically exempts purely nominative or descriptive uses
of another‘s mark, including in ―advertising or promotion that permits consumers to
compare goods or services‖ and in ―parodying, criticizing, or commenting upon‖ the
famous mark‘s owner or its goods and services. Moreover, to protect publishers and Web
search engines, the legislation also exempts the act of facilitating comparative advertising
and other fair uses. 74 All forms of news reporting and news commentary and any non-
commercial use of a mark are also excluded. 75

vi. State Anti-Dilution Law Claims Barred

Under TDRA there is a provision which directs that a federally registered mark is a
―complete bar‖ to any action that ―asserts any claim of actual or likely damage or harm to the
distinctiveness or reputation of a mark, label, or form of advertisement. 76

2.1.2 Criticism and Suggestion


i. It is mentioned under the TDRA that if mark is registered the court can consider it for
determination of famous mark. It is not justified that if mark is registered it is to be
considered as famous. Concerning the registration status of the mark, is arguably
irrelevant to the fame analysis. At best, it could weigh against a finding of fame on the
assumption that the plaintiff did not consider the mark to be of sufficient value to justify
registration. But the mere fact that a mark is registered cannot logically weigh in favor of
a finding that it is famous
ii. Under TDRA only two types of dilution are recognized that is by blurring and
tarnishment. The trademark practitioner and scholar Frank Schechter introduced to
American law the concept of trademark dilution, in which he stated that uniqueness of
mark should be the only rational basis for protection of a mark. But it is a very ironical
situation that dilution of uniqueness of mark is not recognized by TDRA. In Schechter‘s

74
H.R. 683, 109th Cong. § 2(c) (3) (A) (2006). See also David H. Bernstein, ―IP a Stronger Solution‖, first appeared
in the July 24, 2006, issue of Legal Times‘ IP. (www.legaltimes.com).
75
H.R. 683, 109th Cong. § 2(c) (3) (B, C) (2006).
76
Id. §1125(c) (6). See also Kurt M. Saunders, ‗Dilution Revisited: A First Look At The Trademark Dilution
Revision Act‘ Pennsylvania Bar Association Quarterly, p.76. (April 2007).

18
view, trademark uniqueness was worth protecting because it generated ―selling power.‖77
Even though it is not protected in his own country. It is pertinent to note that dilution of
uniqueness is practically a very easy concept. Uniqueness is an absolute concept, either a
mark is unique or not. If a senior mark is unique in the marketplace and a junior mark
appears that is identical to it, then the junior mark will destroy the senior mark‘s
uniqueness. Thus, the test for dilution was an essentially formal one. The judge need only
consider the identity or close similarity of the parties‘ marks. If they were identical or
closely-similar, then the loss of uniqueness could be presumed.78 Hence, it is suggested
that dilution of uniqueness is also be recognized by the TDRA.
iii. It is to be noted that court is granted discretion in considering the factors mentioned
under the Act for blurring and famousness, and it is not mandatory for the court to base
the determination of blurring and famousness on those relevant factors stated under the
Act. As it will invite the judges to decide arbitrarily. Hence, it is suggested that
consideration of relevant factors under the Act to be made mandatory for the courts. It is
mentioned under the Act that some other considerations can also be taken into account by
the court, it means that the list of factors is not exclusive and there is a much scope for
discretion, which will again create uncertainty as what other consideration may be for the
determination of blurring and famousness?
iv. There is a major loophole under the Act. For measurement of dilution by blurring there is
multifactor test i.e. factors are provided under the Act for proving blurring, whereas there
are no factors provided under the Act for proving dilution by tarnishment. Here again
court has the authority to measure it according to its discretion as no yardstick is given,
therefore we must be ready to have contradictory judgment of different courts as relating
to measurement of dilution by tarnishment. Here again the parties to the subject matter
may be victim of arbitrariness of courts. Hence, I am on the strong opinion that Act be
amended and specifically factors for measuring of dilution by tarnishment are given
under the Act and be made mandatory for the court to base it‘s measurement on those
factors only.

77
Frank I. Schechter, ‗The Rational Basis of Trademark Protection‘, 40 HARV. L. REV. 813, 830 (1927).
78
Baron Beebe, ‗A Defense of the New Federal Trademark Antidilution Law‘ Fordham Intell. Prop. Media & Ent.
L.J. [Vol. 16:1146

19
v. It would be better if term ‗reputation‘ used for the purpose of dilution by tarnishment, is
properly be defined under the Act thereby to prevent parties from the arbitrariness of the
court. There might be contradiction of meaning of ‗reputation‘ among different courts in
the absent of any such definition, which will again create doubt and TDRA also might
have the same fate as FTDA had.
vi. It is expected from the plaintiff that for relief under the Act for blurring or tarnishment
association must be shown between two marks. At the same time similarity between two
marks are also required to be shown for relief. Even if mark is similar with those of
plaintiff‘s famous mark, yet there is no relief is granted till the time association is not
shown. It is unnecessary requirement that has been added under the Act. When marks are
similar, why does plaintiff need to show the association? In the aftermath of Moseley,
some courts have concluded that if the parties‘ marks are identical, then blurring may be
presumed. 79 But this presumption is not recognized by the Act; hence provision of the
Act is inconsistent with the presumption. It is suggested that if plaintiff show the
similarity between two marks, it should be formally decided in the favour of plaintiff and
relief must be granted. As a judge may make this fairly arid finding without reference to
the marketplace. The requirement of ―association‖ is not a sensible thing, but only
wastage of time of the court and a judge has to give the judgment on the basis of
empirical analysis of marketplace itself. It will only take a lot of time, instead of the fact
that marks are similar, e.g. APPLE is associated with computers, while defendant use the
APPLE mark for banking services, it is clearly established that these marks are similar,
hence it would be more sensible thing if plaintiff is granted relief at that point of time and
do not go further for proving association. It is very vague thing proving mental
connection of marks in the minds of consumers through empirical analysis and also time
consuming. Hence, it is to be suggested that requirement of mental association must be
strike down from the TDRA, which will help in effective adjudication and delivery of
justice.

79
See, e.g., Savin Corp. v. Savin Group, 391 F.3d 439, 452 (2d Cir. 2004), cert. denied by Savin Eng‘rs, P.C. v.
Savin Corp., 126 S. Ct. 116 (2005) (―We interpret Moseley to mean that where a plaintiff who owns a famous
senior mark can show the commercial use of an identical junior mark, such a showing constitutes circumstantial
evidence of the actual-dilution element of an FTDA claim.‖);

20
vii. Difficulty may arise in the cases where marks are not similar in writing but similar in
connotation; hence it is to be suggested to address this issue under the Act.

2.2 POSITION IN UNITED KINGDOM


In order to have a unified law relating to Intellectual Property Rights in European Union,
member countries agreed on some fundamental rules dealing with IP including Trademark
regulation. Hence, The Trademark Harmonization Directive 80 was issued which provides a
system of trademark protections. Directives are generally binding as to the "result to be
achieved" but individual nations may choose the form in which those results will be
achieved.81Article 5(2) provides:
Any Member State may also provide that the proprietor shall be entitled to prevent all third
parties not having his consent from using in the course of trade any sign which is identical
with, or similar to, the trade mark in relation to goods or services which are not similar to
those for which the trade mark is registered, where the latter has a reputation in the Member
State and where use of that sign with out due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the trade mark. 82

It can easily be inferred by reading Article 5(2) that this Article has no binding force on member
countries as to effect into statute, yet most of the member countries have adopted this Article and
given protection, in a manner which most suited to them. 83

The most important response came from United Kingdom, which has enacted a statute in 1994
for the implementation of Trademark Harmonization Directive. 84 Therefore, Trade Mark Act,
1994 came into existence.

80
First Council Directive 89/104, 1989 O.J. (L 40) 1 (EEC) [hereinafter Trademark Harmonization Directive].
81
See Consolidated Version of the Treaty Establishing the European Community, Dec. 24, 2002, 2002 O.J. (C 325)
33, 132 ("A directive shall be binding, as to the result to be achieved... but shall leave to the national authorities
the choice of form and methods.").
82
Trademark Harmonization Directive, supra note 73, art. 5(2).
83
See also David S. Welkowitz, ‗Trademark Dilution: Federal, State, and International Law‘ 17-21 (2002) at 439.
("As its language indicates, it was not mandatory that countries adopt this provision.., but it has been widely
implemented.").
84
Trade Marks Act, 1994, c. 26 (U.K.),For online version you may refer
http://www.opsi.gov.uk/acts/acts1994/ukpga_19940026_en_1.htm.

21
2.2.1 Provisions dealing with Dilution under the Act
The vigorous protections for trademark dilution are granted to marks in Section 10(3) of the Act,
which specifically protects registered trademarks and prohibits use of the mark
in relation to goods or services which are not similar to those for which the trade mark is
registered, where the trade mark has a reputation in the United Kingdom and the use of the
sign... takes unfair advantage of, or is detrimental to, the distinctive character or the repute of
the trademark.'85
Now, it is a turn to describe the provisions dealing with dilution mentioned under section
10(3) according to below stated head.

i. Standard for protection


Under section 10(3)86 no standard is determined for the protection of mark. Unlike other
sections of the Act, a claim under Section 10(3) does not require proof of confusion. For
investigating about the standard of protection we might look towards European Union
Directives, 87 as UK law came into existence because of the EU directives and almost
similar, but that also cannot help us as nothing is expressly written relating to standard of
protection. Article 5(2) of the Directive, as incorporated into the national legislation of
the most of EU Member States, makes possible for an owner of a trademark to take
action for ―a reputation‖ to prevent anyone from using identical or similar marks in a
manner that ―takes unfair advantage of, or is detrimental to, the distinctive character or
the repute of the trade mark.‖88 There is no such express ruling by European Court of
Justice (ECJ) which deals with the subject, whether anti-dilution plaintiffs must show
actual, as opposed to likely, detriment or unfair advantage in either infringement cases or

85
Supra note 77, § 10(3)(b).
86
Section 10 (3) A person infringes a registered trade mark if he uses in the course of trade a sign which— (a) is
identical with or similar to the trade mark, and (b) is used in relation to goods or services which are not similar to
those for which the trade mark is registered, where the trade mark has a reputation in the United Kingdom and the
use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or
the repute of the trade mark.
87
Supra note 73
88
Id., Art. 5(2).

22
registration challenges. 89 However, Advocate General Jacobs considered the issue in
General Motors, noting that: . . . Article 5(2), in contrast to Article 5(1) (b), does not
refer to a mere risk or likelihood of its conditions being fulfilled. The wording is more
positive: „takes unfair advantage of, or is detrimental to (emphasis added). . . [T]he
national court must be satisfied of evidence of actual detriment, or of unfair advantage. 90

It is pertinent to note that the analysis made by Advocate General Jacobs, was neither
accepted, nor rejected by the ECJ explicitly, indeed, by speaking of detriment and unfair
advantage without mentioning likelihood91 the ECJ appears to have tacitly accepted that
actual unfair advantage or detriment is required for infringement under Art. 5(2) of the
Directive.92 In its most recent case on Art. 5(2), the ECJ similarly refrained from using
the language of likely harm, requiring instead that the later sign should ―have the effect
that the relevant section of the public establishes a link between the sign and the mark.‖ 93

It is to be noted that ECJ did not state expressly about the issue of actual detriment or
likelihood of detriment, but there is an implied view of the ECJ in establishing the ‗actual
detriment‘ is standard of protection, that can be inferred from the General Motors case.
The difficulty might arise in proving actual detriment, as there is no express authority by

89
see Ilanah Simon, ‗The Actual Dilution Requirement In The United States, United Kingdom And European
Union: A Comparative Analysis‘ Boston University Journal of Science & Technology Law, Vol. 12, p. 271, 2006
at 294, Last revised: July 26, 2008.
90
Case C-375/97, General Motors Corp. v. Yplon, S.A., [1999] E.C.R. I-5421, [1999] E.T.M.R. 122, ¶ 43. See also
infra note 148 and accompanying text. Article 5(1)(b) enables the owner of a registered trade mark to prevent
anyone from using: any sign where, because of its identity with, or similarity to, the trade mark and the identity or
similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion
on the part of the public, which includes the likelihood of association between the sign and the trade mark.
Directive 89/104, supra note 141, art. 5(1)(b) (emphasis added). See also supra note 82.
91
See Case C-375/97, General Motors Corp. v. Yplon, S.A., [1999] E.C.R. I-5421, [1999] E.T.M.R. 950, ¶ 31 (―If . .
. the national court decides that the condition as to the existence of a reputation is fulfilled, . . . it must then go on
to examine the second condition laid down in Article 5(2) of the Directive, which is that the earlier trade mark
must be detrimentally affected without due cause. .‖), available at
http://oami.europa.eu/en/mark/aspects/pdf/JJ970375.pdf.
See also supra note 82 at 295.
92
See MasterCard Int‘l, Inc. v. Hitachi Credit (U.K.), [2004] E.W.H.C. 1623, ¶ 48 (Ch.) (taking a similar approach).
See also supra note 82 at 295.
93
Case C-408/01, Adidas-Salomon AG v. Fitness world Trading Ltd., [2003] E.C.R. I- 12537, [2004] E.T.M.R. 10,
at 31, available at http://oami.europa.eu/en/mark/aspects/pdf/JJ010408.pdf. See also supra note 82 at 295.

23
the ECJ, as to how to show actual detriment. The only guidance as to how ―actual
detriment‖ can be shown comes from the Advocate General in General Motors:
. . . [T]he taking of unfair advantage or the suffering of detriment must be properly
substantiated, that is to say, properly established to the satisfaction of the national court:
the national court must be satisfied by evidence of actual detriment, or of unfair
advantage. The precise method of adducing such proof should in my view be a matter for
national rules of evidence and procedure, as in the case of establishing likelihood of
confusion: see the tenth recital of the preamble. 94

As, actual detriment or likelihood, it is not clarified under the section, hence here court
has the discretion to interpret in a proper manner with keeping in the mind the intent of
legislature. It seems that analysis of Advocate General, Jacob in General Motors case95
has influenced a lot to the UK courts. It would be appropriate to mention here that in
2001, looking into the matter of infringement of MERC;96 Justice Pumfrey considered the
issue of actual confusion. The case relating infringement under section 10(3)97 came to
the court, wherein Justice Pumfrey stated;
‗In my view, the best approach is just to follow the section, remembering Jacobs
AG‘s warning that it is concerned with actual effects, not risks or likelihoods.‘98
He further stated that;
‗ . . . it is not sufficient to see the word MERC, note that this is the word which one
uses to refer to Mercedes cars, see the disagreeable web-site and register it as
disagreeable, if nothing actually rubs off on the sign MERC itself or on MERCEDES,
or on DaimlerChrysler.‘99

94
Case C-375/97, General Motors Corp. v. Yplon, S.A., [1999] E.C.R. I-5421, [1999] E.T.M.R. 122, ¶ 43 (citing
Directive 89/104, (―. . . this Directive does not exclude the application to trade marks of provisions of law of the
Member States other than trade mark law, such as the provisions relating to unfair competition, civil liability or
consumer protection.‖). See also supra note 82 at 295.
95
See supra note 83, 84 and 87 and accompanying text.
96
DaimlerChrysler AG v. Alavi (MERC), [2001] R.P.C. 42, [2001] E.T.M.R. 98 (Ch.), available at
http://www.hmcourts service.gov.uk/judgments files/j420/ chancery_daimlerchrysler.htm.
97
Supra note 79.
98
MERC, [2001] R.P.C. 42, [2001] E.T.M.R. 98, 92
99
id.

24
It is to be noted that, if we carefully read above mentioned statement of Justice Pumfrey
it is very clear that he was confirming the actual unfair advantages or detriment. But he
did not speak much about how to prove actual detriment.

There was one case decided by UK court in 1997 where ‗likelihood of confusion‘ was
recognized as standard of protection under section 10(3) of Trade Marks Act, 1994. The
facts of the case are as follows;
Baywatch Prod. Co. Ltd. v. Home Video Channel100 pitted the popular U.S. television
series101 that features male and female lifeguards usually wearing red bathing suits
against the Adult Channel, which broadcast episodes of a pornographic film series,
entitled "Babewatch." Like Baywatch, Babewatch featured lifeguards wearing red
bathing suits.102 Instead of saving drowning victims, however, these "lifeguards" engaged
in sexual acts.103 Seeking a preliminary injunction against the Adult Film Channel,
Baywatch asserted actions under section 10(2) and 10(3) of the Trade Marks Act as well
as a passing off claim. 104 While section 10(2) requires a showing of a "likelihood of
confusion," 10(3) does not have such a requirement.105 Baywatch admitted that
consumers would not be confused between the television series and the pornographic
film. 106In determining Baywatch's claim under 10(3), the Chancery Division held that it
would be illogical to grant greater protection to famous marks with regards to non-similar
goods or services. 107 Despite the wording of the statute, the judge found that since the
television show and the pornographic video are not similar goods, they will not cause
confusion of source and, therefore, the plaintiff has no claim under section 10(3).108 It is
not clear under Baywatch if the Chancery Division would distinguish between sections
10(2) and 10(3) or if they would provide any greater protections to well-known marks.

100
Baywatch Prod. Co. Ltd. v. Home Video Channel [1997] F.S.R. 22. See also Keola R. Whittaker, Trademark
Dilution in A Global Age, [Vol. 27:3 U. Pa. J. Int'l Econ. L. 907, 931. (2006)
101
For an example of a typical Baywatch episode see Baywatch: Search and Rescue, (Jan. 13, 1997).
102
Baywatch, [1997] F.S.R. at 24.
103
id
104
See id. at 26.
105
Trade Marks Act, 1994
106
Baywatch, [1997] F.S.R. at 27.
107
Id. at 29.
108
id

25
It is significant to note that in a subsequent case ECJ has clarified that requirement of
confusion cannot be standard of protection under Article 5(2) of EU Directive
89/104.109Hence, it was held that UK court was wrong to require confusion u/s 10(3).110

Keola R. Whittaker111 in his Article critically states that unlike other sections of the Act,
a claim under Section 10(3) does not require proof of confusion. Interpretations of the
statute, like interpretations of similar statutes in the United States and Japan, have
confused the distinction between trademark dilution and other trademark claims and have
required a showing of confusion for claims under 10(3).

Finally, it can be said that under UK law standard of protection is not a likelihood of
confusion but an actual detriment or unfair advantages; it is also true that, requirement of
actual detriment is not explicitly mentioned under the Act, nor in any Judgment of the
Court, but impliedly court has recognized it and by reading of section presumption goes
in favour of actual detriment.

ii. Types of Dilution Recognized under the Act


Expressly, under the Act nothing of such type is recognized. But, if we analysis the
language of the section, it can be easily inferred that two types of dilution are recognized
under the Act. In US under TDRA, blurring and tarnishment are clearly defined, hence
there is no scope of doubt, although in UK these types are not expressly recognized and
defined.

If we go by the definition of blurring 112 and tarnishment113 under TDRA, it can be said
that dilution by blurring and tarnishment are also incorporated under the Trade Marks

109
Supra note 73, 75.
110
Case C-408/01, Adidas-Salomon AG v. Fitness world Trading Ltd., [2003] E.C.R. I- 12537, [2004] E.T.M.R. 10,
29, available at http://oami.europa.eu/en/mark/aspects/ pdf/JJ010408.pdf.
111
Keola R. Whittaker, ‗Trademark Dilution in A Global Age‘, [Vol. 27:3 U. Pa. J. Int'l Econ. L. 930. (2006).
112
Supra note 58 Dilution by blurring‖ is association arising from the similarity between a mark or trade name and a
famous mark that impairs the distinctiveness of the famous mark.
113
Supra note 60 Dilution by tarnishment is association arising from the similarity between a mark or trade name
and a famous mark that harms the reputation of the famous mark.

26
Act, 1994. By carefully reading of the last part of section 10(3), we reach on the
conclusion that even in UK law two types of dilution are recognized. Under section 10(3)
it is clearly written that;

……..Where the trade mark has a reputation in the United Kingdom and the use of the
sign, being without due cause, takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the trade mark.

It is pertinent to note that the last line of the section states that ‗detrimental to distinctive
character or the repute of the character‘. Here, detrimental to distinctive character can be
named as blurring, as blurring defined under TDRA also aims to protect the
distinctiveness of famous mark, and where the distinctiveness of famous mark is
impaired by any person, it shall be considered as dilution by blurring, and shall be
accordingly tried. In the same manner under the UK law u/s. 10(3) distinctiveness of
reputated mark is protected. Word used under the section is ‗detrimental to distinctive
character‘ of trade mark, by defendant shall be considered as infringement of mark, and
shall accordingly be tried. Thus, even though it is not explicitly mentioned under the Act,
but that m akes no difference as inference can be drawn that ‗detrimental to distinctive
character‘ refers to blurring.

Tarnishment according to TDRA means harming the reputation of famous mark by way
of association which arises from the similarity between mark or trade name and famous
mark. The second part of last line of section 10(3) is very important in this regard, which
uses the term ‗detrimental to the repute of the mark‘, to the reputated mark is
infringement of trademark. Hence, now it is crystal clear that dilution of tarnishment has
also been impliedly recognized by UK law of Trademarks u/s 10(3). Thus, inference can
be drawn that ‗detrimental to the repute‘ of the mark, refers to dilution by tarnishment.

In last line of section 10(3), one more term is used that is ‗takes unfair advantage‘ 114 of
trademark. Till the time this term is not interpreted in a different manner, it does not

114
Kindly read whole section, supra note 79.

27
come under any types of dilution, be it, dilution of uniqueness, or blurring or tarnishment.
However, if we interpret it carefully, it would speak the same thing. It has to be
understood that anyone who dilutes the mark, is always takes unfair advantage, and that
is disadvantageous to the owner of reputated trademark.

iii. Criterion for protection


Criterion of protection is clearly stated under the section 10(3).115 Statute in UK specify
that dilution of a registered trade mark must has a ‗reputation‘ in the United Kingdom for
claiming infringement by another trader even when the use is for dissimilar goods or
services. Thus, reputation of trade mark is the basis for claiming infringement protection.
It is clearly stated that reputation must be in United Kingdom, and reputation outside the
UK is immaterial and shall have no protection.

iv. General Essentials- Infringement under section 10(3)


i) There must be a registered trademark
ii) A person must use a sign
iii) Sign must be in the course of trade
iv) That sign must be similar or identical to the trademark
v) That identical or similar sign must be used to dissimilar goods or services for
which trademark is registered
vi) That a registered trademark must have reputation
vii) That a registered trademark must have a reputation in United Kingdom
viii) That there must be use of sign without due cause
ix) That by using sign a person takes unfair advantages of registered trademark; or
x) That use of the sign is detrimental to the distinctive character of the registered
trademark; or
xi) That use of the sign is detrimental to the repute of a registered trademark.

115
Supra note 79.

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2.2.2 Criticism and Suggestion
i. The section dealing with dilution law is not clear, and creates confusion in the
minds of people, and not properly understandable, hence, it is suggested that
section be amended and made it unambiguous.
ii. There is a very much confusion relating to standard of protection, whether
standard of protection is actual dilution or confusion, as it is not at all mentioned
under the section. Thus, it is suggested that necessary amendment be made and
remove the confusion prevailing under this section.
iii. Criterion of protection stated under the section is reputation of registered
trademark in United Kingdom, however, there is no criterion has been set as to
how to find out whether a trademark has reputation in United Kingdom or not.
Hence, it is recommended that factors for determination of reputation of mark, are
added under the section.
iv. Impliedly, two types of dilution are recognized under the section, therefore it is
recommended that express recognition is to be granted and properly define all the
terms.

2.3 A COMPARATIVE ANALYSIS


As laws relating to doctrine of dilution of United States and United Kingdom have been
described above in detail, now it is turn to comparative analysis of these legislations. Here again,
it would be more clear if comparative analysis is done under the headings, under which the
provisions of the legislation of both the country were discussed.

i. Standard of protection
Standard of protection under UK law of dilution is not explicitly mentioned, but inference
drawn goes in favour of actual dilution or actual unfair advantages or actual detrimental.
While on the other side under US law of dilution ‗likelihood of harm‘ is expressly made
the standard of protection. My analysis on this specific topic is that ‗likelihood of harm‘
under US law of dilution is more useful, practical, reasonable, fair, and judicious and
protects the interest of trademark owner in a manner, which is most appropriate. The
basic concept of dilution is that it must protect the distinctiveness of trademark, if there is

29
likelihood of harm to the distinctiveness, then court should not wait for the actual dilution
to be happened and must grant injunction, as it will in real sense guard the distinctive
mark from being impaired and thus it is suggested that UK law of dilution must take the
likelihood of harm requirement as standard of protection from US law of dilution.

ii. Criterion for protection


It is already discussed that criterion of protection under US law of dilution is famousness
and for determining famousness some factors are also provided under the Act. It means a
mark must be famous in the US, while on the other side reputation of mark in UK, is
made the criterion for protection under UK law of dilution. In this respect it can be said
the US law is clear and unambiguous but it is not so with UK law of dilution, even
though UK law of dilution is not clear but then also it does not make any substantial
difference, as both the terms almost have the similar effect in practical situation.

iii. General Analysis


The US law of dilution (TDRA), is more developed, and almost touched each and every
point, and it can be said that it is a comprehensive Act, but on the other side in UK law of
dilution that is contained under section 10(3) of Trade Marks Act, 1994, is not all-
inclusive and many provision which would have been relevant has not been touched.

iv. Exclusions
TDRA explicitly excludes some of acts from the ambit of dilution. It specifically exempts
purely nominative or descriptive uses of another‘s mark, including in ―advertising or
promotion that permits consumers to compare goods or services‖ and in ―parodying,
criticizing, or commenting upon‖ the famous mark‘s owner or its goods and services, etc.
But under TMA, 1994, no such types of exclusion are made very clear, but only term
used is ‗without due cause‘, hence it can be taken as exclusion, if any sign is with due
cause, it can be exempted, but it is vague term and needs to be explained in a proper way.
In this aspect also it does not match with the US law of dilution.

30
2.4 CONCLUSION
Finally, by concluding, I would say that neither US, nor UK has adopted regulation in a way it
was intended by Schechter. It is evolved gradually and now it is the part of the most of the
countries. By analyzing the legislation of US and UK, it could be concluded that both the
countries are very serious about the protection of distinctiveness of mark. There is always a
scope for improvement and therefore above mentioned suggestion if included under the
legislation of respective country, which can definitely make laws more effective and appropriate.
There are some similarities and dissimilarities between the US and UK, relating to law of
dilution.

I have a strong opinion that if TDRA is amended as recommended, then it can be more effective
and after that any country wants to adopt an effective law, TDRA would be better guide to those
countries. I also feel that UK law of dilution is not very comprehensible; hence UK should look
towards US law for amendment under the law of dilution under respective sections.

BIBLIOGRAPHY

ACTS
Lanham Act, 1946
UK Trademark Act, 1994
Trademark Dilution Revision Act, 2006
Indian Trademarks Act, 1999

ARTICLES AND BOOKS


Alexander, Miles J., Davis, Theodore H. and Estrin, Lauren T., ‗The Historic Foundation
of Dilution Doctrine in Trademark Law‘, World Extra, (May 2008)
Beebe, Barton, ‗A Defense of the New Federal Trademark Antidilution Law‘ Fordham
Intell. Prop. Edia & Ent. L.J. [Vol. 16:1143]
Bhaskar, Brajendu, ‘Trademark Dilution Doctrine: The Scenario Post TDRA, 2005‘, 1
NUJS L. Rev. (2008)

31
Gangjee, Dev, ‗The Polymorphism of Trademark Dilution in India‘, 17 Transnat‘l L. &
Contemp. Probs. 601 (2008)
Klerman, Daniel, ‗Trademark Dilution, Search Costs, and Naked Licnnsing‘, 74 Fordham
L. Rev. 1759, 1762 (2006)
Kerdel, Sabine Casparie, ‗Dilution Disguised: Has the Concept of Trade Mark Dilution
Made Its Way into The Laws Of Europe‘ E.I.P.R. 23(4), 185-195 (2001)
Middleton, George E., Some Reflections on Dilution, 42 Trademark Rep 175-176 (1952)
McCarthy, J. Thomas, ‗Proving a Trademark Has Been Diluted: Theories or Facts?‘ 41
Hous. L. Rev. 713, 731–33 (2004)
Prager, Eric A., ―The Federal Trademark Dilution Act of 1995: Substantial Likelihood of
Confusion,‖ 7 FORDHAM INTELL. PROP. Media & Ent. L.J.
Rose, Seth Aaron, ‗Towards a Solution for Dilution: Likelihood Instead of Actual Harm‘
Ohio State Law Journal [Vol. 62: 1869 (2001)]
Simon, Ilanah, ‗The Actual Dilution Requirement In The United States, United Kingdom
And European Union: A Comparative Analysis‘ Boston University Journal of Science &
Technology Law, Vol. 12, p. 271, 2006
Schechter, Frank I., ―The Rational Basis of Trademark Protection,‘ 40 HARV. L. REV.
813, 825 (1927)
Scheinfeld, Robert C. And Bagley, Parker H., ‗Trademark Dilution Act: An Evolutionary
Shift In Focu‘s New York Law Journal Volume 236—No. 99 Wednesday, (November
22, 2006)
Tushnet, Rebecca, ‗Gone In Sixty Milliseconds: Trademark Law And Cognitive Science'
, 86 Tex. L. Rev. 507. Feb. (2008)
Whittaker, Keola R., ‗Trademark Dilution in A Global Age‘, [Vol. 27:3 U. Pa. J. Int'l
Econ. L. 930. (2006)
Welkowitz, David S., ‗Trademark Dilution: Federal, State, and International Law‘ 17-21
(2002)

Mccarthy, J. Thomos, ‗Mccarthy On Trademark And Unfair Competition‘ $$23:8, 24:6


(4th Ed.2007)

32
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