Trademark dilution: The blurry arena

Trademark dilution: The blurry arena!

Introduction

Brand identity is the visual representation of a brand, like a logo, colors, and other designs, which distinguish the brand from competitors in the minds of consumers. One significant legal concern that brand owners need to be aware of is trademark dilution. Trademark dilution occurs when a famous or well-known trademark's distinctiveness and reputation are weakened by the unauthorized use of a similar mark on unrelated goods or services. This dilution can lead to confusion among consumers and diminish the value of the original mark.

How Does Dilution of Trademarks Happen?

 

• Blurring of trademark: Blurring happens when the distinctiveness of a famous mark is weakened by the unauthorized use of a similar mark on unrelated products or services. For example, if a well-known soft-drink brand's name is used to market a completely different product like clothing or electronics, it can dilute the strength of the original mark.
• Tarnishment: Tarnishment occurs when a mark with a positive reputation is used in connection with inferior or unsavory products or services, thereby harming the reputation of the original mark. For instance, if a famous luxury brand's name is associated with low-quality or illicit goods, it tarnishes the brand's image and reputation.

 

The Distinction between Trademark Dilution and Trademark Infringement

Trademark infringement and dilution both serve as a mechanism to protect a brand identity. Here are some of the key differences:

1. Likelihood of confusion: Trademark infringement occurs when there is likelihood of confusion between goods and services whereas dilution occurs even if there is no confusion or direct competition between the goods or services.
2. Legal remedies: In infringement cases, the trademark owner can seek both injunctive relief and monetary damages. In dilution cases, the focus is often on injunctive relief, although damages may be awarded in instances of willful activity.

Exceptions to Trademark Dilution

There are certain conditions under which the infringing mark shall not be actionable as dilution. This covers circumstances in which the mark is applied for parody, criticism, news reporting, commentary, entertainment, and education.

The following shall not be actionable as dilution:

Any authorized third-party use of a well-known mark, other than as a means of identifying the source of the third party's own goods or services including use in connection with-

• Comparison of goods and services by customers through the means of advertising or promotion.
• Identifying or criticizing or commenting over the mark of the famous goods and services.
• News reporting and news commentating done in any form.
• Any mark which includes any parodies or any remark.

 

In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, the defendant produced dog clothes under the brand name "Chewy Vuitton," a spoof of the plaintiff's well-known "Louis Vuitton" clothing line. This case exploited the exception of parodies. The court determined that since "Chewy Vuitton" was only a parody of "Louis Vuitton," it didn't affect the trademark.

 

Conclusion

According to Section 29(4) of the Trademarks Act, 1999, trademark dilution is regarded as a type of infringement. Well-known trademarks lose their distinctiveness due to dilution, which hinders their ability to win over new customers and retain existing ones. The concept of dilution is based on the authority of the courts and the conditions laid down by them. To prevent confusion, if a trademark fails to pass court standards, it is not authorized to market in the marketplace.