chapter  21
12 Pages

Trade mark dilution before and after Section 29(4) of the Indian Trade Marks Act

WithRenuka Medury

The Delhi High court stated that fame for the purposes of “dilution” of trademarks must extend to the entire country, “This is a rigorous standard, as it extends protection only to highly distinctive marks that are well-known throughout the country.” The statutory concept of “dilution” under the trademarks law of India did not exist under the Trade and Merchandise Marks Act, 1958, and was introduced in Section 29 of the Trade Marks Act, 1999. While the instant case was decided under the Trade and Merchandise Marks Act, 1958, it will be interesting to see the approach adopted by the Indian courts for determining the fame requirements under Section 29 of the Act. The Supreme Court discussed various cases which alluded to the absence of a commonality in the goods and services offered by the parties. The cases were decided under the overarching principle of passing off with an emphasis on dilution, i.e., erosion of the distinctive value of the mark.