The Delhi High Court today dismissed an application by ITC Ltd for grant of an injunction against the use of a device mark by Philip Morris in relation to its Marlboro brand of cigarettes in India. The trademark action filed by ITC was based on the registration and use of its “wellknown” W-namaste logo. It was ITC’s contention that the said logo had become a famous mark and ITC was therefore entitled to seek injunction for its protection against an attempt by anyone else to associate that trademark with their goods or services.
ITC’s arguments were confined to Section 29 (4) of the Trade Marks Act, 1999, as it admitted the said mark had never been used in relation to its cigarettes, being limited to a particular class of hospitality services and food products.
Anuradha Salhotra, managing partner at Lall Lahiri &Salhotra, a law firm specialising in intellectual property (IP) issues, which represented Philip Morris in the matter, said: “The court, after carefully examining the law related to dilution of trademarks in the USA, UK, Canada and the European Union, held that the 1999 Act has enjoined protection against dilution only if some of the essential elements are established.” And, that these had not been established by ITC.
These essential elements being: the impugned mark must be similar to the senior mark; the senior or injured mark must have a reputation in India; the use of the impugned mark must be without due cause; the use (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark.
“As the law does not provide for a presumption of infringement in the case of dilution of trademark, each of these elements has to be established before an injunction can be granted on this ground,” said Salhotra.
The court also felt the test of similarity of marks viz dilution was a notch higher than the test of similarity required under Section 29 (1) & (2). To sustain an action under Section 29(4), there must be a near-identification of the two marks. The court held that in deciding the question of similarity of the two marks in a dilution action, focus must be on the “global” look rather than on the common elements of the two marks.
ITC’s arguments were confined to Section 29 (4) of the Trade Marks Act, 1999, as it admitted the said mark had never been used in relation to its cigarettes