The Polymorphism of Trademark Dilution in India

Abstract

This article begins with a puzzle. Statutory provisions relating to trademark dilution were introduced for the first time into Indian law with the Trade Mark Act of 1999, which came into effect in 2003. 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. It thus exists in both favoured and relatively ignored forms. In Part II, this Article offers an explanation for why this polymorphism for dilution exists in India. Under passing off, dilution is a newly recognised species of harm, which flows from a misrepresentation. It is not the basis for an independent cause of action. Its recognition can be traced to prior doctrinal developments within the Indian law of passing off, concerning the abolition of the common field of activity requirement and the sufficiency of a transborder or 'spillover' reputation. Dilution is thus qualified as a new type of injury within a familiar tort geared towards preventing consumer confusion. However under the Act of 1999, dilution, in its aspect of blurring or 'detriment to distinctive character', is the basis for an independent action. This article suggests that the statutory provisions require a more narrowly defined harm in order to be triggered and differ in important ways from dilution under passing off, making precedents for the latter unsuitable for the former. Part III concludes by selectively considering the extent to which E.U. and U.S. experiences with dilution could meaningfully inform the future development of the Indian statutory regime.

Keywords: trademark, dilution, India, intellectual property