24 Jan 2010

Dilution of Trademark: The concept understood

In a recent decision the Delhi High Court, tracing the origin and expansion of the concept of 'Dilution of Trademark' has explained in no uncertain terms the meaning and ambit of the expression as understood in the Indian context. Taking note of the internationally understood meaning of the expression 'Dilution of Trademark', the High Court proficiently explained the concept in the following terms;

32. The concept of dilution was first thought of by Frank I Scheckter, in “The Rational Basis of Trade Mark Protection" [1927] 40 Harvard Law Review 813. Judge Learned Hand‟s famous opinion in Yale Electric Corp. v. Robertson, 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 states, inter alia, that:
"[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 recognized 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."
33. The old law in India, i.e the Trade and Merchandise Marks Act, 1958, did not provision for trademark dilution, as in the case of Section 29 (4). The principle of dilution therefore, was developed by our courts, having regard to internationally recognized standards about the need to protect generally well known trademarks, whose exploitation, without any good cause in relation to diverse and dissimilar products or services could injure and “dilute” its appeal. Thus, in Daimler Benzaktiegesellschaft & Anr. v. Eagle Flask Industries Ltd., ILR (1995) 2 Del 817 this court held that:
14. There are marks which are different from other marks. There are names and marks which have become household words. Mercedes as name of a Car would be known to every family that has ever used a quality car. The name 'Mercedes' as applied to a car, has a unique place is the world. There is hardly one who is conscious of existence of the cars/ automobiles, who would not recognize the name  'Mercedes' used in connection with cars. Nobody can plead in India, where 'Mercedes' cars are seen on roads, where 'Mercedes' have collaborated with TATAs, where there are Mercedes Benz—Tata trucks have been on roads in very large number, (known as Mercedes Benz Trucks, so long as the collaboration was there), who can plead that he is unaware of the word 'Mercedes' as used with reference to car or trucks.
15. In my view, the Trade Mark law is not intended to protect a person who deliberately, sets out to take the benefit of somebody else‘s reputation with reference to goods, especially so when the reputation extends worldwide. By no stretch of imagination can it be said that use for any length of time of the name 'Mercedes' should be not, objected to.
16. We must keep in mind that the plaintiff company exists in Germany. An insignificant use by too small a product may not justify spending large amounts needed in litigation. It may not be worthwhile.
17. However, if despite legal notice, any one big or small, continues to carry the illegitimate use of a significant world wide renowned name/mark as is being done in this case despite notice dated 04-07-1990, there cannot be any reason for not stopping the use of a world reputed name. None should be continued to be allowed to use a world famed name to goods which have no connection with the type of goods which have generated the world wide reputation.
18. In the instant case, 'Mercedes' is a name given to a very high priced and extremely well engineered product. In my view, the defendant cannot dilute that by user of the name Mercedes with respect to a product like a thermos or a casserole.'
The observations have been assimilated in case law, by the courts in India, and applied, wherever trademark dilution was alleged (Ref Larsen & Toubro Limited v. Lachmi Narain Traders, ILR (2008) 2 Del 687, Sunder Parmanand Lalwani and Ors. v. Caltex (India) Ltd., AIR 1969 Bom 24; Bata India Ltd. v. M/s. Pyare Lal & Co. Meerut City and Ors. AIR 1985 All 242; Kiriloskar Diesel Recon (P) Ltd. v. Kirloskar Proprietary Ltd., AIR 1996 Bom 149)
34. The Act, as existing is not explicit about dilution- it does not refer to that term. Yet, the entire structure of Section 29(4) is different from the earlier part, and in effect expresses Parliamentary intent about the standards required for a plaintiff to establish dilution of its trademark, in relation to dissimilar goods or products. This is because:
(1) The “likelihood of Confusion” test which is the essential basis of Trademark law, is not incorporated in relation to infringement of the kind Section 29(4) envisions. Section 29(1) – which talks of trademark infringement, generally, prescribes that the impugned mark should be “identical with, or deceptively similar to‖ the registered trademark. Section 29 (2), (which deals with trademark infringement) enacts that the impugned mark should be similar or identical with the registered mark, as to cause confusion in relation to similar goods. The emphasis on similar goods is the recurring theme in each of the sub clauses ((a), (b) and (c)) and the identity/ similarity requirement along with the similarity of goods are twin, conditions (established by the use of the conjunctive “and”). However, Section 29 (4) posits identity or similarity of the mark alone but, in relation to dissimilar goods.
(2) The object of the “dilution” form of infringement (under Section 29(4)) in effect, is a wider trademark protection without the concomitant likelihood of confusion requirement, as it is in respect of dissimilar or unrelated products and services.
(3) The confusion requirements under Section 28 are different from those under Section 29 (4). Section 29 (4) does not refer to the need for proving confusion anywhere in the relevant portions. Obviously the emphasis here is different.
(4) The plaintiff has to establish, under Section 29 (4) apart from the similarity of the two marks (or their identity) that his (or its) mark –
(i) has a reputation in India;
(ii) the use of the mark without due cause
(iii) the use (amounts to) taking unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.
(5) Importantly, there is no presumption about trademark infringement, even if identity of the two marks is established, under Section 29 (4). In contrast, Section 29 (3) read with Section 29 (2) (c) enact that if it is established that the impugned mark‟s identity with the registered trade mark and the identity of the goods on services covered by such registered trade mark is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark, ―the court shall presume that it is likely to cause confusion on the part of the public."
35. There has been considerable debate about the precise contours of trademark dilution standards, in the context of unfair competition, in courts in the United States, the European Court and courts in the United Kingdom. US courts had split on whether the owners of famous marks had to prove “actual” dilution, or a “likelihood” of dilution. In 2003, the US Supreme Court resolved the split in Moseley v. V. Secret Catalogue, Inc., 537 U.S. 418 (2003), holding that proof of actual dilution was required. Speaking to concerns about the expense of “often unreliable” consumer surveys and other means of demonstrating actual dilution, the Court held that such direct evidence ―will not be necessary if actual dilution can reliably be proved through circumstantial evidence." There was Congressional intervention soon thereafter, which somewhat blunted the court‟s holding. The court noted that dilution was largely a statute driven concept, unlike common law evolved reliefs:
"Unlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers. The seminal discussion of dilution is found in Frank Schechter's 1927 law review article concluding ''that the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection.'' Rational Basis of Trademark Protection, 40 Harv. L.Rev. 813, 831."
36. An anti-dilution remedy is contemplated by Articles 4 and 5 of the First Council Directive of the European Communities (89/104/EEC) dated December 21, 1988; it was implemented, for the European Union through Council Regulation (EC) No. 40/94 dated December 20, 1993. It is known as an “anti-detriment” remedy in the United Kingdom and is enacted in Sections 5 and 10 of the Trade Marks Act 1994 (U.K.), 1994. The courts in the United Kingdom have been cautious in granting this remedy, as seen in Mastercard International Inc. v. Hitachi Credit (UK) Plc, [2004] EWHC 1623 (Ch.) (confirming the dismissal of Mastercard‟s opposition to the trademark Credit Master for a credit card); Pebble Beach Co. v. Lombard Brands Ltd., [2002] S.L.T. 1312 (refusing to grant a preliminary injunction against whisky makers using the trademark “Pebble Beach” when the owners of the famous American golf course claimed these marks were detrimental to their own); DaimlerChrysler AG v. Alavi, [2001] R.P.C. 42, (where the court rejected the claim of Mercedes-Benz against the defendant‟s MERC trade mark, used in association with a clothing and shoe business), and Baywatch Production Co. v. Home Video Channel, [1997] F.S.R. 22 (Ch.) (where the court found that the broadcasting of “Babewatch”, which contained sexually explicit material, was not detrimental to the “Baywatch” trade mark). It was held, in DaimlerChrysler AG –v- Alavi [2001] RPC 42 that::-
"88. In my view, the best approach is just to follow the section, remembering Jacobs A.G.'s warning that it is concerned with actual effects, not risks or likelihoods. The enquiry is as follows. (1) Does the proprietor's mark have a reputation? If so, (2) is the defendant's sign sufficiently similar to it that the public are either deceived into the belief that the goods are associated with the proprietor so that the use of the sign takes unfair advantage of the mark, or alternatively causes detriment in their minds to either (a) the repute or (b) the distinctive character of the mark, or (3) even if they are not confused, does the use of the sign nonetheless have this effect, and (4) is the use complained of nonetheless with due cause. Detriment can take the form either of making the mark less attractive (tarnishing, to use Neuberger J.'s word) or less distinctive (blurring). On this analysis, VISA is of course a case of tarnishing."
37. The test of similarity or confusion had been indicated, in Sabel BV v Puma AG [1998] RPC 199 as follows: -
". . . The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case….That global appreciation of the visual, aural or conceptual similarity or the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components . . . The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details."
It was held, in Adidas-Salomon AG v Fitnessworld Trading Ltd [2004] Ch 120, that it is not necessary to establish confusion or the likelihood of confusion in order to establish infringement under this head. The plaintiff has to show that there is sufficient degree of similarity between the mark with a reputation and the sign (ie. the impugned mark) to have the effect that the relevant section of the public establishes a link between the sign and the mark. The court also cautioned that all tests have to be cumulatively satisfied, or else the courts would be indulging in over-protection to the registered mark, affecting competititon:
'Above all, it is necessary to give full weight to the provisions of Article 5(2) as a whole. Thus the national court must be satisfied in every case that the use of the contested sign is without due cause; and that it takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark. These requirements, properly applied, will ensure that marks with a reputation, whether or not the reputation is substantial, will not be given unduly extensive protection.'
38. Explaining what is meant by “reputation” it was held, in General Motors Corp v Yplon SA [1999] All ER (EC) 865 by the ECJ that in order to have a reputation a trade mark had to satisfy a 'knowledge threshold'. This was described as follows:
"26 The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark.
27 In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it."
39. US Courts have emphasized the similarity or confusing nature of the mark, having regard to dissimilar goods, by saying that that the perception of the sign or mark should be that it calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense). Thus, it was held by the Seventh Circuit (US), in Barbecue Marx, Incorporated, Plaintiff –vs- Ogden, Incorporated 235 F.3d 1041 (7th Cir. 2000) that:
"In order to secure injunctive relief, the rival mark should be confusingly similar in appearance and suggestion, to the plaintiff‘s mark."
40. Recently, in Canada Toys -vs- Mattel Inc 518 F.3d 628, (2008) (2nd Circuit) it was held that:
"The federal dilution statute also requires a showing of likelihood of dilution either [**16] by blurring or by tarnishment. 15 U.S.C. § 1125(c)(1). Where, as here, a plaintiff's claim is based on a dilution by blurring theory, the question is whether the "association arising from the similarity between a mark or trade name and a famous mark . . . impairs the distinctiveness of the famous mark." Id. § 1125(c)(2)(B). A court may consider all relevant factors in making this determination, including the six identified by the statute:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(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."
41. The need to establish “linkage” or mental association of the offending mark, with that of the plaintiff‟s is one of the vital essentials for securing relief in any claim for dilution. This was emphasized as follows, by Professor McCarthy (McCarthy, J. Thomas. McCarthy on Trademarks and Unfair Competition, Vol. IV, 4th ed. 1996 (loose-leaf updated December 2005, release 36):
". . . if a reasonable buyer is not at all likely to think of the senior user‘s trademark in his or her own mind, even subtly or subliminally, then there can be no dilution. That is, how can there be any ―whittling away‖ if the buyer, upon seeing defendant‘s mark, would never, even unconsciously, think of the plaintiff‘s mark? So the dilution theory presumes some kind of mental association in the reasonable buyer‘s mind between the two parties and the mark. [Footnote omitted; emphasis in original; — 24:70, at p. 24-143.]"
"On the one hand, well-known mark owners say that people should not reap where they have not sown, that bad faith should be punished, that people who sidle up to their well-known marks are guilty of dishonest commercial practice. These vituperations lead nowhere. One might as well say that the well-known mark owner is reaping where it has not sown when it stops a trader in a geographic or market field remote from the owner‘s fields from using the same or a similar mark uncompetitively. (D. Vaver, "Unconventional and Well-known Trade Marks", [2005] Sing. J.L.S. 1, at p. 16)
42. Two recent decisions of the Canadian Supreme Court, also dealt with the subject. In the first, Veuve Clicquot Ponsardin, Maison Fondée en 1772 vs- Boutiques Cliquot Ltée, Mademoiselle Charmante Inc. and 3017320 Canada Inc. [2006] 1 S.C.R. 824 (action brought by Veuve Clicquot, a premium champagne brand against the junior user‟s use of the same word mark in relation to women clothing range boutiques) the court emphasized the need to show distinctiveness in the region, of the mark, beyond the wares or services of the proprietor, and other relevant factors:
"The finding that VEUVE CLICQUOT is a ―famous' mark is of importance in considering ―all the surrounding circumstances‖ because fame presupposes that the mark transcends at least to some extent the wares with which it is normally associated. The evidence is clear that VEUVE CLICQUOT carries an aura of luxury which may extend outside the wine and champagne business, and may (as the appellant‘s expert stated) evoke a broad association with luxury goods.
33 While the halo effect or aura of the VEUVE CLICQUOT mark is not necessarily restricted to champagne and related promotional items and could expand more broadly into the luxury goods market, no witness suggested the mark would be associated by ordinary consumers with midpriced women‘s clothing. Thus, in considering all of the relevant circumstances, the trial judge was of the opinion ―that the key factor is the significant difference between the plaintiff‘s wares and those of the defendants' and that ―[t]he plaintiff‘s activities and those of the defendants are so different that there is no risk of confusion in consumers‘ minds" (para. 76). In weighing up the s. 6(5) factors, this was an emphasis she was entitled to place in this particular case. Section 6(2) recognizes that the ordinary somewhat-hurried consumer may be misled into drawing the mistaken inference ―whether or not the wares or services are of the same general class', but it is still a question for the court as to whether in all the circumstances such consumers are likely to do so in a particular case.
45.  The depreciation or anti-dilution remedy is sometimes referred to as a 'super weapon' which, in the interest of fair competition, needs to be kept in check. In his leading six-volume U.S. treatise on trademark law, Professor J. T. McCarthy writes in terms that, substituting depreciation for dilution, are directly applicable to this case:
'Even the probability of dilution should be proven by evidence, not just by theoretical assumptions about what possibly could occur or might happen. . . . the courts should separate any antidilution claim into its discrete elements and rigorously require a showing of proof of those elements.' (McCarthy on Trademarks and Unfair Competition, vol. 4 (4th ed. (loose-leaf), — 24:67.1, at p. 24-136) 46 Section 22 of our Act has received surprisingly little judicial attention in the more than half century since its enactment. It seems that where marks are used in a confusing manner the preferred remedy is under s. 20. Equally, where there is no confusion, claimants may have felt it difficult to establish the likelihood that depreciation of the value of the goodwill would occur. Be that as it may, the two statutory causes of action are conceptually quite different. Section 22 has four elements. Firstly, that a claimant‘s registered trade-mark was used by the defendant in connection with wares or services — whether or not such wares and services are competitive with those of the claimant. Secondly, that the claimant‘s registered trade-mark is sufficiently well known to have significant goodwill attached to it. Section 22 does not require the mark to be well known or famous (in contrast to the analogous European and U.S. laws), but a defendant cannot depreciate the value of the goodwill that does not exist. Thirdly, the claimant‘s mark was used in a manner likely to have an effect on that goodwill (i.e. linkage) and fourthly that the likely effect would be to depreciate the value of its goodwill (i.e. damage). I will address each element in turn.
54 While ―fame "is not a requirement of s. 22, a court required to determine the existence of goodwill capable of depreciation by a ―non-confusing" use (as here) will want to take that approach into consideration, as well as more general factors such as the degree of recognition of the mark within the relevant universe of consumers, the volume of sales and the depth of market penetration of products associated with the claimant‘s mark, the extent and duration of advertising and publicity accorded the claimant‘s mark, the geographic reach of the claimant‘s mark, its degree of inherent or acquired distinctiveness, whether products associated with the claimant‘s mark are confined to a narrow or specialized channel of trade, or move in multiple channels, and the extent to which the mark is identified with a particular quality. See generally F. W. Mostert, Famous and Well-Known Marks: An International Analysis (1997), at pp. 11-15; INTA, Protection of Well-Known Marks In the European Union, Canada and the Middle East (October 2004)."
In another judgment, Mattel, Inc. v. 3894207 Canada Inc., [2006] 1 S.C.R. 772, the court observed about the trade dilution theory, (while refusing to grant relief to the “Barbie” brand against use of that term in relation to a restaurant,) that: 
"The traditional rule was that ―[i]f [a manufacturer] does not carry on a trade in iron, but carries on a trade in linen, and stamps a lion on his linen, another person may stamp a lion on iron‖: Ainsworth v. Walmsley (1866), L.R. 1 Eq. 518, at pp. 524-25. While I agree with Professor McCarthy, quoted earlier, that ―a relatively strong mark can leap vast product line differences at a single bound‖ (§ 11:74), nevertheless it is implicit in Professor McCarthy‘s statement that the ―product line‖"will generally represent a significant obstacle for even a famous mark to leap over. The doll business and the restaurant business appeal to the different tastes of a largely different clientele. As was found by the Board:
"The nature of the opponent‘s wares and the applicant‘s services are quite different. In this regard, the opponent has established that its mark is very well known, if not famous in Canada, in association with dolls and doll accessories. The opponent‘s target market are children and to some extent adult collectors. By contrast, the applicant is in the restaurant business and its target market are [sic] adults. [p. 400]"
79. There is no evidence that adult consumers would consider a doll manufacturer to be a source of good food, still less that the BARBIE trademark would be understood to guarantee, as the 1953 Fox Report (at p. 26) put it, ―character and quality‖. The appellant suggests that the BARBIE doll has become part of pop culture, and there is some truth to that, but the meaning is not necessarily a positive recommendation for all wares and services
87. In the present case, quite apart from the great difference between the appellant‘s wares and the respondent‘s services, they occupy different channels of trade and the increased potential for confusion that might arise through intermingling in a single channel of trade does not present a serious problem.
88. Both marks use the name ―Barbie‖ but the respondent‘s applied-for mark wraps the name in a design, whereas the appellant‘s mark as registered does not. On the other hand, if the appellant‘s mark as used in packaging and advertising is taken into account, there is a considerable resemblance."
43. The discussion on the subject would not be complete without a reference to the latest judgment of the European Court, on the issue, in Intel Corp Inc –vs- CPM United Kingdom Ltd 2009 ETMR 13. The claimant, Intel Corp Inc, registered trademark proprietor in respect of various marks, in the United Kingdom and several European countries, sued Intel-mark, the user of “Intel” in relation to telemarketing services. The courts in the United Kingdom had refused relief, holding that there was no dilution of the mark “Intel” despite its “huge” reputation; nevertheless the Court of Appeals made a reference to the European Court, which concurred with the view of the domestic courts. In the judgment, it restated the principles governing the field, as follows:
"44 As regards the degree of similarity between the conflicting marks, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public. That is particularly the case where those marks are identical. 45 However, the fact that the conflicting marks are identical, and even more so if they are merely similar, is not sufficient for it to be concluded that there is a link between those marks. 46 It is possible that the conflicting marks are registered for goods or services in respect of which the relevant sections of the public do not overlap. 47 The reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public (see General Motors, paragraph 24). 48 It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks. 49 Furthermore, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. 50 Accordingly, the nature of the goods or services for which the conflicting marks are registered must be taken into consideration for the purposes of assessing whether there is a link between those marks. 51 It must also be pointed out that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. 52 In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered. 53 For the purposes of assessing where there is a link between the conflicting marks, it may therefore be necessary to take into account the strength of the earlier mark‘s reputation in order to determine whether that reputation extends beyond the public targeted by that mark. 54 Likewise, the stronger the distinctive character of the earlier mark, whether inherent or acquired through the use which has been made of it, the more likely it is that, confronted with a later identical or similar mark, the relevant public will call that earlier mark to mind. 55 Accordingly, for the purposes of assessing whether there is a link between the conflicting marks, the degree of the earlier mark‘s distinctive character must be taken into consideration. 56 In that regard, in so far as the ability of a trade mark to identify the goods or services for which it is registered and used as coming from the proprietor of that mark and, therefore, its distinctive character are all the stronger if that mark is unique – that is to say, as regards a word mark such as INTEL, if the word of which it consists has not been used by anyone for any goods or services other than by the proprietor of the mark for the goods and services it markets – it must be ascertained whether the earlier mark is unique or essentially unique. 57 Finally, a link between the conflicting marks is necessarily established when there is a likelihood of confusion, that is to say, when the relevant public believes or might believe that the goods or services marketed under the earlier mark and those marketed under the later mark come from the same undertaking or from economically-linked undertakings (see to that effect, inter alia, Case C-342/97 Lloyd Schuhfabrik Meyer [1999] ECR I-3819, paragraph 17, and Case C-533/06 O2 Holdings and O2 (UK) [2008] ECR I-0000, paragraph 59). 58 However, as is apparent from paragraphs 27 to 31 of the judgment in Adidas-Salomon and Adidas Benelux, implementation of the protection introduced by Article 4(4)(a) of the Directive does not require the existence of a likelihood of confusion. 59 The national court asks, in particular, whether the circumstances set out in points (a) to (d) of Question 1 referred for a preliminary ruling are sufficient to establish a link between the conflicting marks. 60 As regards the circumstance referred to in point (d) of that question, the fact that, for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark would call the earlier mark to mind is tantamount to the existence of such a link. 61 As regards the circumstances referred to in paragraphs (a) to (c) of that question, as is apparent from paragraph 41 to 58 of this judgment, they do not necessarily imply the existence of a link between the conflicting marks, but they do not exclude one either. It is for the national court to base its analysis on all the facts of the case in the main proceedings.
62 The answer to point (i) of Question 1 and to Question 2 must therefore be that Article 4(4)(a) of the Directive must be interpreted as meaning that whether there is a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the earlier mark with a reputation and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. 63 The fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks. 64 The fact that: "the earlier mark has a huge reputation for certain specific types of goods or services, and -  those goods or services and the goods or services for which the later mark is  registered are dissimilar or dissimilar to a substantial degree, and – the earlier mark is unique in respect of any goods or services, does not necessarily imply that there is a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks…."
44. It may be seen from the preceding discussion that dilution of trademark is a species of infringement. Though trademarks are concerned with protection of marks which have acquired a degree of distinctiveness, in relation to particular goods and services, courts have, over the years recognized that in relation to marks which have achieved notoriety as to have a reputation about the quality of products which the manufacturer, or services the originator (of the mark) is associated with, then, even in relation to dissimilar goods – or unrelated products, protection of such brand name, mark or acquired distinctiveness is essential. This measure of protection to marks in relation to similar junior marks, but for dissimilar goods is, in substance the protection against dilution (or Blurring or tarnishment) of the mark. Prior to the 1999 Act, Indian law had developed through case law; the new Act changed that, and has enjoined protection against dilution, if certain essential elements are established; they are:
(1) The impugned mark is identical or similar to the senior mark;
(2) The senior or injured mark has a reputation in India;
(3) The use of the impugned mark is without due cause;
(4) The use of the impugned mark (amounts to) taking unfair advantage of, or is detrimental to, the distinctive character or reputation of the registered trade mark. Unlike in the case of infringement of trademark in relation to similar goods or services, in the case of dilution (infringement of mark by use in respect of dissimilar goods or services) there is no presumption of infringement of the mark. This means that each element has to be established.

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