Trademark dilution is, in a general sense, a reduction in brand equity due to the

unauthorized use of the trademark by third parties (junior brands).

LEADING CASE: ITC LIMITED v PHILIP MORRIS PRODUCTS S.A. [2010(42) PTC 572
(DEL)]
In this case, the plaintiff ("ITC") claims having diverse business in products and services such as
hotels, paperboards, specialty papers, packaging, agro-business, Fast Moving Consumer Goods
(FMCG), including cigarettes; foods, confectionary, Information Technology, branded-apparel,
personal care, etc. The suit describes 14 hotels under the ITC "WELCOMGROUP" banner in
various locales and cities in India, including ITC Maurya in New Delhi. ITC claims that . its
"WELCOMGROUP" mark/logo has been in continuous and extensive use on its products and
packaging of its famous "Kitchens of India" range of ready-to-eat food products. ITC also
mentions that it owns trademark registrations in several classes in as many as 14 other countries. 

ITC states that the defendants "Philip Morris" have introduced alleges its cigarettes in India by
the name "Marlboro." ITCal since their launch in India, the defendants have 1av used only its
ggr. traditional "Marlboro" logo. The plaintiff is a d. by the defendants' launching their
packaging for "Marlboro" cg where it is alleged Philip Morris uses a mark or logo that is
identical or similar to ITC's NAMASTE "WELCOMGROUP" mark/logo. The plaintiff alleges
that the use of the impugned logo (which is a styled "M" tilted towards the right, as if it is in
flames, in yellow colour on dark packaging) ("the flaming logo") would injure by association
with the plaintiff's distinctive trademark and copyright in the artistic work vis-à-vis the
"WELCOMGROUP" logo ("the W-NAMASTE logo").

The plaintiff urges that the W-NAMASTE logo is a permanent and essential feature of all its
products and services. One of its main businesses is tobacco and cigarettes and the use of an
identical or similar mark connects or links the Marlboro's flaming logo with ITC's products as to
constitute both infringement and passing-off. It is asserted that the unimpeded use of Marlboro's
flaming logo results in blurring and dilution of the distinctive character of the plaintiff's W-
NAMASTE mark which has been in use for the last 34 years continuously. It is also contended

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that the flaming logo of Philip Morris for its "Marlboro" cigarettes are contrary to honest
practices, and a deliberate departure from the use of its traditional "Marlboro" logo which
amounts to the defendants' taking unfair advantage, without cause of the plaintiff's mark and
logo.
The plaintiff submitted that Philip Morris's attempt amounts to infringement within the meaning
of the expression under Sec. 29(4) of the Trademark Act, 1999. It is also contended that the
ITC's "WELCOMGROUP" W-NAMASTE mark has become a famous mark within the meaning
of the term under the Act so as to enable it (ITC) to seek injunction for its protection against
attempt by anyone to associate that trademark with its goods or services -whether those goods or
services concern the "WELCOMGROUP" hotel services or not. ITC relies upon the decision in
Ramdev Food Products Pvt. Ltd v Arvindbhai Rambhai Patel 2006(33) PTC 281, 
in support of the arguments that even though Philip Morris may not be using the plaintiff's W-
NAMASTE trademark, its get-up is so like ITC's as to amount to passing-off and infringement. 

Issue:
Whether the High Court of Delhi should grant such an injunction in favour of ITC based on its
claim of distinctiveness for the “Welcome group” logo?

Contention of The Defendant

Philip Morris says, the "WELCOMGROUP" logo which is a device depicting folded-hands, is
primarily used by ITC, in relation to its hospitality services - even that with relatively
insignificant ingredients of larger conjunctive/composite marks; it has not been used in relation
to cigarettes. The house mark of the plaintiff is the logo encompassing the letters "ITC" in the
shape of a triangle it is not the logo WELCOMGROUP W-NAMASTE in question.
Philip Morris says that it has independent and distinctive trademarks in the word mark; their
logo mark is also completely dissimilar to that of the plaintiff. According to Philip Morris,
customers patronizing such hotels, familiar with the "W-Namaste" logo (of the plaintiff) are
persons from a relatively affluent class who are not likely to mistake a 'Marlboro cigarette' with
the plaintiff's product merely because its roof device is displayed in the hollow form. Philip
Morris claims that its registered trademark "Marlboro" is a trademark known the world-over, and
a 'well-known trademark'. The registered marks of Philip Morris consists of the characteristic

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`roof device' which is an integral part of the mark and is used in all packaging of the various
cigarettes sold under the Marlboro brand. 
The defendants submit that there must be, to establish a case of trademark dilution, the senior
mark owner should not only reveal, prima facie strong resemblance- of the two marks, but also a
"linkage" or mental association of the offending mark, with that of the plaintiff's. That linkage,
says the defendant, is absent in this case. Lastly, it is submitted that the other important
ingredient which should be present in the -case of the offending mark is that its use is without
due cause and that it takes unfair advantage of the plaintiff's mark. The plaintiff has not disclosed
even a single incident/illustration, indicating likelihood of passing-off or unfair competition; the
plaintiff is conspicuously silent on the point that it has ever sold any of its cigarettes under the
'W-Namaste' logo, which alone is the subject matter of the suit and as such there is no question
of passing-off, unfair competition or for that matter, infringement. 

Relevant provisions of law/Case law

The 1999 Act [Sec. 29(4)] 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.

In Ramdev Food Products Pvt. Ltd. v Arvindbhai Rambhai Patel 1, the Supreme Court noted the
decision of the European Court in Canon Kabushiki Kaisha v Metro Goldwyn Mayer Inc.2,:

1
2006(33) PTC 281
2
1999 RPC 117

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 "That case concerned the interpretation of Article 4(1)(b) of the directive insofar as it refers to
'a likelihood of confusion on the part of the public, which includes the likelihood of association
with the earlier trade mark.' The court explained that it had been submitt that 'the likelihood of
association may arise in three sets of circumstances:
1) where the public confuses the sign and mark in question (likelihood of direct confusion);
2) where the public makes a connection between the proprietors of the sign and those of the
mark and confuses them (likelihood of indirect confusion or association);
3) where the public considers the sign to be similar to the mark and perception of the sign
calls to mind the memory of the mark, although the two are not confused (likelihood of
association in the strict sense).

The court stated that it was therefore necessary to determine `whether Article 4(1)(b) can apply
where there is no likelihood of direct or indirect confusion, but only a likelihood of association in
the strict sense.' It concluded: 'The terms of the provision itself exclude its application where
there is no likelihood of confusion on the part of the public'. Thus, the court held that 'the mere
association which the public might make between two trademarks as a result of their analogous
semantic content is not in itself a sufficient ground for concluding that there is a likelihood of
confusion' within the meaning of Article 4(1)(b). That view is also confirmed by the judgment of
the court in Sabel, in which it held that the 'likelihood of confusion must ... be appreciated
globally, taking into account all factors relevant to the circumstances of the case'.

In Intel Corp Inc v CPM United Kingdom Ltd, 3 the claimant, Intel Corp Inc, registered
trademark proprietor in respect of various marks, in the UK 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:
a) 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

3
2009 ETMR 13,

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 reputation to the mind of the relevant public. That is particularly the case where those
marks are identical. 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. It is possible that the conflicting marks are
registered for goods or services in respectof  the sections of the public do not overlap.

b) The reputation of a trade mark must b e assessed in relation to the relevant section of
the pub.lic 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. 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.

c) 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. 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.

d) 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. 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 

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4 (1) 
regards goods or services for which the earlier mark was registered. (e) 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. 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. 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. 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. 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.However, the existence of
a likelihood of confusion is not required. 
(f) 
(g) 

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Trade Mark Dilution & Contemporary Areas 249 (h) Whether there is a link 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. 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 between the
conflicting marks. (i) The fact that: - the earlier mark has a huge reputation for certain specific

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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
between the conflicting 
marks. The Court, in the present case, observed: The plaintiff here relies on extensive materials
in the form of brochures, sales figures, brand awareness and the niche segment its hotels occupy,
due to the awards won by it, and so on. To a certain extent, these materials are relevant in
establishing prima facie that in the hospitality industry, in India, the ITC WELCOMEGROUP
brand has acquired distinction. The question, however, is not whether that word-mark has been
infringed. The issue which the court has to consider is whether the plaintiff's W-NAMASTE logo
has been infringed by the defendant, thorough dilution. The plaintiff's argument that the W-
NAMASTE logo is ITC's house-mark, in the court's opinion, is not on a sound footing. It was not
disputed during the hearing that the ITC's triangular logo is used in its non-hospitality products
and services. As far as the W-Namaste logo or mark is concerned, what is apparent from a visual
or aural perspective, is that it is the stylized depiction of the 
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Indian greeting "Namaste." There is perhaps, a natural association with the hospitality industry.
Apart from the fact that the stylization is distinctive - and has been in apparent use for the last 34
years or so, is that the mark is part of a larger logo. Thus, the W-NAMASTE is part of the
trademark or label, for which the plaintiff has secured registration. The mark includes words
such as "ITC-WELCOM HOTEL NEW DELHI"; "ITC- HOTEL & WINDSOR TOWERS,
BANGALORE"; etc. Similarly, the copies of copyright registrations placed on the record reveal
that the W-Namaste logo is a part of the overall mark, which invariably includes the "ITC" and
"Welcom." words, with reference to the hotel, resort or restaurant concerned. Besides, the
Namaste logo, although an important element, does not dominate the overall trademark or logo.
It would be, at this stage, relevant to recollect the two rival marks, which are in question. The
defendant has been using a broad "M" Roof mark. That mark is depicted on the top portion of
each cigarette carton; usually it is set in one or the other colour, such as red, blue, maroon, etc.

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The impugned mark is set in black background with the mark further depicted in yellow flames
(presumably to denote the festive occasion of Diwali). The further details about the two rival
marks is that the plaintiffs' logo is almost always depicted with some words, usually
"WELCOMGROUP." The defendant's impugned mark is not a "stand alone" logo or mark; the
words Marlboro are written with it. It is an established principle, in India, that in any trademark
infringement action, the question of similarity (of the rival marks) is to be addressed first. Here,
the test - evolved over 40 years ago - of course in the context of similar goods and applied
consistently by the court, was summarized by the following quote, (from an old English
decision) by the Supreme Court, in Amritdhara Pharmacy v Satya Deo Gupta AIR 1963 3C 449
onwards: "You must take the two words. You must judge them, both by their look and by their
sound. You must consider the goods to which they are to be applied. You must consider the
nature and kind of customer who would be likely to buy those goods. In fact you must consider
all the surrounding circumstances; and you must further consider 

Law - I 
to the mark and perception of the sign calls to mind the memory of the mark, although the two
are not confused (likelihood of association in the strict sense). The court stated that it was
therefore necessary to determine `whether Article 4(1)(b) can apply where there is no likelihood
of direct or indirect confusion, but only a likelihood of association in the strict sense.' It
concluded: 'The terms of the provision itself exclude its application where there is no likelihood
of confusion on the part of the public'. Thus, the court held that 'the mere association which the
public might make between two trademarks as a result of their analogous semantic content is not
in itself a sufficient ground for concluding that there is a likelihood of confusion' within the
meaning of Article 4(1)(b). That view is also confirmed by the judgment of the court in Sabel, in
which it held that the 'likelihood of confusion must ... be appreciated globally, taking into
account all factors relevant to the circumstances of the case'. In Intel Corp Inc v CPM United
Kingdom Ltd, 2009 ETMR 13, the claimant, Intel Corp Inc, registered trademark proprietor in
respect of various marks, in the UK 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

8|P a g e
the domestic courts. In the judgment, it restated the principles governing the field, as follows: (a)
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. 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. It is possible that the
conflicting marks are registered for goods or 
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to be juxtaposed with another mark, which, the materials on record prima facie suggest, has its
own distinctive market. In the case of logos and other marks, the application of the "identity" or
"similarity" test has to result in a conclusion that the rival marks bear a very close resemblance,
seen from an overall perspective. It is, therefore, concluded, that prima facie the two trademarks
(W-NAMASTE and the tilting "flame" logo) are neither identical, nor similar to each other. The
latter mark is quite different, and has its own artistic elements. 
The second question is, whether assuming the plaintiff has proved similarity, has it also
established distinctiveness and reputation of the mark and the services associated with it, which,
if used, the way the defendants are ushig it, would whittle down such distinctiveness or
exclusivity. The plaintiff's reputation in its mark contains an aura of luxury which could possibly
transcend the hospitality business, and may well evoke a broad association with luxury goods.
However, though the "aura" of the W-NAMASTE mark may go beyond the niche hospitality
services, and could extend to other luxury goods, there is nothing suggestive that such
association extends to mid to high priced cigarettes. This aspect is crucial, because the plaintiff
does not deny selling competing goods, i.e. cigarettes in different price ranges, some of which
are priced competitively with the defendants' cigarettes. The Court concluded: All materials

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suggest that the difference between the two products and service ranges - i.e. hospitality business
of ITC, which alone apparently uses the W-NAMASTE - and the defendant's cigarettes - are
significant and fundamental. There is no evidence to show how the W-NAMASTE logo is likely
to be affected prejudicially, or that the defendant's use of their mark would result in detriment to
the plaintiff's mark. The plaintiff has not shown that it uses the W-NAMASTE mark for its
cigarette brands; anyway that is not such products' primary or main logo. Importantly, the class
of users of the plaintiff's hospitality services and the consumer of high and mid-end priced
cigarettes are not the kind who would associate the defendant's mark (with MARLBORO
depicted prominently) as those of the rival ITC. Taking into 
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Trade Mark Dilution & Contemporary Areas 25 
consideration all these factors, and the materials on record, the court is prima facie satisfied there
is no linkage between the defendant's mark and the plaintiffs' services, so as to cause detriment to
the latter, and undue advantage to the former.] 
Trade Dress/Colour Combinations Colour combination, get-up, layout and size of container is
sort of 'Irk dress"' which involves overall image of the product's features. There is wide
protection against imitation or deceptive similarities of trade dress t" trade dress is the soul for
identification of the goods as to its source an origin and as such is liable to cause confusion in the
minds of unwar customers particularly those who have been using the product over the Ion
period. `Trade dress' may be seen as a new nomenclature for the previot expressions of — fact
get up, colour combination or visual presentation ( the trade marks. The expression 'Trade dress'
is in line with the nomenclatui in international literature on trade marks. There have been on
occasio arising cases in which similarity of labels was alleged and decided upon an the norms for
comparison of the labels were laid down [Park v J.P. & Co Krishna Chettiar Sri Ambal v Sri
Ambal cases]. In Vicco Laboratories v Hindustan Rimmer (AIR 1979 Del 114), bol the
expressions 'trade dress' and the 'fact get up' were used and the la' was laid down as follows:
"The plaintiff claims passing off by the defendai as and for the product of the plaintiff on the
basis of the copy of distinctive get up and colour scheme of the collapsible tubes and carton The

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two marks VICCO and COSMO used by the plaintiff and defendant ai no doubt different. The
mark COSMO by itself is not likely to deceive bi she - entire get up and colour scheme of the
tube and carton adopted by t1 n!ai,t;fr., ,  

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