We’ve all come across counterfeit products of popular brands and first copies. People have taken it one step further by selling products under the brand name of well-known trademarks like Facebook, Whatsapp and the like on clothing, food stalls and what not. There are a two possibilities; either it is a case of blatant trademark infringement and passing off or it is the lack of awareness. The latter suggests that a person manufacturing and selling such goods with well-known trademarks has no idea that the law prohibits it, thereby raising the question of defense of ignorance of the law.
Firstly, what shocks me is that several newspapers and online articles (one of them) are writing about this new trend of using well known trademarks on a range of products, however, it’s more on the lines of it be amusing and rarely has anything to do with the possibility of it being infringement the actual trademark. A Levis lungi, Vodafone lighter and Whatsapp saree might be quite amusing but as a lawyer, I view this solely from the point of trademark law and not so much with amusement.
Secondly, if this comes under the ambit of dilution of well-known marks, will the Goliath actually initiate suits against Davids who have no idea what their actually getting themselves into? In this article, I will discuss the law on dilution of well-known marks and related aspects that raise a lot of legal questions.
As defined under the Trademark Act, a mark is well-known is one which has become so a substantial segment of the public and any use of that mark is likely to be taken as a connection with the mark the is well-known. There a number factors to be considered while determining whether a mark is well-known or not, some of them being – knowledge of relevant section of the public, duration, extent and geographical area of use, promotion etc.
Infringement of well-known marks
This issue was first discussed by the Delhi High Court, in the popular Benz case where the defendant was using the mark Benz and the three pointed star (modified into a three point human figure in the ring) on undergarments. The Court in this case stated that it would be a perversion of the trademark law if persons were allowed to use colorable imitations of marks and also emphasized on the fact that such marks were not up for grabs and not available to be applied upon anything or goods. This implies that in the case of well-known marks the spectrum of protection is broader and includes of all classes of goods and services and not just the one under which it is registered.
Applying this to a scenario where people are blatantly using well-known trademarks which are known across the globe, one can say without doubt that it is definitely trademark infringement and may also be dilution of the trademark.
Dilution of well-known marks
Section 29(4)(c) of the Act states that the use of registered mark having reputation in India without due cause, thereby taking unfair advantage and being detrimental to its distinctive character amounts to infringement of that mark. This provision has been discussed in various judicial pronouncements and has been termed as ‘dilution’ because use of well-known marks in relation to goods or services may result in dilution of the reputation and goodwill of such mark. This could be because of anything ranging from sale of inferior quality products or poor customer relation services.
The question faced by Goliath is ‘to sue or not to sue’. That is a business decision one needs to make and will probably be determined based on the level of negative impact it is likely to have on their consumers and target audience.
These amazing products might tickle your funny bone, but legally speaking, it is infringement and more importantly, dilution of the well-known trademark.