COMPARATIVE ADVERTISEMENT

"Good advertising does not just circulate information. It penetrates the public mind
with desires and belief." – Leo Burnett
Leo Burnett’s statement emphasizes the power of advertising to not merely inform, but to
shape perception and influence consumer behavior by creating desires and embedding beliefs
in public consciousness. This idea becomes especially significant when we examine
comparative advertising—a tool often used to position one’s brand in contrast with
competitors’.
I. Understanding Advertising and Comparative Advertising
Advertising is a form of marketing communication used to promote goods or services.
Comparative advertising is a subset of this, where the advertiser compares their product
directly or indirectly with that of a competitor, usually highlighting why their product is
superior in terms of price, quality, benefits, etc.
The objectives of comparative advertising include:
1. Promoting consumer awareness through comparison;
2. Creating brand value;
3. Influencing consumer choices to increase sales.
While such advertising can benefit consumers by enabling informed decisions, it often runs
the risk of disparagement or misrepresentation, especially when it crosses the line into
mocking or defaming a competitor’s product.
II. Comparative Advertising under Indian Law
A. Constitutional Protection: Article 19(1)(a)
Comparative advertising is considered a part of commercial speech, which is protected under
Article 19(1)(a) of the Constitution of India. However, this freedom is not absolute. If an
advertisement becomes misleading, deceptive, or disparaging, it may lose this protection.
B. Puffery vs. Disparagement
Puffery involves exaggerated but subjective claims (e.g., "best soap in the world"), which are
often allowed. However, disparagement—when an advertisement directly demeans or
mocks another brand—can attract liability.
III. Trademark Law and Comparative Advertising
A trademark distinguishes the goods/services of one brand from another. The Trademark
Act, 1999 gives exclusive rights to trademark owners and protects against unauthorized use
that damages reputation.
Relevant Provisions:
• Section 29(8): An advertisement amounts to infringement if it takes unfair advantage, is
against honest practices, is detrimental to the distinctive character, or harms the reputation
of the trademark.
 • Section 30(1): Provides a defense that comparative advertising is allowed if done
honestly, without unfair advantage, and not misleading or harmful. Thus, a competitor may
use another’s trademark for comparison if:
• The comparison is factual and honest,
• It doesn’t degrade or ridicule the competitor,
• It doesn’t mislead the consumer.
IV. Burden of Proof and Tests Applied
The burden lies on the trademark owner to prove that the use was not honest or was
misleading. The courts often apply the “reasonable viewer test”, assessing:
• The intent of the ad,
• The manner of presentation,
• The overall impression created.
The ad is evaluated as a whole, not in isolation.
V. Role of ASCI (Advertising Standards Council of India)
ASCI guidelines permit comparative advertising only if:
• The comparison is clear, fact-based, and not misleading,
• The ad does not unfairly exploit competitor’s reputation,
• There is no dishonest advantage taken.

VI. Judicial Pronouncements

1. Britannia v. Unibic Biscuits
The tagline "Why have a Good Day when you can have a Great Day" was held to disparage
Britannia's “Good Day” brand. Injunction granted.
2. Hindustan Unilever Ltd. v. Reckitt Benckiser
Use of "leading dishwash" in comparison to Dettol led to the conclusion that the ad targeted
VIM, hence not an honest practice.
3. Pepsi Co. v. Hindustan Coca Cola Ltd.
Mocking Pepsi through look-alike bottles, altered slogans (“Yeh dil maange no more”) was
held to be intentional disparagement. Injunction granted.
4. Colgate v. Hindustan Unilever
Though comparison was made, the court didn’t find direct disparagement. However, it
directed minor modifications to avoid confusion.
5. Dabur v. Emami
The line “Garmiyon mein Chyawanprash bhool jao” was seen as discouraging use of a
competitor’s product, and hence amounted to disparagement.
VII. Conclusion
Comparative advertising, when done fairly and honestly, is a valuable commercial tool and a
part of healthy market competition. However, the thin line between informative
comparison and disparagement must be respected.
The law permits comparison only if it:
• Does not deceive,
• Does not degrade competitors,
• Serves public interest by helping consumers make better choices.
Leo Burnett’s quote reflects this dual nature of advertising—its power to shape beliefs can be
constructive or manipulative. Thus, ethical advertising practices, legal compliance, and
consumer protection must go hand-in-hand.
2. PRODUCT DISPARAGEMENT: DEFINITION AND LEGAL IMPLICATIONS
Product disparagement occurs when an advertisement falsely degrades a competitor’s
product, harming its reputation. It is also known as trade libel or commercial defamation.
2.1 Elements of Product Disparagement
For a successful claim, the plaintiff must prove:
1. False or Misleading Statement: The ad must contain an untrue claim about the
competitor’s product.
2. Deception of Consumers: The statement must mislead a significant portion of
consumers.
3. Material Harm: The false claim must influence purchasing decisions, causing
financial loss.
2.2 Difference Between "Puffery" and Disparagement
• Puffery: Exaggerated claims that no reasonable consumer would believe (e.g., "The best
coffee in the world").
• Disparagement: Specific, false claims that damage a competitor (e.g., "Brand X’s coffee
contains harmful chemicals").

3. Legal Framework Under the Indian Trademarks Act, 1999

The Trademarks Act, 1999 regulates comparative advertising through Section 29(8)
(Infringement) and Section 30(1) (Permissible Use).
3.1 Section 29(8): When Comparative Advertising Becomes Infringement A
trademark is infringed if:
 • The ad does not follow honest practices.
• It damages the distinctiveness or reputation of the competitor’s mark.
Example:
• If an ad says, "Brand X’s phones explode; ours don’t," it harms Brand X’s reputation and
may be infringing.
3.2 Section 30(1): Exception for Fair Comparative Advertising Use of a competitor’s
trademark is allowed if:
• It is honest and fair.
• It does not unfairly harm the competitor’s goodwill.
Example:
• "Our battery lasts 20% longer than Brand Y’s" (if factually correct) is permissible.
3.3 Key Legal Tests
1. Honesty Test: Would a reasonable consumer find the ad truthful?
2. Detriment Test: Does the ad harm the competitor’s brand value?
3. Burden of Proof: The plaintiff (trademark owner) must prove dishonesty or harm.
4. Judicial Interpretations and Case Laws
Indian and global courts have shaped the boundaries of comparative advertising.
4.1 Indian Cases
1. Reckitt & Colman v. Kiwi T.T.K. (1996)
Court held that while a brand can claim superiority, it cannot falsely denigrate a
competitor.
2. Hindustan Unilever Ltd. v. Gujarat Co-operative Milk Marketing Federation
(Amul) (2018)
Comparative ads must not mislead consumers or tarnish a competitor’s image.
4.2 International Cases
1. PepsiCo v. Coca-Cola (U.S.)
o Courts allow direct comparisons if based on verifiable facts.
2. L’Oréal v. Bellure (EU) Using a competitor’s trademark to mislead consumers is
infringement. 5.
5. Defenses Against Allegations of Disparagement A defendant in a disparagement case can
argue:
1. Truthful Comparison: The claims are factually correct.
 2. Opinion or Puffery: The statement is subjective exaggeration, not a factual claim.
3. No Actual Harm: The ad did not cause financial loss to the competitor.
6. Practical Guidelines for Advertisers
To avoid legal trouble:
✔ Be Factual: Use verifiable data (e.g., "Lab tests prove our detergent removes 10%
more stains").
✔ Avoid Mockery: Do not ridicule competitors (e.g., "Brand X’s product is junk").
✔ Disclaimers: Use disclaimers like "Based on independent study" to support claims. ✔
Trademark Use: Do not misuse a competitor’s logo or branding in a misleading way.

7. Conclusion
• Comparative advertising is legal if it is truthful, fair, and non-disparaging.
• Product disparagement occurs when false claims harm a competitor’s reputation.
• Sections 29(8) and 30(1) of the Trademarks Act, 1999 balance competition and
trademark protection.
• Judicial precedents emphasize honesty and consumer perception in evaluating ads.
Exam-Oriented Summary
• Define comparative advertising and product disparagement.
• Explain Sections 29(8) and 30(1) with examples.
• Discuss landmark cases (e.g., Reckitt & Colman, PepsiCo v. Coca-Cola).
• Analyze the difference between puffery and disparagement.
• Apply legal tests (honesty, detriment) to hypothetical ad scenarios.

UNIT 11
Kinds : Conventional and Non-conventional – In notes.
Concepts under Trademark Law: Trademark Dilution, Deceptive Similarity and Transborder
Reputation
CONCEPT OF TRADEMARK DILUTION
Introduction
Trademarks play a crucial role in signifying the origin, quality, and individuality of goods and
services. A trademark serves not only as a source identifier but also as a valuable intangible
asset for businesses, directly correlating with their growth and reputation. The registration of
a trademark under the Trade Marks Act, 1999, confers upon the owner exclusive rights and
remedies against unauthorized use. However, even in the absence of consumer confusion, a
trademark may suffer harm through a legal concept known as trademark dilution.
Concept and History of Trademark Dilution
Trademark dilution refers to the unauthorized use of a mark that is likely to weaken the
distinctive character or tarnish the reputation of a well-known or famous trademark,
irrespective of whether such use causes confusion among consumers. The doctrine of
dilution, unlike traditional infringement, is premised on protecting the uniqueness and
commercial magnetism of a famous mark.
The doctrine was first articulated in 1927 by Frank I. Schechter in his seminal article "The
Rational Basis of Trademark Protection", where he contended that trademark protection
should not merely aim to prevent consumer deception but should also prevent the loss of
distinctiveness of a mark. Schechter’s theory laid the groundwork for what is now widely
recognized as the law of trademark dilution.
Types of Trademark Dilution
Trademark dilution is broadly categorized into the following types:
1. Dilution by Blurring: This occurs when the association of a famous mark with unrelated
products weakens its distinctiveness. For example, using the mark "GOOGLE" on
toothpaste may dilute its distinctiveness as consumers may no longer associate it solely
with technology services.
2. Dilution by Tarnishment: This takes place when the unauthorized use of a mark is
offensive or unflattering, thereby harming the brand's reputation. An example could be the
use of the "ADIDAS" mark on unhealthy food products. However, parody, criticism, and
commentary may constitute fair use and may not amount to actionable dilution.
3. Free-Riding (EU-specific): Recognized in the European Union, free-riding involves
leveraging the goodwill of a well-known mark for commercial advantage without
authorization, such as using "GUCCI" as a brand for an upscale restaurant to imply
association or endorsement.
Essential Elements of Dilution
To establish a claim of trademark dilution, the following elements are generally required:
• Fame of the Mark: The mark must be widely recognized by the general public,
transcending market segments. Examples include GOOGLE, COCA-COLA, and NIKE.
• Likelihood of Dilution: It must be shown that the unauthorized use is likely to impair the
mark’s ability to identify and distinguish the goods or tarnish its reputation. Actual harm
need not be demonstrated.
Recognition Across Jurisdictions
The doctrine of trademark dilution is recognized in numerous jurisdictions:
• United States: Statutorily recognized under the Federal Trademark Dilution Act and the
Lanham Act.
• European Union: Recognizes dilution, blurring, and free-riding through Directive (EU)
2015/2436.
• India: Governed by Section 29(4) of the Trade Marks Act, 1999.
• South Africa, Japan, Latin American countries: Provide similar recognition.
• Canada and Australia: Offer protection against dilution-like harm under general
trademark or unfair competition laws, despite lacking explicit dilution provisions.
Trademark Dilution in India
Section 29(4) of the Trade Marks Act, 1999, provides the statutory basis for dilution in India.
Though the Act does not define 'dilution', the provision addresses situations where:
• The impugned mark is identical or similar to a registered mark,
• Used in relation to dissimilar goods or services, and
• The registered mark has a reputation in India,
• And the impugned use is without due cause and takes unfair advantage of or is detrimental
to the distinctive character or repute of the registered mark.
This was judicially elaborated in ITC Ltd. v. Philip Morris Products SA and Ors., where the
Court outlined the essential ingredients to claim dilution.
Exceptions
Certain uses of trademarks are exempted from constituting dilution:
• Descriptive and Nominative Fair Use
• Use in Comparative Advertising
• Parody, Commentary, News Reporting, and Educational Use
Such use is considered legitimate, especially where it falls within the scope of free speech or
public interest.

DECEPTIVE SIMILARITY
Definition and Legal Framework
Deceptive similarity in trademark law refers to a situation where a mark so closely resembles
another existing trademark that it is likely to mislead or cause confusion among the general
public. The concept does not necessitate identical replication but instead hinges upon the
likelihood that the resemblance—whether visual, phonetic, or conceptual—might result in
consumers associating the infringing mark with that of the registered proprietor.
Under Section 2(1)(h) of the Trade Marks Act, 1999, a mark shall be deemed deceptively
similar to another if it so nearly resembles that other mark as to be likely to deceive or cause
confusion. The determination is carried out by evaluating the phonetic, visual, and conceptual
likeness between the competing marks.
 Determinants of Deceptive Similarity
The assessment of deceptive similarity involves a holistic analysis of several factors,
including but not limited to:
1. Nature and Purpose of Goods: Similarities in the class, nature, or purpose of goods or
services offered under the marks enhance the likelihood of confusion.
2. Characteristics of the Marks: Whether the mark comprises invented words, descriptive
or non-descriptive terms, geographical indicators, or common trade terms is a relevant
factor.
3. Usage of the Marks: The type of goods or services with which the trademarks are
associated, or are likely to be associated in future, influences the similarity test.
4. Essential Features: The similarity of essential and prominent features in terms of
phonetic, visual, and conceptual impressions is critical.
5. Consumer Demographic: The socio-economic profile, literacy level, and purchasing
behaviour of the target consumer base must be taken into account.
6. Mode of Purchase: The environment in which the product is bought—online, overthe-
counter, or through intermediaries—affects how marks are perceived and distinguished.
These cumulative factors contribute to evaluating whether the overall impact of the allegedly
infringing mark could lead to consumer deception or confusion.
Nature of Deception in Trademark Infringement
Deceptive practices in trademark use can be classified as follows:
• Deception as to Goods: Occurs when a deceptively similar mark is applied to dissimilar
goods, thereby misleading consumers into believing that the goods originate from a familiar
source.
• Deception as to Trade Origin: When the impugned mark causes a mistaken belief
regarding the manufacturer or origin of the goods.
• Deception as to Trade Connection: When the marks suggest an affiliation or commercial
relationship between two unrelated entities due to their similarity.
Such instances can significantly impair consumer decision-making and adversely affect the
commercial goodwill of the registered trademark proprietor.
Types of Similarity
The jurisprudence on deceptive similarity recognizes three principal forms of similarity:
1. Visual Similarity: Concerns the overall visual impression of the marks, including layout,
colour, structure, prefix/suffix, and stylisation.
2. Phonetic Similarity: Involves the pronunciation and sound of the marks. For example,
'Zegna' and 'Zenya' or 'Fevikwik' and 'Kwikheal' may be phonetically confusing.
3. Conceptual Similarity: Examines the underlying idea or meaning conveyed by the marks,
such as ‘Gluvita’ and ‘Glucovita’ or ‘Lakme’ and ‘Likeme’.
Mens Rea: Intention to Deceive Not Necessary
Indian courts have consistently held that intention to deceive is not a necessary
precondition for establishing deceptive similarity. The jurisprudence underscores the effect
of the mark on an average consumer over the motive behind its adoption.
• In Kirloskar Diesel Recon Pvt. Ltd. v. Kirloskar Proprietary Ltd. (1995), the Bombay
High Court observed that the requirement to establish mens rea is redundant once goodwill
and reputation are proven.
• In Mahendra & Mahendra Paper Mills Ltd. v. Mahindra & Mahindra Ltd. (2002), the
Supreme Court reaffirmed that likelihood of deception, rather than intention, is the decisive
factor.
• Similarly, in K.R. Chinna Krishna Chettiar v. Sri Ambal & Co. (1970), the Apex Court
emphasized that the probable impact on the average consumer is central to the
determination of deceptive similarity.
Rationale Against Deceptive Similarity
The objective of trademark law is to protect not only the proprietary interests of trademark
owners but also the broader public interest. Trademarks act as indicators of origin, quality,
and association. Allowing deceptively similar marks undermines the distinctiveness of the
original mark, dilutes brand identity, and misleads the public.
Moreover, it compromises the goodwill—a valuable intangible asset—acquired through
consistent usage and consumer trust. The Delhi High Court in Cadbury India Ltd. & Ors.
v. Neeraj Food Products (2007) emphasised that trademark protection exists to prevent
dishonest commercial practices that attempt to ride on the reputation of another’s mark.
Legal Tests to Determine Deceptive Similarity
A trademark may be held deceptively similar when it gives rise to a likelihood of confusion
regarding the source, nature, or affiliation of goods or services. Indian courts rely on a
combination of doctrinal and judicially evolved parameters:
1. Nature and Kind of Marks: Includes overall impression—visual, phonetic, and conceptual
features.
2. Type of Goods or Services: Greater similarity in goods increases the chances of consumer
deception.
3. Nature and Character of Goods: Functional attributes and performance of the products
are taken into account.
4. Target Consumers: Demographics, level of awareness, and the degree of care exercised by
the average consumer matter.
5. Mode of Purchase: Whether the goods are purchased online, at a store, or via prescription
can influence the analysis.
6. Overall Similarity: In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd. (2001),
the Supreme Court introduced the "Rule of Anti-Dissection," which mandates considering
the mark as a whole, rather than dissecting it into individual components.
Also, in Corn Products Refining Co. v. Shangrila Food Products Ltd. (1959), the Court
acknowledged the doctrine of imperfect recollection—a practical approach based on the
understanding that consumers often rely on memory rather than direct comparison.
Judicial Pronouncements
1. Wockhardt Ltd. v. Mahesh Medical & General Stores
• Involved the competing trademarks ‘AZIWOK’ and ‘AZIWIN’ for azithromycin
dihydrate.
• The Court held that average consumer perception, especially in pharmaceuticals, can be
significantly influenced by phonetic similarities.
• Emphasised the relevance of first impression and imperfect recollection.
2. Corn Products Refining Co. v. Shangrila Food Products Ltd.
• Dispute between ‘Glucovita’ and ‘Glvita’.
• The Court ruled in favour of ‘Glucovita’, highlighting the market reputation of the
earlier mark and the likely confusion among consumers of average intelligence.
3. Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.
• Concerned the marks ‘FALCIGO’ and ‘FALCITAB’ in relation to anti-malarial drugs.
• Despite prescription-based purchase, the Supreme Court ruled in favour of Cadila
Healthcare, stressing the public health implications of confusion in pharmaceuticals.

Transboundary Reputation of Trademarks

Introduction
A trademark is a visual representation of goods or services, enabling consumers to identify
and distinguish the origin of such goods or services. It may include the shape of goods,
combination of colours, logos, or coined words. The key purpose of a trademark is to
establish a distinctive link between the goods/services and the proprietor.
Prolonged and consistent use of a trademark creates reputation and goodwill, which, over
time, may expand beyond national boundaries. When the recognition of a trademark extends
beyond the territory where it is physically used or registered, it is said to have acquired
trans-border reputation.
Trans-border or transboundary reputation implies that a trademark gains recognition in a
jurisdiction even without actual physical use, owing to factors such as advertisements,
media publicity, sponsorships, and international presence. It is not essential for the goods
to be sold in a particular country for the mark to be protected under the concept of trans-
border reputation.
Legal Recognition in India
The Indian legal regime, under the Trade Marks Act, 1999, does not expressly define
"transborder reputation", but the judiciary has recognized it through interpretation of
Section 27 (Passing off) and Section 29 (Infringement).
The doctrine emerged due to the growth of globalisation and liberalisation, where
businesses operate and are visible beyond national boundaries. Courts have evolved
jurisprudence to prevent third parties from registering or using deceptively similar marks,
even if the original mark has not been used or registered in India, provided that goodwill
and reputation exist.
Landmark Case Law
1. N.R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583
• Facts: Whirlpool Corporation had registered its trademark ‘Whirlpool’ in India in 1956,
though initially only supplying to the U.S. Embassy. In 1986, N.R. Dongre applied to
register the same trademark.
• Issue: Whether Whirlpool’s trademark, despite limited sales in India, could be
protected based on reputation acquired through international advertisements.
• Held: The Delhi High Court, upheld by the Supreme Court, ruled in favour of
Whirlpool. The Court acknowledged trans-border reputation as a valid ground for
injunctive relief, observing that advertising in international magazines available in
India was sufficient to establish goodwill.
• Significance: This was the first judicial recognition of trans-border reputation in
India. The Court stated that actual commercial presence was not mandatory to claim
passing off, provided the mark had acquired reputation in India.
2. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., 2018 (73) PTC 1
(SC)
• Facts: Toyota, a Japanese car manufacturer, used the mark ‘Prius’ internationally since
1997. Prius Auto Industries, an Indian firm, had registered the same mark in India and
was using it since 2001.
• Issue: Whether Toyota could restrain Prius Auto despite no commercial presence of the
Prius car in India before 2009.
• Held: The Supreme Court ruled in favour of Prius Auto. It applied the Territoriality
Principle, holding that evidence of actual goodwill and reputation within India was
essential. The Court found that Toyota had failed to prove that the advertisements had
significant penetration or influence in India prior to Prius Auto’s use.
• Significance: This judgment marked a departure from Whirlpool by requiring
substantial evidence of reputation and likelihood of confusion within the Indian
market. Mere international reputation without spill-over into the Indian market was
deemed insufficient.
Doctrinal Developments
• Whirlpool Case expanded the scope of protection to global brands with limited or no sales
in India.
• Toyota Case imposed a stricter threshold by insisting on measurable goodwill within
India and clear causal link between reputation and consumer confusion.
• The Supreme Court in Toyota reiterated that actual use or registration is not always
necessary, but mere presence in foreign markets does not automatically entitle
protection in India.
Legal Principles Involved
1. Passing Off (Section 27, Trade Marks Act):
o Must prove goodwill, misrepresentation, and likelihood of damage.
2. Territoriality Principle:
o Protection is based on reputation within the specific jurisdiction.
3. Universality Principle (less accepted):
o Reputation in one or more countries is sufficient to claim protection globally.
Conclusion
Indian courts have adopted a balanced approach, beginning with an inclusive stance in the
Whirlpool case, followed by a more evidence-based and territorial approach in
ToyotaPrius. While trans-border reputation continues to be a viable ground for legal
protection, claimants must establish actual goodwill in the Indian market, particularly
when the mark is not registered or the goods are not sold in India.
The evolution of judicial trends suggests that advertising alone may not be sufficient;
rather, courts require substantial and credible evidence of reputation and potential
consumer confusion to protect trademarks under the doctrine of trans-border reputation.

CASELAWS
CASE- Daimler Benz Aktiegensellschaft v. Hybo Hindustan
Facts of the Case
The Plaintiff, Daimler Benz, the manufacturer of the globally renowned Mercedes Benz
automobiles, brought an action against the Defendant, Hybo Hindustan, who was engaged in
the manufacture and sale of undergarments. The Defendant had adopted the mark “BENZ”
along with a “three-pointed human being in a ring” symbol for its product line. Daimler Benz
alleged that such adoption infringed upon its trademark comprising the word “BENZ” and the
emblematic three-pointed star enclosed within a circle.
The Plaintiff contended that such usage amounted to dilution of their reputed trademark and
sought an injunction to restrain the Defendant from continuing the use of the impugned mark.
Issues for Consideration
1. Whether the Defendant’s use of the mark “BENZ” for undergarments amounts to
trademark infringement despite the parties operating in unrelated industries?
2. Whether the doctrine of dilution is applicable in this context, notwithstanding the lack of
express recognition in statutory law at that time?
Analysis and Legal Reasoning
The Delhi High Court acknowledged the reputation and goodwill attached to the “Mercedes
Benz” mark and its insignia, observing that the brand enjoys widespread recognition across
Indian households despite its limited commercial footprint within India at the time.
The Court categorically held that the mere difference in the line of trade is not sufficient to
justify the use of an identical or deceptively similar mark by an unrelated entity. Emphasising
the uniqueness and stature of the "BENZ" trademark, the Court opined that such names and
marks are not open to appropriation by others, especially for goods of an unrelated nature
such as undergarments. The Judge noted:
“There are marks which are different from other marks. There are names which are different
from other names... The name ‘BENZ’ as applied to a car has a unique place in the world...
There is hardly one who is conscious of the existence of cars/automobiles, who would not
recognize the name ‘BENZ’...”
The Defendant’s argument of “honest and concurrent use” was rejected. Reliance on
Amritdhara Pharmacy v. Satya Deo Gupta and the defence that “Benz” is a common German
surname failed to persuade the Court, which held that global reputation and distinctiveness
outweigh concurrent or descriptive usage in such cases.
The Court observed—though not extensively—that allowing such use would dilute the
mark’s distinctiveness. This was one of the earliest Indian decisions to implicitly apply the
doctrine of trademark dilution, albeit without extensively referring to it by name.
Judgment
The Court granted a permanent injunction in favour of Daimler Benz, restraining Hybo
Hindustan from using the mark “BENZ” or any deceptively similar logo in connection with
its undergarments. The rationale extended beyond mere consumer confusion—it included
protection against the erosion of brand identity, particularly for marks of international
repute.
Key Legal Takeaways
• The trans-border reputation of a mark is relevant and enforceable under Indian trademark
jurisprudence.
• Trademark dilution, though not codified at the time, was judicially acknowledged in
substance. The judgment highlights the need to preserve the distinctiveness and reputation
of famous marks, even where confusion is unlikely.
• The decision recognised that usage of a mark like “BENZ” on an unrelated product such as
undergarments, although not directly competitive, tarnishes the prestige associated with the
original trademark.
 Subsequent Legal Developments
The legal position on trademark dilution was later codified under Section 29(4) of the Trade
Marks Act, 1999, which introduced statutory recognition of dilution as a cause of action.
In ITC Limited v. Philip Morris Products SA, the Delhi High Court laid down the essentials
for establishing dilution under Section 29(4), holding that dilution claims require proof of:
• A well-known mark,
• Use by the defendant without due cause, and
• Resulting in unfair advantage or detriment to the distinctive character or repute of the
registered mark.
Although the Court in ITC v. Philip Morris ultimately dismissed the dilution claim, it
clarified and cemented the legal framework for future cases involving dilution.
Illustrative Analogies and Related Precedents
• The example of “Aple” being used for hair oil potentially diluting the brand “Apple” for
electronics illustrates the concept effectively—the association, not the confusion, is the
harm.
• Similarly, marks like “ROLEX” for watches, “BATA” for shoes, or “AMUL” for dairy
products enjoy entrenched consumer recognition, and unauthorised usage on unrelated
goods would violate the doctrine of dilution.
The case also parallels London Rubber Co. Ltd. v. Durex Products, where the Court allowed
concurrent use. However, unlike “Durex”, “BENZ” was held to be a singularly unique and
distinctive mark, deserving of stronger protection.

2. ITC Limited v. Philip Morris Products SA, 2010 (42) PTC 572 (Del.)
Facts
▪ A dispute occurred between ITC, the Indian Tobacco Giant and Philip Morris and
Others for trademark dilution of ITC owned Welcome group “W” namaste logo by Philip
Marlboro (inverted M) logo to its Marlboro brand of cigarettes in India.
▪ The trademark dilution action filed by ITC was based on the registration and use of its
“W” namaste logo.
▪ The plaintiff (ITC) approached the Delhi High Court for infringement of trademark.
Issue Involved
▪ Whether the plaintiff's W-NAMASTE logo has been infringed by the Defendant,
through dilution?
Observations
▪ The Delhi HC said that Section 29(1) and (2) of the Trademark Act, 1999 establish the
criteria for trademark infringement, emphasizing resemblance or deceptive similarity
between registered marks in relation to similar goods.
o Section 29(4) introduces a distinctive standard for trademark dilution, addressing
dissimilar goods.
▪ While the Act does not explicitly mention dilution, Section 29(4) signifies
Parliament's intent to protect well-known trademarks against exploitation without confusion.
▪ Unlike traditional infringement, dilution requires the plaintiff to establish identity or
similarity, reputation, use without due cause, and detriment or unfair advantage.
▪ The dilution concept, protecting marks across dissimilar products, is a legal evolution
from case law.
▪ The Trademark Act, 1999 codifies protection against dilution, demanding stringent
proof for each element.
▪ Notably, the "deceptively similar" standard is replaced with a higher "identical or
similar" requirement.
▪ Consequently, the Court denied the temporary injunction, emphasizing the need for a
stringent test in dilution cases.
Conclusion
▪ The Court, after taking all facts and circumstances into consideration, held that the
plaintiff is not entitled to a temporary injunction, as sought.