ITC v. Philip Morris Products, 2010 (42) PTC 572 (Del.):

FACTS:

The Plaintiff (ITC), one of the biggest private sector firms operating in India, engages in a variety of businesses, including Fast Moving Consumer Goods (FMCG), agrobusiness, the hospitality industry (hotels), etc.: The Plaintiff started operating hotels in 1975 and has been heavily utilising the “WELCOME GROUP” ever since: Under the ITC ‘WELCOME GROUP’ brand, the Plaintiff lists 14 hotels spread across the nation: According to the Plaintiff, Philip Morris (the Defendants) introduced their product (cigarettes) to the Indian market under the name “Marlboro” and has only ever used the traditional, well-known “Marlboro” emblem since that time: The Plaintiff asserts that the Defendant’s mark is virtually identical to or similar to their “NAMASTE WELCOME GROUP” mark, and the Plaintiff claimed that Philip Morris violated its “W-Namaste” logo when it used the “M” emblem on their Marlboro festive pack of cigarettes: The Plaintiff approached the Delhi High Court:

RULE:

Dilution of a Trademark is a surface of Trademark infringement, where the owner of a well-known trademark has the power to prevent others from using their mark on the ground that it kills their uniqueness or lessen their reputation:

ISSUE:

Whether the defendant has infringed the plaintiff’s W-NAMASTE logo through dilution?: If Plaintiff can successfully shown similarity between the two marks, can they also demonstrate that the mark and the goods or services that incorporate it are distinctive and enjoy a good reputation, which, if utilized in the same manner as the defendants are, would diminish such distinctiveness or exclusivity?:

HELD:

The Court held that ITC never used the mark on the cigarettes and that the fame of the ITC brand could not be extended to mid- to high-priced cigarettes: The Court determined that there is no “identity” or “similarity” in the overall appearance of each mark: The Hon’ble Court laid down the main elements of trademark dilution:

• The impugned mark is identical or similar to the well-known mark:

• The well-known or the injured mark has a reputation in India:

• The use of the impugned mark is without due cause:

• The use of the impugned mark leads to the unauthorised use of the well-known mark:

Thus, the trademark dilution cause of action cannot survive: