Trademark Dilution in India: Beyond Confusion, Into Identity
- Alisha Rastogi
- Oct 14
- 6 min read
Introduction
In today’s brand economy, trademarks have evolved far beyond their role as source identifiers but also as symbols of reputation and exclusivity. This transformative push into a new doctrinal dimension heightens the plausibility of consumer confusion and loss of distinctiveness, also known as trademark dilution.
The recognition of this terminology in India has been codified in Section 29(4) of the Trade Marks Act, 1999,[1] (hereon the Act) which is intended for the protection of registered, reputed marks against use without due cause aimed at taking unfair advantage of or is detrimental to the distinctive character or repute of the trademark. This provision is a significant departure from the traditional confusion-based test of infringement through its recognition of the commercial value of reputed marks and the origin-function. The doctrinal interpretation of elements such as unfair advantage, detriment and due cause by Courts highlights a gradual evolution from cautious application to a more structured approach.
Judicial Evolution: From Scepticism to Structure
The application of the principles of dilution can be traced back much before being formally legislated. In Daimler Benz Aktiegesellschaft v. Hybo Hindustan[2], the Hon’ble Court restrained the use of the mark “Benz” for undergarments citing dilution by way of association with the engineering giant reflects an embryonic application of this principle by recognising the qualitative harm to the brand’s identity beyond market confusion.
With the enforcement of the Act in 1999, the provisions under Section 29(4) were explicitly engaged. In Louis Vuitton Malletier v. Atul Jaggi[3], the Hon’ble Court held the use of the ‘LV’ monogram on toilet seat covers amounting to tarnishment, thereby recognizing the damage to the brand’s image stemming from degradation through association instead of likelihood of confusion.
More recently, in PepsiCo, Inc. & Anr v. Jagpin Breweries & Anr[4], the Court held that a translation or transliteration of “Miranda” used by another party even for dissimilar goods amounts to infringement owing to the unfair advantage accrued from PepsiCo’s well-established reputation, even if there is no likelihood of confusion. Such developments suggest that while the doctrine and its interpretation continues to evolve, the judicial willingness to enforce claims of dilution is substantial.
Blurring and Tarnishment: Two Dimensions of Dilution
Dilution typically arises in the form of blurring and tarnishement. Blurring refers to the weakening of the mark’s distinctiveness and unique source identification if used in unrelated contexts. For instance, in ITC Limited V. Philip Morris Products SA and Ors[5], the Hon’ble Court acknowledged the essence of harm where similar trade dress threatened to erode singular association of the brand “Marlboro”.
By contrast, tarnishement refers to the phenomenon where a mark’s reputation may be harmed through association with low quality or morally questionable goods or services. The Louis Vuitton case discussed above acts as a well demonstrated example of dilution through tarnishment.
While Indian courts may not explicitly label such distinctions, their interpretation tracks the conceptual structure of the American and European jurisprudence. The recognition of reputational harm by way of dilution of distinctiveness appears to be central to the adjudication of such claims.
The ‘Due Cause’ Clause and Its Doctrinal Ambiguities
Despite the evolving judicial landscape, the enforcement of dilution claims continues to face challenges. The requirement of the impugned use being without due cause functions as a safeguard ensuring legitimate use of a mark do not get entangled within the scope of this doctrine. For instance, in Tata Sons Limited. v. Greenpeace International[6], the Hon’ble Court refused to grant an injunction against Greenpeace from using the TATA logo in a satirical online game which critiqued the company’s environmental practices and held such use as non-commercial and merely political expression. Thereby, crystalising the element of ‘due cause’ as not merely a technicality but doctrinal principle of balancing rights and free expression.
More recently, in Royal Challengers Sports Private Limited v. Uber India Systems Private Limited and Ors[7], although the Plaintiff’s claim for dilution was rejected, the Hon’ble Court illustrated that relevance of ‘without due cause’ and the need for demonstrative detriment or unfair advantage. This underscores the critical role of the ‘due cause’ as a measure of evaluating claims of dilution.
Dilution, Infringement and Passing Off: Drawing the Line
While Dilution may legitimately be considered as an independent cause of action, its overlap with other trademark principles including passing off and infringement may not always be crystal clear. Plaintiffs may often invoke multiple grounds of action including confusion-based infringement and/or dilution and/or common law passing off. The critical distinction lies in the traditional approach of infringement and passing off i.e., misrepresentation and likelihood of confusion and the more dynamic reliance on injury without confusion for evaluating dilution of the distinctiveness and reputational value of the mark. This distinction is particularly relevant for well-established or luxury brands where the brand’s essence lies in controlled, exclusive association rather than source identification.
Nonetheless, in practice, courts may often adjudicate the claims altogether, with an occasional blend of reasoning. As the doctrinal interpretation matures, clearer boundaries between dilution and other forms of infringement become more articulate, especially in cases of digital harm. For instance, in Jaquar Company Pvt. Ltd. v. Villeroy Boch AG[8], the Hon’ble Court acknowledged the use of the mark “ARTIS” would likely take unfair advantage of Jaguar’s “ATRTIZE” and consequently granted interim relief citing both dilution as well as infringement.
Global Comparisons: A Hybrid Indian Model
While European principles rely heavily on elements of ‘reputation’ and ‘unfair advantage or detriment’, they have developed a detailed analytical structure seen across European cases which focuses on demonstrated harm through a more evidence driven query. The European Union Trade Mark Regulation and judicial decisions especially from the Court of Justice of the European Union have shaped a largely evidence-driven approach. For instance, Article 9(2)(c) of Regulation (EU) 2017/1001 on the European Union Trade Mark provides that an EU trade mark shall confer on the proprietor exclusive rights where the use of an identical or similar sign takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark, even where there is no likelihood of confusion.[9]
In contrast, the United State of America has moved towards the Trademark Dilution Revision Act (2006), thereby defining dilution by blurring and tarnishment, requiring the mark to be ‘famous’ among the general public. The statute distinguishes two types of dilution: dilution by blurring, which impairs the distinctiveness of a famous mark, and dilution by tarnishment, which harms its reputation. To assess dilution by blurring, US courts apply a multi-factor test, considering the degree of similarity between the marks, the degree of inherent or acquired distinctiveness of the famous mark, the extent of its recognition, the intent of the user to create an association with the famous mark, and the existence of any actual association between the marks.[10]
India, by contrast, follows a more hybrid approach, offering more flexibility in judicial interpretation, particularly Section 29(4) of the Act which addresses trademark dilution by prohibiting use of a registered mark without due cause that takes unfair advantage of or is detrimental to the distinctive character or repute of the mark, even where the goods or services are dissimilar.[11] However, unlike the EU or US, Indian courts have not always required the mark to meet a strict "fame" threshold, allowing for a more flexible, contextual interpretation. Thus, allowing the courts to tailor decisions to the facts of each case. Although, this dynamic application of the doctrine and a flexible evidentiary framework often brings challenges in terms of consistency of application.
Looking Forward: Dilution as a Strategic Imperative
With brands increasingly facing reputational threats not just from competitors but also digital content, trademark dilution has become a strategic concern. This threat is no longer limited to mere market displacement, but also touches upon identity erosion, potentially causing long-term damage. For brand owners, this calls for a marked shift in their reinforcement strategy. Demonstrating a mark’s reputation now requires more than just registration or sales data; it involves curating the brand’s image across digital and offline platforms, monitoring unexpected sectors, and responding proportionately to misuse.
At the same time, it is also important to refrain from engaging in overzealous enforcement such as against parody or criticism, which can lead to reputational blowback, as courts and the public become more attuned to issues of speech and corporate accountability. At the end of the day, dilution law in India is a work in progress. It stands at the intersection of law, commerce, and culture, and reflects a broader transition in trademark law i.e., from protecting goods to protecting meaning. As jurisprudence continues to evolve, it will be up to both the courts and brand custodians to ensure that the doctrine serves its true purpose i.e., to safeguard the intangible, often undefinable value that well-known marks have come to embody.
Alisha Rastogi
Senior Associate
References:
[2] AIR 1994 Delhi 2369
[3] CS (0S) 1419/2009
[4] 2023:DHC:2945
[5] CS (0S) 1894/2009
[6] 178 (2011) DLT 705
[7] CS (COMM) 345/2025
[8] 2023/DHC/3226
[9] Regulation (EU) 2017/1001, Article 9(2)(c), of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, OJ L 154, 16.6.2017, p. 1–99
[10] 15 U.S.C. § 1125(c)(2)(B)
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