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.
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.