ITC Limited v. Philip Morris Products SA 2010(42)PTC572(Del)

ITC Limited v. Philip Morris Products Case, 2010| Case Summary 

Facts

1. The plaintiff filed a suit for an injunction order restraining the defendant from using a mark that was alleged to be closely similar to and identical to the plaintiff's "WELCOMGROUP" logo.
2. The plaintiff stated that the logo was an essential part of their various registered trademark in respect of several classes and was being used for their hotel services and variety of ready-to-eat food products.
3. The disputed logo was used by the defendant over the packets of cigarettes.

Submissions of the Counsel for the Plaintiff

1. The plaintiff claimed the infringement action, particularly, under Section 29(4) of the Trade Marks Act, 1999 by submitting that all the requirements under S.29(4) were fulfilled.
2. By referring to the case of "Ramdev Food Products Ltd. v. Arvindbhai Rambhai Patel and Ors., 2006 they argued that an action for passing off and infringement can also be raised if the get-up of the disputed mark is like to the registered trademark.

Issue

1. Whether the defendant infringed the registered trademark "WELCOMGROUP of the plaintiff by dilution under S.29(4) of the Trade Marks Act, 1999.

Ratio Decidendi

1. Dilution of a trademark is a species of infringement that protects a registered trademark in case of dissimilar goods. 
2. S.29(4) provides for protection against dilution if every condition provided below are fulfilled:-
1. The disputed mark is identical or similar to the registered mark
2. Injured Mark has a reputation in India
3. Use of the disputed mark is without due cause
4. Use of disputed mark takes an unfair advantage of, or is detrimental to the distinctive character or reputation of the registered trademark.
3. A higher degree of similarity or identity has to be established for an action for dilution because the words in S.29(4) are "identical to or similar with" instead of "deceptively similar" as used in S.29(2). There must be a closest similarity or near identification of the two marks.
4. The overall or "global" look and not a common element of the two marks shall be compared to find the similarity or identity.
5. Although the plaintiff established that ITC WELCOMGROUP acquired distinction in the hospitality industry, yet they failed to establish the conditions placed by S.29(4) to prove the infringement by dilution.
6. The difference between the two products and service ranges is significant.
7. The plaintiff has not shown that it uses its registered mark for its cigarette brands.
8. No evidence of the defendant's mark taking an unfair advantage of or is detrimental to the plaintiff's mark.

Decisions

1. The Court finds no identity or similarity in the overall presentation of the two marks.
2. The Court finds no linkages between the two marks so to defendant's mark will take an unfair advantage of or is detrimental to the plaintiff's mark.
3. No injunction order.