Dilution Claims Under Section 29(4) and the Problem of Undefined "Unfair Advantage" - How Ambiguity Enables Dominant Proprietors to Suppress Non-Competing Newcomers
This article is written by Sanvi Jain, pursuing a B.A.LL.B from Institute of Law, Nirma University, Ahmedabad.
This article looks into the structural ambiguity in Section 29(4) of the Trade Marks Act, 1999, on one hand, and the unfair advantage as a vague term as it impacts non-competing entrants into the Indian market on the other. The article suggests that a doctrine aimed at the protection of genuine distinctiveness has come to be used as an instrument of market suppression by dominant proprietors against newcomers in completely different areas of activity because of the lack of any definitional threshold for “unfair advantage.” The article also argues that the result is contrary to the theoretical principles of the dilution doctrine as developed by Schechter and the intent of the legislation which gave rise to its enactment. The three changes suggested are: (1) establishing a statutory definition of "unfair advantage" for use in interpreting the Trademark Dilution Revision Act 2006, as it exists in the United States; (2) introducing a two-step test, first that a plaintiff must prove association, and second that a plaintiff must prove any tangible commercial advantage, into a judicial interpretation of the standard; and (3) restoring the burden of proof to the plaintiff. The author concludes that trademark law must satisfy its purpose by providing clear standards, and not just as a legislative preference, but as a necessary precondition for trademark enforcement.
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