CHAPTER-IV

Allied Aspects: Passing Off

And Trademark Dilution
___________________________________________________

Like registered trademark, unregistered trademark is also the

property of the holding company and is directly associated with the name,
reputation, goodwill and quality of the products or services of the
company. The statutory law as to the infringement of the registered
trademarks does not exclude the principle of common law i.e. passing off.
According to the principle of passing off nobody has any right to represent
his goods or services as the goods or services of somebody else. Common
law actions for passing off and statutory actions for infringement are
concurrent remedies and the law as to each remains independent of that as
to the other. The changing trends in business and the impact of
globalization have tremendous influence on expanding trademark
protection beyond its traditional limits. The radical example of this trend of
expansion is clearly visible in the concept of trademark dilution. This
chapter takes into account the general principles of law of passing off and
the trademark dilution which is understand as an extension of the concept
of infringement. In India, the concept of trademark dilution is often
confused with passing off. Therefore, it is necessary to examine the

85
distinction between passing off, trademark dilution and infringement of
trademarks. It is also necessary to see how far this statutory protection has
been expanded.

A. Law of Passing off

The law of passing off primarily protects the goodwill or reputation

of the plaintiff. This goodwill exists in the business, goods or services or in
the work which the plaintiff produces or renders. The goodwill of the
business is ordinarily represented by a mark, name, get up or other badge.
When such mark or name is used by an unauthorized person in the course
of trade, it tarnishes the image of the trademark by deceiving the
consuming public. The law of passing off prevents such commercial
dishonesty. It prevents representing one’s goods or services as the goods or
services of somebody else. Nobody has such rights. The law of passing off
has been equated to “unfair competition by misrepresentation” by
Christopher Walow.1 A misrepresentation causing or likely to cause
damage to the reputation or the goodwill of the plaintiff’s business is not
only an unfair trade practice but also violative of the property rights of that
person.2

The action for passing off is the oldest of the modern legal regimes
for the protection of trade symbols. Lord Langdale MR summed up the
rationale for the passing off action in following words:
A man is not to sell his own goods under the pretence
that they are the goods of another man; he cannot be
permitted to practice such a deception, or to use the
means which contribute to that end. He cannot,
therefore be allowed to use names, marks, letters or

1
P.S. Narayanan, Law of Trademarks and Passing off, 685 (Eastern Law House,
Kolkata, 6th edn., 2004, Rept. 2007).
2
D.P. Mittal, Trademarks, Passing off and Geographical Indication of Goods, 1.142
(Eastern Law House, Calcutta, 2nd edn., 2008).

86
 other indicia, by which he is selling are the
manufacture of another person.3
By around 1870 there existed a common law action for passing off in
UK but only damages could be awarded as a remedy and that too on the
proof of fraud. The Trademarks Registration Act, 1875 in UK did not
affect the passing off action directly. For encouraging registration, the 1875
Act provided that no one was entitled to initiate infringement action until
and unless the mark was duly registered. This Act was amended by Act of
1876 permitting infringement action to be brought also on mark in use
before the 1875 Act, which was not granted registration. An action for
infringement was given clear statutory basis in the Trademarks Act, 1905
of UK and also stating that nothing in it affected the passing off action. The
following observations of House of Lords deserve to be noticed in this
connection:

Jurisdiction over passing off which are formerly vested from a very
early date in the court of chancery in this country and has survived to the
High Court, is a jurisdiction which has rested on fraud. It is the commonest
principle of honesty that no man shall be allowed to sell as the goods of
another either his own goods or the goods of some third manufacturer. For
any trader to attempt to sell either his own goods or the goods of a third
person as the goods of the complainant is, of course, a fraud. It is quite true
that it is not necessary in cases of this kind to prove that the defendant
whose conduct is complained of was consciously, or intentionally, doing
the acts complained of before the issue of the writ, but when the facts are
brought to his attention, and when the facts are established in a court of
justice. For him to do that which perhaps he was previously doing

3
Lionel Bently and Brad Sherman, Intellectual Property Law, 671 (Oxford
University Press, New Delhi, Indian edn., 2003).

87
unintentionally or unconsciously before the matters was brought to his
attention constitutes and is a fraud.4

In a landmark judgement in Kaviraj Pandit v. N.P. Laboratories

Ayyangar, J. of Supreme Court said that an action for passing off is a
common law remedy being in substance an action for deceit, that is,
passing off by a person of his own goods as those of another.5

The passing off action arose in the nineteenth century and dependent
upon the simple principle that nobody had any right to represent his goods
as the goods of somebody else.6 In other words, a man is not sell his goods
or services under the pretence that they are those of another man.

In response to change in the nature of trade, the scope of law of

passing off has also changed or widened. It was a judge made law which
tried to ensure the fairness and honesty in the way the trade was conducted.
The law of passing off in nineteenth century was limited to cases in which
the defendant sold goods in substitution for those of the claimant. The tort
had evolved so that in cases involving false endorsement of goods, damage
to reputation was held to have perfected the cause in action.7

a) Passing off – Meaning

The wrong of passing off consists in the fact that no man is entitled
to represent his goods as of another. The law does not, permit anyone to
carry on his business in such a way as would persuade the customers in
believing that the goods or services belonging to someone else are his or
associated herewith. It does not matter whether the latter person does so
fraudulently or not. The gist of conception of passing off is that the goods
4
Quoted from V.A. Mohta, Trademarks, Passing off and Franchising, 676 (All India
Reporter Pvt. Ltd., Nagpur, 1st edn., 2004).
5
AIR 1965 SC 980 at 990.
6
See B.K. Engineering Co. v. U.B.H.I. Enterprises AIR 1985 Del. 210 at 220.
7
Supra note 1 at 690.

88
are in effect telling a falsehood about themselves, are saying something
about themselves which is calculated to mislead.8

The Supreme Court defines “passing off” as under, in Cadila

Healthcare Ltd. v. Cadila Pharmaceuticals Ltd.9 Passing off is said to be
species of unfair trade competition or of actionable unfair trading by which
one person, through deception, attempts to obtain an economic benefit of
the reputation which other has established for himself in a particular trade
or business. The action is regarded as an action for deceit. 10 In the above
said case ‘passing off’ is said to be a species of unfair trading. The unfair
trading as a wrong actionable at the suit of other traders who thereby suffer
loss of business or goodwill. Such person or trader may take action for
passing off to prevent such unfair trade practices.

The Supreme Court also observed that trademark is essentially

adopted to advertise one’s product and to make it known to the purchaser.
It attempts to portray the nature and, if possible, the quality of the product
and over a period of time the mark may become popular. It is usually at
that stage the other people are tempted to pass off their products as that of
the original owners of the mark. That is why it is said that in a passing off
action, the plaintiff’s right is against the conduct of the defendant which
leads to or is intended or calculated to lead to deception.11

Lord Morris has expressed that in solving problems which have

arisen there has been no need to resort to any abstruse principles but rather,
to the straight forward principle that “trading must not only be honest but
must not even unintentionally be unfair.”12

8
Salmond & Heuston, The Law of Torts, 395 (Universal Law Publishing Co. Pvt.
Ltd., Delhi, 20th edn., 1992, 6th Indian Rept. 2002).
9
AIR 2001 SC 1952.
10
Id. at 1964.
11
Ibid.

89
 It was further observed that in the interests of fair trading and in the
interests of all who may wish to buy and sell goods the law recognizes that
certain limitations upon freedom of action are necessary and desirable. In
some situations the law has had to resolve what might at first appear to be
conflicts between competing rights.13 A trader is not permitted to use
trademark whereby although he does not make a false representation to a
direct purchaser of his goods, he enables such a purchaser to make a false
representation to ultimate purchasers of those goods.

b) Concept of Passing off

The concept of passing off is basically a form of tort which has

undergone several changes by the passage of time and due to judicial
interpretations. The varieties of passing off are innumerable. At first it was
restricted to the representation of one person’s goods as those of another.
Later it was extended in business and services. Subsequently, it was further
extended to professions and non-trading activities. Today it is applied in
many forms of unfair trading and unfair competition. Where the activities
of one person cause damage or injury to the goodwill associated with the
activities of another person or group of persons. Salmond states in this
context as under:
The gist of the conception of passing off is that the
goods are in effect telling a falsehood about
themselves, are saying something about themselves
which is calculated to mislead. The law on this matter
is designed to protect traders against that form of
unfair competition which consists in acquiring for
oneself, by means of false or misleading devices, the
benefit of the reputation already achieved by rival
traders.14

12
Parker-Knoll International (1962) RPC 275 at 278, quoted and applied in B.K.
Engineering v. UBHI Enterprises AIR 1985 Del. 210 at 212 (DB).
13
Ibid.
14
Supra note 8.

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 The legal and economic basis of this tort is to provide protection for
the right of property which exists not in a particular name, mark or style
but in an established business, commercial or professional reputation or
goodwill.

(i) Forms of Passing off

The wrong of passing off assumes many forms, of which the

following are the most important:

1. A direct statement that the merchandise or business of the

defendant is that of the plaintiff: Thus, it is an actionable wrong to
seek to sell a publication by falsely putting the name of a well-
known author on the title page.

2. Trading under a name so closely resembling that of the plaintiff

as to be mistaken for it by public: To sell or merchandise under a
name which is closely resembling to the plaintiff’s trade name is a
passing off. The law of passing off prevents such trading which
misleads consuming public.

3. Selling goods under a trade name already appropriated for

goods of that kind by the plaintiff, or under any name so similar
thereto as to be mistaken for it: A trade name means a name under
which the goods are sold or made by a certain person. Such name
has become known to the public as indicating that those goods are
the goods of that person, by established usage. A trade name is
different from descriptive name which tells or indicates about the
name under which goods are sold. Descriptive name indicates

91
 merely the nature of goods and not that they are the merchandise of
any particular person.15

4. Selling goods with the trademark of the plaintiff or any

deceptive imitation attached thereto: A trademark is at common
law any mark habitually attached by a trader to goods manufactured
or sold by him in order to indicate that they are his merchandise and
by established usage known to public as possessing that
significance.16

At common law there is no different between the law of trade names

and that of trademarks. Common law protects each by exactly the
same rule – namely, that no trader must by his use of any name,
mark, description or in any other way pass off his goods as those of
another.

5. Imitating the get up or appearance of the plaintiff’s goods so as

to deceive the public: Any deceptive adoption or imitation of the
get up or appearance of the plaintiff’s good is subject to the same
rules as the deceptive adoption or imitation of his trade name or
trademark. When the characteristics or distinctive style of the
trademark or name or goods are adopted by the dependent, it comes
under the tort of passing off.

(ii) Passing off of the Registered and Unregistered Trademarks

Earlier when there was no trademark law to provide for the

legislation and protection of trademarks the proprietor of an unregistered
trademark was protected under the common law of torts. 17 The action for
15
John Salmond, The Law of Torts, 557 (Sweet and Maxwell Ltd., London, 6th edn.,
1924).
16
Ibid.
17
N.S. Sreenivasulu, Intellectual Property Rights, 150 (Regal Law Publication, New
Delhi, 1st edn., 2007).

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passing off goods is the remedy for false representation. This false
representation tends to deceive purchasers into believing that the goods
which the defendant is selling are really the plaintiffs. The representation
may be by a direct statement to that effect, or as is more usually the case,
by conduct or by way of using the distinctive mark, name, number, design,
get up or appearance of another’s goods. 18 In case of unregistered
trademarks, action against passing off is the proper channel to obtain
remedies. Similarly, a registered trademark enjoys all the rights of an
unregistered trademark. Thus, in addition to infringement, a passing off
action is also brought in case the goods or services are passed off in respect
of a mark which is registered.

(iii) Basis of Passing off

Passing off action has its origin in tort to redress the wrongful
conduct of the defendant in passing off his goods as the goods of the
plaintiff. This might be done by using the trade name, trademark or other
get up of the plaintiff. It might be done by deceiving public or purchasers
to believe that the goods or business were those of the plaintiff. The courts
have wavered between two conceptions of a passing off action namely as a
remedy for invasion of a property right in trade name or trademark and as a
remedy for invasion of personal right not to be injured by fraudulent
competition. The true basis of the action is now held to be that the passing
off injures the right of property in the plaintiff, that right of property being
his right to the goodwill of his business.19

The purpose of passing off action is to protect commercial goodwill

and to ensure that purchasers are not exploited. In addition to it, to prevent
dishonest trading is also the purpose of passing off action. The principle in
18
Ramaswamy Iyer, The Law of Torts 460(Lexis Nexis, New Delhi, 9th edn., 2003,
Rept. 2006).
19
Supra note 8 at 398.

93
regard to trading is that trading must not only be honest but must even
unintentionally be dishonest.20 Passing off action does not merely relate to
goods but may relate to name also. It was observed by Justice D.P.
Wadhwa in K.G. Khosla Compressors Ltd. v. Khosla Extraktion Ltd.21
It was a case pertaining to wrongful use of word ‘Khosla’ which was a well
known name applicable to the Khosla group of companies and was
unauthorisedly and perhaps deceptively misappropriated and misused by
the respondents. In brief, it was held that a person is not entitled as of right
to have a company registered in a name which happened to be his own
name. The defendants were restrained from entering the capital market, and
making the public issue under the name of that of plaintiff’s.

(iv) Distinction between action for deceit and passing off

One essential distinction between an action of deceit and passing off

action is that whereas, in the former deception is on the plaintiff who
alleges that he has been deceived but in the latter, the deception is not on
the plaintiff but on some other. In the former action the plaintiff claims
compensation for the injury caused due to deception practiced on him. In
the latter seeks to protect his proprietory right in his goodwill or business
which is threatened or likelihood of deception or confusion on others. Even
the likelihood of deception or confusion is sufficient. So remedy of
injunction is also available in the passing off action. But in an action of
deceit, since completion of deception is essential damage is the only
remedy available.

(v) New horizons in Law of Passing off

20
Ashwani Kumar Bansal, Law of Trademarks in India, 526 (CLIPTRADE, Delhi,
2nd edn. 2006, updated 2009).
21
AIR 1986 Del. 181.

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 Originally, the law of passing off originated as an action in tort. It
was available to redress the wrongful conduct of the defendant in passing
off his goods as the goods of the plaintiff. This was done by using the trade
name or trademark or business were those of the plaintiff. This tort was in
the misrepresentation by the defendant. He achieved this result by
deception and deceitful use of the trade names, marks or other indications
of the plaintiff. In the course of time passing-off action was extended to
other cases. The focus subsequently shifted to the effect of the
misrepresentation which was injurious to the goodwill or business
reputation of the plaintiff. The passing off action became a remedy for the
defendant’s invasion of the plaintiff right of property in his goodwill, or
business reputation, by his wrongful conduct.

Passing off is of many varieties. With every day improvement in the

technology of the trade, infinite varieties of passing off can spring up.
Television, radio, internet, newspaper advertisements and various other
means have added a new dimension to this tort. The crux of the matter is
not the intention of the defendant in taking a certain name but the likely
effect of such action on the minds of the public. However, innocent may be
the intention, the action will be passing off in case a consumer is likely to
be misled. The setting of law of passing off is result of competition
between the traders. This branch of law is ever expanding.

1. Non-trading activities: The principle of the law of passing off has been
extended and applied to many kinds of businesses, other than trading
business in the ordinary sense. For example professional associations, the
business of looking after children, of organizing exhibitions and beauty
contests.

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2. Charitable Societies: The tort of passing off is sufficiently wide to give
relief to charities engaged in trading type activities. The broad principle of
law governing all such cases has been expressed in following words:
In the interests of fair trading and in the interests of
all who may wish to buy or to sell goods the law
recognizes that certain limitations upon the freedom
of action are necessary and desirable. In some
situations the law has had to resolve what might at
first appear to be conflicts between competing
rights.22
c) Principles governing passing off action

The basic underlying principle of passing off action is that no man is

entitled to represent his goods as being the goods of another. Accordingly,
misrepresentation is actionable because it invades the proprietary rights
vested in the plaintiff. However, it is pre-requisite of any successive
passing off action that the plaintiff’s goods have acquired a reputation in
the mark. It is also a prerequisite that misrepresentation has deceived or is
likely to deceive and that the plaintiff is likely to suffer damage by such
deception. Mere confusion which does not lead to sale is not sufficient. The
characteristics of passing-off action can be categorized in two forms
namely classical formulation of passing off action and modern formulation.

(i) Classical formulation of passing off action

In its classic form, the basis of passing off action was the existence
of a ‘misrepresentation’. Typically, a misrepresentation occurs where a
person says o does something, incorrectly, that the goods or services they
are selling are the goods or service of the claimant. 23 The three elements of
the tort of passing off are the following:

1. Reputation or goodwill

22
[Link] Co. [Link] Ludhiana AIR 1985 Del.210at212.
23
Supra note 3.

96
2. Misrepresentation or deception
3. Damage

These are sometimes referred to as the “classical trinity”. Lord

Oliver elaborated the three elements which a plaintiff must show in order
to make a case of passing off:
First, he must establish a goodwill or reputation
attached to the goods or services which he supplies in
the mind of the purchasing public by association with
the identifying ‘get-up’ under which his particular
goods or services are offered to the public, such that
the get up is recognized by the public as distinctive
specifically of the plaintiff’s goods or services.
Secondly, he must demonstrate a misrepresentation
by the defendant to the public (whether or not
intentional) leading or likely to lead the public to
believe that goods or services offered by him are the
goods or services of the plaintiff… Thirdly, he must
demonstrate that he suffers or likely to suffer damage
by reason of the erroneous belief engendered by the
defendant’s misrepresentation that the source of the
defendant’s goods or services is the same as the
source of those offered by the plaintiff.24
1. Goodwill

The first factor that needs to be proved to establish an action for

passing off is goodwill. Before a trader is able to bring an action, they must
show that they have goodwill and relation to the product or service in
question. Goodwill is a form of intangible property. It is easy to describe
but difficult to define. It is the ineffable thing, the magnetism that leads
customers to return to the same business or buy the same brand. 25 It has
been defined as “the attractive force which brings to custom. It is one thing
which distinguishes an old established business from a new one.” 26 The
business which has not traded would have no goodwill and will not,
24
W.R. Cornish, Intellectual Property, 535 (Universal Law Publisher, Delhi, 3rd
edn., 1996, Rept. 2003).
25
Lionel Bently and Brad Sherman, Intellectual Property Law, 674 (Oxford
University Press, New Delhi, Indian edn. 2003).

97
therefore, in a position to maintain a claim for passing off. Goodwill does
not come to an end with the business to which it relates. Even a defunct
business can bring up an action for passing off. The goodwill can be earned
in a business with the passage of time. The brand name or the get up of the
goods or services must be sufficiently distinctive so that consumer public
can associate the goods or services with the business and with none
another. In the context of goodwill Lord Machaghen said:
Goodwill is the benefit and advantage of the good
name, reputation and connection of a business. It is
the attractive force that brings in custom. It is the one
thing which distinguishes an old established business
from a new business at its first start. The goodwill of
a business must emanate from a particular centre or
source. However, widely or extended or diffused its
influence may be, goodwill is worth nothing unless it
has power of attraction sufficient to bring customers
home to the source from which it emanates. Goodwill
is composed of a variety of elements. It differs in its
composition in different trades and in different
businesses in the same trade. One element may
preponderate here and another element there.27
Goodwill is adversely affected mainly as the result of confusion in
the mind of the public arising out of misrepresentation.28

Delhi High Court in Ellora Industries Delhi v. Banarsi Dass Goel29

has dealt with the subject of goodwill in the context of passing off action in
the following manner:

The purpose for this tort is to protect commercial goodwill to ensure that
people’s business reputations are not exploited. Since business ‘goodwill’
is an asset, and therefore species of property the law protects it against

26
V.A. Mohta, Trademarks, Passing off and Franchising, 684 (All India Reporter
Pvt. Ltd., Nagpur, 1st edn., 2004).
27
Supra note 24.
28
Supra note 25.
29
AIR 1980 Delhi 254.

98
encroachment as such. The tort is based on economic policy, the need to
encourage enterprise and to ensure commercial stability.

It is of essence that the defendant’s activities are likely to compete

with the plaintiff. Where the parties are engaged in a common field of
activity the competition is inevitable. There can be various injuries to
goodwill such as misappropriation of business reputation, diversion of
sales, misappropriation of personality etc. which are species of one gene,
namely unfair or dishonest trading.

2. Misrepresentation

The second factor a plaintiff must have to prove is misrepresentation

by the defendant to the public (whether or not intentional).
Misrepresentation which leads or likely to lead the public to believe that
the goods or services offered by the defendant are the goods or services of
the plaintiff. The misrepresentation by the defendant by which he passes
off his goods or business as those of the plaintiff may be made in any of the
following manners. It may be made by using the mark which is identical
with or a colourable imitation of the trademark of the plaintiff. It may also
be made by using some of the features by which the goods of the plaintiff
are known to the consuming public. Another form may be by direct
statement or in any other way to cause the goods to be taken by ordinary
purchase to be the goods of the plaintiff.30

Hon’ble Judge D.R. Dhanuka of Bombay High Court observed in

Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana
Ltd.,31 as follows in regard to misrepresentation:
The essence of the cause of passing off in its classic
form consists of misrepresentation by the defendant
in respect of the goods marketed by the defendant by
30
Supra note 20 at 535.
31
AIR 1992 Bom. 294.

99
 colourable intention and by using labels resembling
those of others as to be calculated to cause the goods
to be taken by ordinary purchasers for the goods of
the plaintiff. The gist of the conception of passing off
is that the good, are in effect telling a falsehood about
themselves, are saying something about themselves
which is calculated in misled. In its extended
meaning the action of passing off will be
maintainable where the plaintiff could prove injury to
its business or goodwill which could take a variety of
forms even though the defendant is not passing its
goods and the goods of the plaintiff. It is possible that
the defendant partly states the truth in its label or in
the description and partly mixes it up with
description and devices which are misleading to
confuse an unwary purchaser. In such a case, the
defendant cannot escape the liability for its
misrepresentation or actionable wrong of passing
off.32
It was a case of passing off action which was instituted by the
plaintiff, against the defendants for passing off its whisky as the plaintiff’s
whisky. The plaintiff is the well known company, “The Scotch Whisky
Association” a company incorporated in U.K. for protecting and promoting
interests of Scotch whisky trade. It was held that plaintiffs had sufficient
interest and locus standi to prevent passing off Indian Whisky
manufactured by the defendants as Scotch Whisky and to prevent damage
to reputation and goodwill of Scotch Whisky Trade.

(I)Forms of Misrepresentation

The commonest form of misrepresentation involves the use of words

whether oral or written. In some cases this occurs where the defendant
makes a statement links them either explicitly or implicitly to the claimant.
Often, the defendant uses a name that is identical or very similar to the
trade name used by the claimant.

32
Id. at 303-304.

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 In some cases the relevant misrepresentation may be implied from
the action of the defendant. The clearest example of this where the
defendant manufactures his goods or look like the claimant’s. The
consequences of this sort of misrepresentation may lead to the following
consequences namely:

- Misrepresentation as to source.

- Misrepresentation as to quality.

The traditional form of misrepresentation occurs where the

defendant’s action give rise to a suggestion that the defendant’s goods or
services are those of claimant. A misrepresentation may also occur where a
defendant makes a representation about the quality of the claimant’s goods.

(a) Factors to be taken into account in deciding whether the

misrepresentation is deceptive

In deciding whether a defendant’s misrepresentation is deceptive, the

court takes a number of factors into consideration. These include the:

(i) strength of the public’s association with the claimant’s sign;

(ii) similarity of the defendant’s sign;
(iii) proximity of the claimant’s and defendant’s fields of business;
(iv) characteristics of the market;
(v) intention of the defendant;
(vi) whether the defendant has made a disclaimer, and
(vii) whether the defendant is attempting a parody or satire.

(II) Similarity of the Signs

One factor that may influence the court when considering whether a
misrepresentation deceives the public is the similarity of the signs. In this

101
regard, Hon’ble Judges P.V. Rajamannar and Ganapatia Pillai J.J. observed
in S.M.A. Rahiman & Co. v. Kizar Mohd. & Co.33 observed as follows:
It is of course not necessary that there should be
actual evidence that the similarity had deceived the
buyers. Sometimes when a plaintiff comes to court
expeditiously before any perceptible loss has been
sustained it will not be possible to adduce evidence
of actual deception. Then, it would be for the court to
find out if an ordinary buyer would not be taken in by
the close similarly between the trademarks adopted
by the two contesting parties.34
This case was pertaining to passing off action instituted as appeal in
the Madras High Court for dismissing the decree of lower court. The
appellants were traders of lungi business in Madras which was a registered
firm. The plaintiff alleged that their business established and in existence
for over 80 years and their goods have become well known in many places
and territories. The plaintiff alleged that the defendant’s mark resembling
the trademark used by the plaintiff’s has the effect of passing off the
defendants goods as goods manufactured by the plaintiff. The plaintiff,
therefore sought the protection of the court to prevent such passing off. It
was held that S.M. Syed Hazi Abdul Rahiman and Co. the defendants
therein their servants and agents were restrained by perpetual injunction
from using the label or trademark used by plaintiff’s. Except for this
modification of the decree, the appeal was dismissed.

In an another case of Cadila Health Care Ltd. v. Cadila

Pharmaceuticals Ltd.35 Hon’ble judges of SC, B.N. Kirpal Doraiswami
Raju and Brijesh Kumar J.J. observed few factors for deciding the question
of deceptive similarity of the marks:

33
AIR 1959 Mad. 357.
34
Id. at 358.
35
AIR 2001 SC 1952.

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1. The nature of the marks i.e. whether the marks are word marks or
label marks or composite marks i.e. both words and label works.

2. The degree of resemblances between the marks, phonetically similar

and hence similar in idea.

3. The nature of the goods in respect of which they are used as

trademarks.

4. The similarity in the nature, character and performance of the goods

of the rival traders.

5. The class of purchasers who are likely to buy the goods bearing the
marks they require on their education and intelligence and a degree
of care they are likely to exercise in purchasing and/or using the
goods.

6. The mode of purchasing the goods or placing orders for the goods;
and

7. Any other surrounding circumstances which may be relevant in the

extent of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depends upon

facts of each case and the same weightage cannot be given to each factor in
every case.

In this case the appellant and respondent were the pharmaceutical

companies manufacturing various pharmaceutical products. The present
proceedings arose from the suit for injunction filed by the appellant against
the respondents in the District Court at Vadodara. The suit was related to a
medicine sold under the brand name “Falcitab” by the respondent which

103
according to appellant was a brand name similar to the drug sold by it
under its brand name “Falcigo”.36

The Extra Assistant Judge, Vadodara dismissed the interim

injunction application. He came to the conclusion that the two drugs
“Falcigo” and “Falcitab” differed in appearance, formulation and price and
could be sold only to hospitals and institutions. Further, there was no case
had been made out for grant of injunction and there was no chance of
deception or/of confusion specially as the drug was not meant to be sold to
any individual.

The appeal filed by the appellant before the High Court met with no
success. The High Court came to the conclusion that it could not be said
that there was a likelihood of confusion being caused to an unwary
consumer in respect of the disputed marks. It observed that there was little
chance of any passing off one product or the over product. When the
special leave came up for hearing in Supreme Court, the court did not
interfere with the orders passed by the courts below but gave directions
regarding expeditious disposal of the suit. In this judgement, the court gave
reasons for not interfering and also set out the principles which are to be
kept in mind while dealing with an action for infringement or passing off
specially in the cases relating to medicinal products.

3. Damage

The third and final element that a claimant must prove to sustain a
passing off action is that they have suffered, or are likely to suffer, damage
as a result of the defendant’s misrepresentation. Basically, there are four
types of damage that have been recognized by the courts.

These are

36
Id. at 1965.

104
loss of existing trade and profits,

loss of potential trade and profits,

damage to reputation and

dilution.

In each case, there must be more than trivial or minimal damage. The
various types of damage arising from misrepresentation are:

(1) Loss of revenue caused by the diversion of the plaintiff’s business.

(2) Loss of economic opportunities, for example the loss of opportunity

to licence marks in different markets or to franchise.

(3) The inability of the plaintiff to supervise, the quality of the goods or
services offered by the defendants.

(4) The customer’s believe that the inferior goods or services of the
defendants are connected with the plaintiff.

(5) The defendant’s ability to strengthen its position in the market as a

competitor of plaintiff by taking benefits of the plaintiff’s reputation
and erosion of the distinctiveness of the plaintiff’s brand caused by
misrepresentation.

(6) Erosion of the exclusive association with the plaintiff by the use by
third parties, of the plaintiff’s mark.

(ii) Modern Formulation – Essential Characteristics of Passing off

105
 The essential characteristics which must be present in order to create
a valid cause of action for passing off as stated by Lord Diplock 37 are set
out as follows:
(i) a misrepresentation.
(ii) made by a trader in the course of trade.
(iii) to prospective customers of his or ultimate
consumers of goods or services supplied by
him.
(iv) which is calculated in injure the business or
goodwill of another trader, in the sense that
this is reasonably for seeable consequence,
and
(v) which causes actual damage to a business or
goodwill of the trader by whim the action is
brought or in a quia timet action, will probably
do so.38
It was observed that the plaintiff was required to prove each of the
above mentioned five ingredients in an action for passing off.39

d) Passing off under The Trade Marks Act, 1999

The right to the exclusive use of trademark was governed in England

by the Trademarks Act of 1875, amended by the Acts of 1905 to 1994. In
India law related to trademark is governed by The Trademarks Act, 1999.
None of the above acts has affected the common law principle that no man
may sell his goods under a designation which deceive purchasers by
conveying false representation that they are the goods of another person.40

The term ‘passing off’ is not defined in The Trade Marks Act, 1999.
But it is referred to in section 27(2), 134(1)(c) and 135 of the said Act. The
right preserves all the rights and remedies with respect to passing off of
37
Even Warnink B.V. v. J. Townend & Sons [1980] RPC 31 at 93 (HL) quoted from
Scotch Whisky Association v. Pravara Sahakar Shakar Karkhana Ltd. AIR
1992 Bom. 294.
38
Id. at 305.
39
Supra note 37 at 305.
40
P.S. Atchuthen Pillai, Law of Tort, 301 (Eastern Book Company, Lucknow, 8th
Edn., 1987, Rept. 2002).

106
goods and specifically declare that nothing in this Act shall affect the rights
or remedies.41

Section 134(1)(c) refers to jurisdiction of courts to try suits for

passing off arising out of the use of any trademark. 42 Section 135 specifies
the remedies available in respect of passing off arising from the use of a
trademark.43 The Act is silent about cases of passing off where no goods or
no trademarks are involved. Such cases of passing off are also governed by
common law.

e) Difference between Passing off and Infringement Actions

The broad purpose of an infringement action and an action for

passing off is the same. It is to protect industrial property and to prevent a
particular type of deception of public.

An infringement action is based on the exclusive right to the use of a

trademark in relation to certain goods or services conferred by registration
on the proprietor of the mark. The exclusive right is infringed, if a person
uses a trademark which is identical or deceptively similar to registered
trademark. The property sought to be protected is the exclusive right to the
use of the registered trademark, which is precisely defined by statute. The
deception that is sought to be prevented is that arising from the use of a
similar trademark. A plaintiff who is unable to prove an infringement of
any statutory right may still have a remedy at common law, where the

41
Section 27(2) of Trademarks Act, 1999 reads as under:
Nothing in this Act shall be deemed to affect rights of action against any
person for passing off goods or services as the goods of another person or as
services provided by another person or the remedies in respect thereof.
42
Section 134(1)(c) states as follows:
No suit for passing off arising out of the use by the defendant of any
trademark which is identical with or deceptively similar to the plaintiff’s
trademark whether registered or unregistered.
43
Section 135 of the Trademarks Act, 1999 (See Appendix-I).

107
defendant by imitating the marks, claimed by the plaintiff as a trademark,
had been guilty of “passing off.”44

The purpose of passing off action is to restrain a trader from passing

off his goods as the goods of another trader. The basis of such an action is
the misrepresentation by the defendant. The property which is sought to be
protected is property in the business or goodwill injured or likely to be
injured by misrepresentation. Use of a trademark whether registered or
unregistered is only one of the means by which passing off can be affected.

The action for infringement is a statutory right. It is dependent upon

the validity of the registration and subject to other provisions of the Act.
On the other hand the gist of passing off action is that A is not entitled to
represent his goods as goods of B. J.C. Shah and V. Ramaswami JJ. in
Ruston & Hornby Ltd. v. Z. Engineering Co.45 observed that:

In an action for infringement where the defendant’s trademark is identical

with the plaintiff’s mark the court will not enquire whether the
infringement is such as is likely to deceive or cause confusion. But where
the alleged infringement consists of using not the exact mark on the
Register, but something similar to it, the test of infringement is the same as
in an action for passing off. In other words, the test as to likelihood of
confusion or deception arising from similarity of marks is the same both in
infringement and passing off actions.”46

The Supreme Court in Ruston’s case was considering the

resemblance between the word “Rustam” and the word “Ruston”. It was
found that there was deceptive similarity between them and on that basis
granted a decree in favour of the plaintiff, who had complained of

44
Supra note 40.
45
AIR 1970 SC 1649.
46
Id. at 1651.

108
infringement of his trademark and brought an action on the ground of
passing off action.

There are two important aspects of the matter:

1. Difference between the action for passing off and action for
infringement of a trademark;

2. Burden of proof.

These were brought about by the Supreme Court in Durga Dutt

Sharma v. N.P. Laboratories,47 the court observed while an action for
passing off is a common law remedy being in substance an action for
deceit, that is, a passing off by a person of his own goods as those of
another, that is not the gist of an action for infringement. The action for
infringement is a statutory remedy conferred on the registered proprietor of
a registered trademark for the vindication of the exclusive right to the use
of the trademark in relation to those goods. The use by the defendant of the
trademark of the plaintiff is not essential in an action for passing off, but is
the sine qua non in the case of an action for infringement.48

On the question of burden of proof, the Supreme Court observed:

When once the use by the defendant of the mark
which is claimed to infringe the plaintiff’s mark is
shown to be “in the course of trade”, the question
whether there has been an infringement is to be
decided by comparison of the two marks. Where two
marks are identical, no further questions arise; for
them the infringement is made out. When two marks
are not identical, the plaintiff would have to establish
that the mark used by the defendant, so nearly
resembles the plaintiff’s registered trademark as is
likely to deceive or cause confusion and is relation to
goods in respect of which it is registered.49

47
AIR 1965 SC 980.
48
Id. at 990.
49
Ibid.

109
 Thus, the proof of resemblance or similarity in the case of
infringement and passing off is different. The onus to prove deception is on
the plaintiff who alleges infringement. The registered trademark is said to
be infringed by another trademark even without using the whole of it. If the
latter uses one or more of essential features of the trademark. The
identification of an essential feature depends partly on the court’s own
judgement and partly on the evidence that is placed before it.

(i) Infringement need not lead to passing off and vice versa

It is not necessary that a trader who uses an infringing mark upon

goods is also guilty of passing off. In the case of Ruston & Hornby v.
[Link] Co.50 Supreme Court observed that:
It very often happens that although the defendant is
not using the trademark of the plaintiff, the get up of
the defendant’s goods may be so much like the
plaintiff’s that a clear case of passing off would be
proved. It is on the contrary conceivable that
although the defendant may be using the plaintiff’s
mark, the get up of the defendant’s goods may be so
different from the get up of the plaintiff’s goods and
the prices also may be so different that there would
be no probability of deception of the public.
Nevertheless, in an action on the trademark, that is to
say, in an infringement action, an injunction would
issue as soon as it is proved that the defendant is
improperly using the plaintiff’s mark.51
Infringement being statutory remedy, it has been held many times
that there is no violation of statutory rights of a trademark, but there is a
case of passing off at common law.

(ii) Combined action for Infringement and Passing off

50
Supra note 44 at 1650.
51
Ashwani Kumar Bansal, Law of Trademarks in India, 533 (CLIPTRADE, Delhi,
2nd edn., 2006, updated edn. 2009).

110
 A plaintiff may combine, as is often done, infringement and passing
off in one suit. Where the mark is registered, in passing off action the plaint
may be amended by incorporating a plea of infringement. It can be done if
the application for registration of the trademark was referred to in the
plaint. But in an action for infringement alone the plaintiff may not be
allowed to amend the pleading to include a fresh cause of passing off in
order to save the action. In a suit for infringement, the plaintiff adduces
evidence on the basis of which passing off could be pleaded the court may
grant leave to amend the pleadings to include passing off. In some cases
the plaintiff may succeed in infringement but not in passing off and vice
versa.

The difference between suit for infringement of trademark and

passing off action is noted by the courts in certain cases. The points of
distinction are as following.

In an action for infringement of trademark, the plaintiff complains

that the defendant has infringed his trademark by taking in its entirely or by
taking in its entirely or by taking a substantial portion of it, or by
colourably imitating it, and he relies on his statutory title to the exclusive
use of the mark in question for goods of a specified kind. In a passing off
action, the plaintiff’s case is less specialized, for he complains that the
defendant is using means which are calculated to pass off or cause to pass
off the goods of the defendant as and for those of the plaintiff and means
may or may not comprise or consists of the trademark either registered or
not. This was observed by Mathewswaran, J. in the case of P.L. Anwar
Basha v. M. Natarajan.52 This was a suit for infringement of trademark
named ‘Meen Mark beedi’ used by both the plaintiff and defendant. The
application for registration of the trademark used by the plaintiff was

52
AIR 1980 Mad. 56.

111
pending on the date of the plaint. It was held in the case that overall
similarity between the labels of the plaintiff with the label of the defendant
and the identical name used by both are likely to cause confusion or
deception. As regards the competence of the suit for infringement while an
application for registration is pending, the court held that the suit is
competent because under section 23 of the Act the date of registration
should be taken to be the date of application which the certificate of
registration has to bear.

In an another case of Khemraj v. Garg and Co.53 B.C. Mishra J.

opined as under:

Action for infringement of a trademark or copyright is a statutory

remedy and is pursuing it, the plaintiff must prove his title and exclusive
right to use the trade mark in question and further establish that the
defendant has infringed the same by identical or deceptively similar or
colourable imitation of it. On the other hand action for passing off is a
common law remedy and its gist is deceit and not infringement of a right to
exclusive user. What is essential for plaintiff to prove are (1) distinctive
features (2) substantial user and (3) wide reputation.

The law casts an obligation on the defendant not to pass off his
goods as if they have been produced by the plaintiff. Element of deceit may
exist in both kinds of action, but it is of the essence of the passing off
action. Actual deception is not required to be proved but reasonable ground
for apprehending deception must exist.54

53
AIR 1975 Del. 130.
54
Id. at 134.

112
 J.C. Shah and V. Ramaswani K.J. in Ruston & Hornby Ltd. v. Z.
Engineering co.55 pointed out the difference in regards to issues besides
other points of distinction as following:56

Apart from the question as to the nature of the trademark the issue is
an infringement action is quite different from the issue in a passing off
action. In a passing off action the issue is as follows: Is the defendant
selling goods so marked as to lead purchasers to believe that they are the
plaintiff’s goods? But in an infringement action the issue is as follows: Is
the defendant using a mark which is the same as or which is a colourable
imitation of the plaintiff’s registered trademark?

B. Trademark Dilution

Trademark dilution is a relatively new concept is intellectual

property jurisprudence. Over the years litigators have struggled to give
specific boundaries to the concept and courts have struggled with its
interpretation and application. In general, trademark dilution is understood
as an extension of the concept of infringement. The difference lies in the
goods involved in the infringement and dilution. Where the goods are
diametrically different, then the harm caused to a trademark by its use by
an unauthorized person is known as dilution.57

It is believed by many that the doctrine of “trademark dilution” was

for the first time espoused in a German court wherein the manufacturer of a
mouthwash “Odol” was able to obtain cancellation of the same mark being
used in relation to a rail road and steel company.58

55
AIR 1970 SC 1649.
56
Supra note 45.
57
Recognising trademark dilution, available at:
[Link] accessed
on 25.06.2010.
58
Ibid.

113
a) Concept of Trademark dilution

The concept of dilution developed in the 20 th century to protect

trademarks as a property right. It aims at securing the investment that the
trademark owner has made in establishing and promoting a strong mark.
Dilution is a trademark law concept which forbids the use of a famous
trademark in a way that would lessen its uniqueness. 59 In most cases,
trademark dilution involves an unauthorized use of another’s trademark on
different products. For example, a famous trademark used by one company
to refer to software products might be diluted if another company began
using a similar mark to refer to cosmetic products. A trademark is diluted
when the similar or identical trademark used other non-competing market.
Unlike ordinary trademark law, dilution protection extends to trademark
uses that do not confuse consumers regarding who has made a product.
Instead dilution protection law aims to protect strong trademarks from
losing their singular association in the public mind with a particular
product.60

Competitors that cause brand confusion and mislead the public as to

the origin of goods or services may be used for passing off and trademark
infringement. If confusion is caused by trading in similar goods or services,
the loss of revenue can be recovered through damages. However, for two
long the law concerned itself almost exclusive with this type of loss. Other
types of loss were neglected. A famous article by Schechter in 1927
focused on other forms of damage.61 Where the same or similar mark is
used in connection with dissimilar goods or services. This might not affect

59
Trademark dilution, available at: [Link]
last accessed on 25.06.2011.
60
Ibid.
61
Intellectual Property – India, available at [Link] last
accessed on 25.06.2011.

114
sales directly, but the reputation of the trademark damaged or unfairly
appropriated.62

The use of trademark benefits the manufacturer of a product as well

as the consuming public. For the manufacturer, a trademark serves many
purposes. It functions as an advertising tool, facilitating repeat sales and the
successive marketing of new products.63 By protecting trademarks, several
broad goals or furthered as well. This protection to famous trademark in
case of dissimilar goods, protects the image or uniqueness of such mark.
The trademark dilution doctrine is an obvious reflection of the ever
increasing demand for extending more and more protection to famous
trademarks.64

(i) Meaning of Dilution

When the famous trademark is used by the person, other than the
owner in a way that lessens the mark’s uniqueness, the famous trademark is
said to be diluted. Dilution occurs when the image of the famous mark is
muddied. In other words, the singular association of famous trademark
with the products in the minds of public losses. For example, the mark
‘PEPSI’ is singularly associated with a cold drink, when any other product
displaying the word ‘PEPSI’ will lead to an association with the soft drinks
company in the minds of consumers.

(ii) Forms of Dilution

62
Ibid.
63
Michael A. Epstein, Epstein on Intellectual roperty, 7.7 (Wolters Kluwer India,
New Delhi, 5th edn., 2008).
64
T.G. Agitha, “Trademark Dilution: Indian Approach,” 50 JILI 340 (2008).

115
 Dilution may be divided into two related concepts namely (i)
blurring (ii) tarnishment.

(i) blurring or basic dilution, which blurs a mark from association with
only one product to signify other products in other markets. 65 In
other words the link between the mark and the goods is blurred. It
amounts to devaluation of the strength and commercial value of the
marks.

(ii) tarnishment, which is the weakening of a mark through unsavoury or

unflattering associations. The object of such an invasion is to tarnish,
degrade or dilute the distinctive quality of a mark. The act of dilution
of a mark by way of tarnishment is always with regard to well
recognized, strong and famous marks.

There is no need to establish likelihood of confusion as to source,

affiliation and connection. Dilution was defined as ‘detriment to the
distinctive character of a trademark’ and divided in two classes blurring
and tarnishment.66

b) Trademark dilution under Indian Law

The Trade and Merchandise Marks Act, 1958 did not contain any
provisions related to trademark dilution. Statutory provisions relating to
trademark dilution were introduced for the first time into Indian Law with
The Trademarks Act of 1999, which came into effect in 2003. There has
been little discussion about this concept and therefore many
misconceptions have accumulated around it. The provision is found within
section 29(4),67 having regard to internationally recognized standards about

65
Supra note 61.
66
D. Waver and L. Bently, Intellectual Property in the New Millennium, 161
(Cambridge University Press, Rept. 2005).
67
Section 29(4) of the Trademarks Act, 1999 provides as under:

116
the need to protect generally well known marks. A similar provision is
found within section 11(2) of The Trade Marks Act, 1999. 68 Indian law has
long been inspired by UK Legislation and the equivalent infringement
provision is section 10(3) of the UK Trademarks Act, 1994. 69 Unlike the
other provisions dealing with infringement, there is no requirement of
confusion in this section.70

c) Distinction between passing off and trademark dilution

Under passing off, dilution is a newly recognized species of harm,

which flows from a misrepresentation. It is not the basis for an independent
cause of action. Its recognition can be traced to developments within the
Indian law of passing off. These may be the abolition of the common field
of activity requirement and the sufficiency of a trans-border reputation. 71

A registered trade mark is infringed by a person who, not being a registered

proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which-
(a) is identical with or similar to the registered trade mark; and
(b) is used in relation to goods or services which are not similar to those for
which the trade mark is registered; and
(c) the registered trade mark has a reputation in India and the use of the mark
without due cause takes unfair advantage of or is detrimental to, the
distinctive character or repute of the registered trade mark.
68
Section 11(2) of The Trade Marks Act, 1999 states as under:
A trade mark which-
(a) is identical with or similar to an earlier trade mark; and
(b) is to be registered for goods or services which are not similar to those for
which the earlier trade mark is registered in the name of a different
proprietor, shall not be registered if or to the extent the earlier trade mark
is a well- known trade mark in India and the use of the later mark without
due cause would take unfair advantage of or be detrimental to the
distinctive character or repute of the earlier trade mark.
69
Section 10(3) of the UK Trademarks Act, 1994 runs as under:
A person infringes a registered trademark if he uses in the course of trade a sign
which – (a) is identical with or similar to the trademark, and (b) is used in relation to
goods or services which are not similar to those for which the trademark is
registered, where the trademark has a reputation in the United Kingdom and the use
of the sign, being without due cause, takes unfair advantage of or is detrimental to,
the distinctive character or the repute of the trademark.
70
Section 29(4), The Trade Marks Act, 1999.
71
[Link]

117
Thus dilution under passing off is a new type of injury within a familiar
tort. Prevention of consumer confusion is an essential objective of this tort
of passing off. However, under the Trademarks Act, 1999 dilution, in its
aspect of blurring or ‘detriment to distinctive character’ is the basis for an
independent character. It is an expanded form of infringement without the
requirement of consumer confusion. Trademark dilution prevents the
tarnishing of the image of the famous mark and in Indian context well
known marks are provided with more protection. Unlike the other
provisions dealing with infringement, there is no requirement of confusion
in section 29(4) of The Trade Marks Act, 1999.72

d) Difference between infringement and trademark dilution

The Trade Marks Act, 1999 is not explicit about ‘dilution’. It does
not refer to the term. Yet the entire structure of section 29(4) is different
from earlier part. The likelihood of confusion test, which is the essential
basis of trademark law, is not incorporated in relation to infringement of
the kind section 29(4)73 envisions. It requires identity or similarity of the
mark alone but in relation to dissimilar goods. The object of the ‘dilution’
form of infringement is a wider trademark protection to well known
trademarks. There is no presumption about trademark infringement, even if
the identity of the two marks is established. Trademark dilution is an
extended form of protection given by trademark infringement. As in case
of infringement, the goods or services must be same or similar but in this
type of extended infringement, the goods or services are to be dissimilar.
There is need of proof of consumer deception or confusion in infringement
action but no such consumer confusion is needed to be established in
trademark dilution.

Summing Up

72
Supra note 64 at 350.
73
Supra note 67.

118
 The statutory law as to the infringement of the registered trademarks
does not exclude the principle of common law i.e. passing off. According
to the principle of passing off nobody has any right to represent his goods
or services as the goods or services of somebody else. The law of passing
off primarily protects the goodwill or reputation of the plaintiff. In a
landmark judgement in Kaviraj Pandit v. N.P. Laboratories, the Supreme
Court said that “an action for passing off is a common law remedy being in
substance an action for deceit, that is, passing off by a person of his own
goods as those of another.”

The concept of passing off is basically a form of tort which has

undergone several changes by the passage of time and due to judicial
interpretations. Earlier when there was no trademark law to provide for the
registration and protection of trademarks, the proprietor of an unregistered
trademark was protected under the common law of torts. The law of
passing off has been extended and applied to many kinds of businesses
even to non trading activities. The three elements of the tort of passing off
are reputation, misrepresentation and damage. These are sometimes
referred to as “classical trinity”.

The term ‘passing off’ is not defined in The Trade Marks Act, 1999,
but it is referred to in Section 27(2), 134(1)(c) and 135 of the said Act. The
Act preserves all the rights and remedies with respect to passing off of
goods and specifically declare that nothing in this Act shall affect the rights
or remedies in respect thereof.

The broad purpose of an infringement action and an action for

passing off is the same. It is to protect industrial property and to prevent a
particular type of deception on public. Infringement action of a registered
trademark is a statutory remedy and in pursuing it, the plaintiff must prove
his title and exclusive right to use the trademark in question and further
establish that the defendant has infringed the same by identical or
deceptively similar or colourable imitation of it. On the other hand, action

119
for passing off is a common law remedy and its gist is deceit and not
infringement of a right to exclusive user. There is an extended form of
infringement when the famous trademark is used by the person other than
the owner in a way that lessens the mark’s uniqueness, called dilution of
trademark. The Trade Marks Act, 1999 is not explicit about ‘dilution’ and
does not refer to the term. The likelihood of confusion test which is the
essential basis of trademark law is not incorporated in relation to
infringement of the kind section 29(4) of The Trade Marks Act, 1999
envisions. The object of the ‘dilution’ form of infringement is a wider
trademark protection to well known trademarks even the use is on
dissimilar goods and without the requirement of proving confusion or
deception of public.

120