This article begins with a puzzle. Statutory provisions relating to trademark dilution were introduced for the first time into Indian law with the Trade Mark Act of 1999, which came into effect in 2003. Yet since their inception, these provisions have remained on the shelf, largely untouched for half a decade. By contrast, dilution features prominently in litigation based upon the common law tort of passing off. It thus exists in both favoured and relatively ignored forms. In Part II, this Article offers an explanation for why this polymorphism for dilution exists in India. Under passing off, dilution is a newly recognised 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 prior doctrinal developments within the Indian law of passing off, concerning the abolition of the common field of activity requirement and the sufficiency of a transborder or 'spillover' reputation. Dilution is thus qualified as a new type of injury within a familiar tort geared towards preventing consumer confusion. However under the Act of 1999, dilution, in its aspect of blurring or 'detriment to distinctive character', is the basis for an independent action. This article suggests that the statutory provisions require a more narrowly defined harm in order to be triggered and differ in important ways from dilution under passing off, making precedents for the latter unsuitable for the former. Part III concludes by selectively considering the extent to which E.U. and U.S. experiences with dilution could meaningfully inform the future development of the Indian statutory regime. 

available at SSRN: http://ssrn.com/abstract=1273711

click here for publisher's site

click here for publisher's site

Recent developments in trade marks law have called into question a variety of basic features, as well as bolder extensions, of legal protection. Other disciplines can help us think about fundamental issues such as: What is a trade mark? What does it do? What should be the scope of its protection? This volume assembles essays examining trade marks and brands from a multiplicity of fields: from business history, marketing, linguistics, legal history, philosophy, sociology and geography. Each chapter pairs lawyers’ and non-lawyers’ perspectives, so that each commentator addresses and critiques his or her counterpart’s analysis. The perspectives of non-legal fields are intended to enrich legal academics’ and practitioners’ reflections about trade marks, and to expose lawyers, judges and policy-makers to ideas, concepts and methods that could prove to be of particular importance in the development of positive law.

click here for publisher's site

The relationship between Trademarks and Geographical Indications (GIs) has historically been tempestuous. Each of these quibbling siblings, members of the broader family of Unfair Competition law, entitles registrants to the exclusive use of a sign. So what happens when a GI collective and a trademark proprietor lay claim to the same sign within a single jurisdiction? As part of the renewed interest in TRIPs flexibilities and attempts at accommodating or reconciling differences between national laws, this paper explores a newly emerging space that may just be big enough for the both of them. The analysis draws on a recent World Trade Organization (WTO) Panel Report, which identifies the legal foundations for cohabitation. The Report coincides with doctrinal developments at the national and regional level which initially identified this zone of compromise: the geographical 'descriptive use' defence in trademark law. Coexistence is significant as it alters the dynamic of a venerable conflict between trademark and GI regimes, which has been locked in the language of trumps for several decades. Accordingly, this paper introduces the players and describes the game of one-upmanship prior to this development in Part I; outlines the WTO decision in Part II and then draws parallels with doctrinal developments in the EU and US which presaged the possibility of coexistence in Part III. It concludes with an endorsement of coexistence as an equitable solution.

click here for article via Social Science Research Network

The generic use of geographical product names has persisted as the single most controversial issue in Geographical Indications (GI) law for over a century. The controversy is compounded by political compromises at international trade negotiations, with judicial resolutions in multilateral disputes being the exception. One such exceptional case was the recent Feta dispute, where the European Court of Justice (ECJ) considered the test for generic status under the pan-European registered GI regime. The ECJ ultimately upheld the European Commission's finding that Feta was not a commonly used expression for a type of white cheese in brine, instead designating cheese with a specific Greek origin. In the process, the litigation generated an extensive unpacking of the test for genericide. A puzzle posed here was that Feta had been produced in Germany, Denmark and France for several decades. This article revisits the reasons for why this initially significant evidentiary finding was subsequently overshadowed. While generic status is based on a factual enquiry the threshold to be established, the categories of admissible evidence and the hierarchies of their importance all reflect the competing interests at stake. This in turn highlights unresolved tensions in the Unfair Competition heritage of this shadowy branch of Intellectual Property law.

click here for article via Social Science Research Network

The Melton Mowbray Pork Pie litigation provides an invaluable opportunity to revisit the foundations of registered Geographical Indications (GIs), one of the more obscure intellectual property rights in existence today. An association of pie producers sought to register the name as a Protected Geographical Indication (PGI) under EC Regulation 2081/92, thereby gaining exclusive rights to the term. The application was challenged and one of the key issues was the controversial boundary drawing process to delimit the authorised production area. The dispute is presently on hold, pending a reference to the ECJ. Regulation 2081/92 is a compromise informed by two sets of national experiences. It exists at the intersection of French commitments to GI protection based on the registered Appellation d'Origine Controlee, which emerges from the history of wine regulation and the German regime, which is unregistered and grounded predominantly in Unfair Competition Law. This paper argues that the incomplete reconciliation results in a serious structural gap in the Regulation and Melton Mowbray falls into it. It concludes by suggesting ways in which to more appropriately reconcile these two approaches. 

click here for article via Social Science Research Network