Dilution in the US, Europe, and beyond: international obligations and basic definitions

Abstract

Legal context. The efficacy of trade mark dilution as a cause of action has been cast into doubt by the Supreme Court's actual dilution standard. However, Congress is currently considering the Trademark Dilution Revision Act 2005, removing the actual dilution standard and resolving other difficulties under the present Lanham Act §43(c). This should breathe new life into blurring and tarnishment. It should also be recalled that the EU already has strong laws against dilution and unfair advantage. Key points. This article identifies international dilution obligations in order to determine (in Part II) whether the US and EU are compliant. It identifies problems under the present US dilution law and the solutions offered by the Revision Act. It compares the US proposals with EU dilution protection to determining what the two jurisdictions have to learn from each other. This theme will be continued in the next part of this article, which focuses specifically on blurring/detriment to distinctive character. Practical significance. The introduction of new US legislation will make successful dilution claims easier and will increase the frequency of actions under §43(c). It is vital that trade mark lawyers are familiar with the changes. At the same time, it should be remembered that many of the same outcomes can be achieved under the current European legislative provisions. To the extent that the jurisdictions do not live up to their international dilution obligations, there is scope for proprietors to lobby for even stronger protection.