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Availability of Dilution as a Ground for Opposition and Cancellation Proceedings





March 3, 1998 

Sponsoring Committee: Emerging Issues Subcommittee of the INTA Issues and Policy Committee


Resolution

WHEREAS, certain countries do not permit opposition to a trademark application or cancellation of a trademark registration on the ground of dilution, thus denying owners of famous or well-known trademarks the ability to oppose applications or cancel registrations for diluting trademarks. The term "dilution" is intended here to refer to those legal principles, however named, which offer protection to famous or well-known trademarks against an identical or similar trademark regardless of the goods or services of the other party and regardless of the presence or absence of likelihood of confusion or of competition; and

WHEREAS, to strengthen compliance with and fulfill the purpose of Section 16(3) of the WTO TRIPS Agreement, countries need to apply Article 6 bis of the Paris Convention to goods and services which are not similar to those in respect to which a famous or well-known trademark is registered, and to prohibit registration as well as use of conflicting trademarks, in appropriate circumstances;

BE IT RESOLVED, that it is the position of the International Trademark Association that, to whatever extent dilution protection is accorded in a jurisdiction, dilution of a famous or well-known trademark in that jurisdiction should be a ground for opposing a trademark application or canceling a trademark registration.


Background

Allowing owners of famous or well-known marks to oppose a trademark application or cancel a trademark registration based on dilution of their mark will best protect the rights and interests of all parties involved in such disputes, will permit more efficient resolution of such issues, will facilitate administration of the trademark register, and is consistent with international trademark policy.

From the point of view of owners of famous or well-known trademarks, it is not desirable to require registration of a diluting mark to issue in the first instance, subject to later cancellation once a court enjoins the diluting use. Courts may be more reluctant to declare a mark to be diluting and enjoin its use when the mark already enjoys the presumptions and protections afforded by registration, including the certification of the trademark office that the registrant has the right to use the mark. Even in the most clear cut cases, such litigation requires a substantial period of time, entails significant expense, and may make the junior user more intractable once actual use has already begun.

Moreover, the right to oppose a mark on dilution grounds will allow the parties to have the issue resolved early in the process, perhaps before use even commences. A finding of dilution by a trademark office might well cause the applicant to select a different mark prior to the investment of substantial funds, and certainly would give fair notice of the risks involved in going forward. Allowing opposition based on dilution is therefore in the interest of the applicant as well as the opposer.

Recognizing dilution as a ground for opposition is also sound policy from an administrative point of view. Allowing parties to oppose diluting marks will provide a vehicle for preventing such "deadwood" marks from being entered on the register, facilitating both administration by the trademark office and searching and clearance by private parties.

International trademark policy also should be considered, since in the WTO TRIPS Agreement, Section 16(3), the following requirement is stated:

Article 6 bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods and services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

The above language requires WTO member states to apply the provisions of Article 6 bis of the Paris Convention (which by its terms prohibits use and registration of imitations of well-known marks on the same or similar goods) to dissimilar goods under the circumstances described. Recognition of dilution as a ground for opposition or cancellation will thus further strengthen the implementation of international trademark policy by preventing diluting registration as well as diluting use, consistent with Article 6 bis of the Paris Convention as interpreted through Article 16(3) of the WTO TRIPS Agreement.

Trademark offices would bring specialized knowledge and experience to the resolution of dilution issues. The factors to be considered in a dilution case are very similar to those in a case alleging likelihood of confusion, as to which trademark offices have great expertise. Concerns about the administrative burden which may be presented by this measure should not be controlling, given the sound policy considerations which support it. Moreover, it is the opinion of the subcommittee that the added burden would not be unmanageable. The subcommittee has not formulated a position on this issue, but there need be no requirement that the trademark office routinely examine for dilution. By providing that dilution be considered only when raised in opposition or cancellation proceedings, the resources of a trademark office could be conserved while still ensuring that a cost effective forum is available to resolve dilution issues.

For the foregoing reasons, the Issues and Policy Committee requests that the Board of Directors adopt this resolution to address this situation.