Trademark Dilution (Intended for a non-legal audience)
Updated March 2017
Additional INTA Resources
- What is trademark dilution?
Trademark dilution refers to acts that weaken the uniqueness of a famous trademark, typically as a result of blurring or tarnishment of the famous mark. Unlike trademark infringement, trademark dilution involves use of a mark in connection with goods or services that do not compete with those connected to the famous mark. For example, trademark dilution laws might prevent a harmonica maker from adopting a FERRARI mark on its products, even if no consumers would ever be confused about whether the harmonicas were made by or otherwise associated with the famous car company. Trademark dilution therefore stands for the proposition that some marks are so well known that they deserve protection beyond the standard likelihood-of-confusion analysis for determining trademark infringement.
For a mark to be considered famous, it must have achieved extensive public recognition, which generally means that the mark is instantly recognizable. Brands such as Coca-Cola, IKEA, Sony, and Nike are virtually household names in the global community and would therefore quality as famous marks.
- Which jurisdictions recognize the concept of dilution?
Most countries recognize some form of trademark dilution, though the definition, and elements of, trademark dilution may vary from country to country, as do the resulting penalties.
Jurisdictions that expressly recognize trademark dilution include the United States, the European Union, South Africa, India, and Japan, as well as several Central and South American countries.
Some jurisdictions, such as Canada and Australia, do not recognize trademark dilution per se,but have a similar concept. Canada recognizes “depreciation of goodwill,” which provides a remedy for trademark owners against unauthorized thirdparty use of marks that devalue the goodwill attached to a registered trademark. Likewise, Australia does not use the term “dilution,” but it gives owners of famous marks the right to oppose thirdparty applications for similar marks even when their own famous mark is not registered.
- What are the elements of trademark dilution?
Fame—A trademark must be famous for dilution purposes to allege a claim of trademark dilution. In the United States, a mark must be widely recognized by the general consuming public to be considered famous. In the European Union, being well known is also a required element of dilution, but courts determine the breadth of the required reputation. In most jurisdictions, the courts and the trademark office decide whether a mark is famous or well known on a case-by-case basis. In some jurisdictions, the amount of protection will vary depending on the level of fame that one is able to demonstrate. Given that fame is not static, an owner must prove that a trademark is famous at the moment a dilution claim is made. A recognition issued by an authority one year ago could be enough to prove fame, but recognition of fame three years ago may not be accepted as demonstrating that a trademark is currently famous.
Protects the Strength of a Mark for the Owner—Instead of protecting consumers from confusing the source of (a) competing, (b) similar, or (c) related goods or services because of the similarity of the marks, trademark dilution protects the owner of a famous mark from any entity that would weaken the ability to identify and distinguish the goods or services of the genuine mark.
Necessary Showing—The owner of a famous mark need only show that there is a likelihood of dilution, rather than the actual existence of dilution, to be awarded relief. Generally, tt is expected to be easier to find evidence that dilution is likely occurring rather than actually occurring.
- What are the forms of dilution?
Blurring—Dilution by blurring occurs when a third party uses an identical or virtually identical mark on or in connection with goods and/or services that may be completely different and unrelated to the plaintiff’s goods or services. Dilution by blurring weakens the distinctiveness of a famous mark. Hypothetical examples of dilution by blurring would be a third party’s use of the POLAROID mark for shoes or the ROLLS-ROYCE mark for toothpaste.
Tarnishment—Dilution by tarnishment occurs when a third party uses a famous mark in an inappropriate or unflattering way. Examples of such use would include using an identical or similar mark in association with sexual or offensive content, subject matter that is critical of the mark owner’s beliefs, or subject matter that directly criticizes or attacks the mark owner or its products or services. Oftentimes, this form of trademark dilution may conflict with free speech rights and as such would be considered “fair use” of a trademark. Fair use of a famous trademark may include use of the mark in parodies or criticism of the products or services associated with the mark.
Freeriding—Freeriding occurs when a mark owner receives the benefit of a positive association between that mark and a well-known mark. The Court of Justice of the European Union has described freeriding as an actionable offense, and several countries within the EU (e.g., Germany and Slovakia) refer to the practice as “parasitic exploitation.”
Topic Portal: Dilution
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