TRADE MARK DILUTION AND THE PUBLIC INTEREST

Transcription

1 TRADE MARK DILUTION AND THE PUBLIC INTEREST Ilanah Simon Brunel University, London DIME Conference, 14 September 2006

2 OUTLINE What is dilution? The role of the public interest in TM law Why dilution may not protect the public interest Why dilution does protect the public interest A warning

3 DILUTION: WHAT IS IT? BLURRING harm to distinctiveness TARNISHMENT harm to the image of the mark by unsavoury association UNFAIR ADVANTAGE benefit to the later user

4 LEGISLATIVE FRAMEWORK - US FTDA 1995/ 43(c) Lanham Act and parallel provisions for registrability Famous mark (fame test provided) Later use that causes dilution to the distinctive quality of the mark Dilution defined as: lessening of the capacity of a famous mark to identify and distinguish goods or services ( 45) DON T T need competition OR confusion

5 LEGISLATIVE FRAMEWORK - EU Directive 89/104, Art.5(2) Parallel provisions for registrability, CTMs and in national law Earlier mark with a reputation Similar marks (Dissimilar goods) Detriment to distinctive character Detriment to repute Unfair advantage of distinctive character OR repute Later use without due cause

6 TRADE MARKS AND THE PUBLIC INTEREST Traditional view: trade marks protect public interest by preventing deception protection limited to cases involving (i) (ii) confusion and competing goods (makes confusion more likely and avoids property rights in TMs)

7 DILUTION AND THE TRADITIONAL PI PACT Victoria s s Secret (Sup Ct 2003) Infringement law protects consumers from being misled by the use of infringing marks and also protects producers from unfair practices by an imitating competitor Unlike traditional infringement law, the prohibitions against trademark dilution are not the product of common-law development, and are not motivated by an interest in protecting consumers No need for confusion No need for competition between parties Lack of confusion = uncertain definition wide right without perceived commensurate public interest Perceived as property right for TM owners

8 NEVER MIND THE QUALITY, FEEL THE WIDTH?

9 RECONCEPTUALISING THE PUBLIC INTEREST False dichotomy: confusion not the only feature of TM law protectable in the public interest ECJ in Arsenal v Reed trade mark function = to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin trade marks DO tell people about the origin of goods BUT to do so, s they must be distinctive Enables market with choice for consumers Landes & Posner TMs reduce consumer search costs by enabling consumers to make repeat purchases of goods they find satisfactory COMPARE Schechter

10 DILUTION AND TRADE MARK FUNCTION Blurring protects distinctiveness of trade marks, i.e. their essential function NOT just TM owners Detriment to distinctiveness (EU) Dilution = lessening of the capacity of a famous mark to identify and distinguish goods or services (US) Landes & Posner: increase in consumer search costs consumers will no longer be able to use marks as short cuts harms consumers AND earlier users

11 TESTING TIMES Dilution as protecting distinctiveness good BUT how can it be tested for? Cases have focused on 1. Strength of the earlier mark e.g. its distinctiveness 2. Behaviour of the parties e.g. bad faith by later user 3. Types of injury e.g. confusion; whether earlier mark is less distinctive than it was before 4. Miscellaneous factors e.g. consumer sophistication Tests to date don t t explain how distinctiveness is harmed and so DON T T protect the public interest

12 THANK YOU Weblog: