EU TRADEMARKS
The CJEU has provided guidance as to protection against dilution through interpretation of various regulations, but complications remain. Marina Perraki reports.
Dilution theory goes back to 1927 when Frank Schechter published his seminal article Te Rational Basis for Trademark Protection, (40 Harv L Rev 813, 1927) where he talked about the need to protect trademarks (referring to identical marks only) against use by unauthorised third parties on non-similar products. Schechter was arguing based on the background of a German decision issued in 1925 (Landesgericht, Elberfeld, 25 Juristiche Wochenschriſt 502).
In this case, the owner of the mouthwash trademark ‘Odol’ obtained cancellation of the same mark used in relation to steel railroad ties. Such protection was also incorporated into the European Trademark Directives and the European
that “detriment to the distinctive character of the earlier mark” mentioned in Article 5(2) of Directive 89/104/EEC is actually “dilution”, “whittling away” or “blurring” (a categorisation existing in the US legal framework).
Te CJEU confirmed that such detriment is caused when the mark’s ability to identify the goods or services is weakened and this is the case mainly when the earlier mark, which used to elicit immediate association with the goods and services for which it is registered, is no longer capable of doing so. Such injury must be assessed by referring to the average consumers of the goods or services for which the latter mark is requested.
Community
Trademark Regulations. Te Court of Justice of the European Communities (CJEU) has finally come to afford ample protection against dilution through the interpretation of respective legislative texts. But is the protection as abundant in reality?
Landmark CJEU rulings
C-408/01 of 23.10.2003 Adidas Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd
Te CJEU found in this case that similarity of marks is not the same in the context of dilution as in the context of confusion. Consumers who establish a link between marks can prove it sufficient to grant protection against dilution, but not in the case of confusion. Te court confirmed that if a member state transposes the dilution provisions (the inclusion of such provisions in national legislation being up to the member state), it must grant protection against dilution not only in cases of dissimilar but also in cases of similar goods (this was seen by some US scholars as a ‘misunderstanding’ of the dilution doctrine).
C-252/07 of 27.11.2008 Intel Corp Inc v CPM United Kingdom Ltd
Several years later Intel attempted to define dilution within the European context, stating
www.worldipreview.com
Te court explained that a link (sufficient to find similarity of marks, but not to find dilution) exists when the later mark brings the earlier mark to the mind of the public or when the public makes a connection between the conflicting marks. Proof that the use of the latter mark is, or would be, detrimental to the distinctive character of the earlier mark requires evidence of change or a serious likelihood of change “in the economic behaviour of the average consumer” for which the earlier mark was registered, as a consequence of the use of the later mark. Te existence of a link and the detriment both need to be proved by the trademark owner.
C-487/07 of 18.6.2009 L’Oréal SA, Lancôme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd, Starion International Ltd.
Te three separate types of infringement falling within Article 5(2) of the Directive were clearly stated:
a) Detriment to the distinctive character which as per Intel includes, “dilution”, “whittling away” or “blurring”;
b) Detriment to the reputation of the mark, which occurs when the goods or services for which
World Intellectual Property Review Annual 2013 99
“THE COURT ALSO MADE REFERENCE TO A ‘NEW’ TRADEMARK FUNCTION, NAMELY THE ‘INVESTMENT FUNCTION’ WITHOUT PRESENTING ANY ELEMENTS THAT WOULD CONSTITUTE THIS FUNCTION AS SOMETHING DIFFERENT FROM ADVERTISING.”
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