WELL-KNOWN TRADEMARKS
similar goods and services, or even completely different and unrelated to those marked by renowned mark, in order to evoke association with goods and services marked by the renowned mark. Such free-riding is weakening the distinctiveness of a famous mark and, at the end of the day, the value and strength of renowned mark is lower.
An oſten cited example of such dilution by blurring was the case of Botox v Botumax (T-131-09) where the court stated that use of the latter mark will no doubt result in dilution of the distinctive character of the earlier mark, especially because ‘botox’ relates to ‘botulinum’ and ‘toxin’, and is not descriptive but, rather, a constructed term.
Dilution by tarnishment also weakens the
distinctiveness of an earlier renowned mark but it occurs when use of the latter mark creates offensive, inappropriate or unflattering associations with the earlier one. Such association diminishes the value of renowned mark. Te case where tarnishment was established was the decision of 12/03/2012, R 297/2011-5 regarding the ‘Kappa’ trademark. In this case, the earlier reputable mark was registered for sports clothing and footwear while the identical ‘Kappa’ mark (except for the figurative element) was filed generally for tobacco and smokers’ items. Tese products create an association with a
rather unhealthy lifestyle that is contrary to sports products. Such
negative connotations would
arguably diminish the reputable character of the earlier mark.
Independently from reasons of blurring or tarnishment, if the renowned mark faces detriment to its distinctive character and reputation, the owner must aggressively protect its mark. Te owner must prove that use of the latter mark would change the economic behaviour of its consumers by stopping or limiting purchase of renowned products. It would be very difficult for a trademark owner to provide such proof. In practice, it must show a non-hypothetical risk of detriment, but it is sufficient to carry out an analysis on the basis of normal practice in the relevant commercial sector and draw logical conclusions.
Terefore, every time an identical or highly similar mark to the renowned one is used without due cause, and such use leads to its dilution, the owner is entitled to undertake all legal measures to cancel the registration and stop its use.
Izabella Dudek-Urbanowicz is head of the trademark and industrial design department at Patpol. She can be contacted at:
izabella.urbanowicz@patpol.com.pl
Izabella Dudek-Urbanowicz is a Polish and European patent attorney. Her key areas of practice include trademarks, industrial designs and domain names. She represents Polish and international clientele in litigation matters before the Polish Patent Office, Polish courts and OHIM. She provides opinions and legal advice on various aspects of trademark and industrial design protection, with special focus on trademark and design searches conducted to check potential registrability. She is a member of INTA, ECTA (a member of ECTA Design Committee) and PTMG. She has authored many publications on legal protection of intellectual and industrial property.
www.worldipreview.com
Trademarks Brands and the Internet Volume 2, Issue 2
31
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44