DILUTION
requirement for finding detriment to the trademark or its proprietor (L’Oréal, pars. 43 and 49). It follows, therefore,
and such a decrease, especially during a global financial crisis?
that in such cases protection may be
granted even when no evidence of harm to the trademark is produced.
With respect to dilution by blurring, the
trademark owner needs to provide evidence of detriment to the distinctive character or the repute of
the trademark (Intel, par. 37), either
actual and present, or seriously likely to occur in the future (Intel, par. 38). Te proof that the use of the later mark is, or would be, detrimental to the distinctive character of the mark requires evidence of change or a serious likelihood of change “in the economic behaviour of the average consumer” of the goods or services for which the earlier mark was registered, as a consequence of the use of the later mark (Intel, par. 77).
Te reputation of the earlier mark and the calling into mind of the earlier mark need to be proved as well, but this is not sufficient to establish detriment to its distinctive character (Intel, par. 71 and 80).
From a doctrinal point of view one may wonder why this change in economic behaviour is necessary and, from a practical point of view, what exactly is
“THE CJEU HAS STATED THAT IT IS IMMATERIAL WHETHER THE PROPRIETOR OF THE LATER MARK ‘DRAWS REAL COMMERCIAL BENEFIT FROM THE DISTINCTIVE CHARACTER OF THE EARLIER MARK’.”
meant by a “change in the economic behaviour” of a consumer and how the required evidence of it can be provided.
Does it cover a decrease in consumption as well as an increase (if it relates to consumption at all)? Can such a change be established on the basis of a decrease in the sales of the earlier trademark and how feasible is it to establish a causal link between the use of the later sign
Te CJEU has stated that it is immaterial whether the proprietor of the later mark “draws real commercial benefit from the distinctive character of the earlier mark” (Intel, par. 78). Such commercial benefit would however correspond to a shiſt of consumers from the goods distinguished by the earlier mark to those distinguished by the later mark and a respective decrease of sales of the former. Indeed, the fact that risk of confusion does not require any economic harm for protection to be granted, unless damages are sought, would lead to the conclusion that no such harm should be required in cases of dilution either; all the more so since dilution applies primarily to cases of non-competing goods, where any financial loss is unlikely, at least in the early stages of dilution.
Te court elaborated further on this notion of change in another decision (C-383/12 Environmental Manufacturing LLP v OHIM on appeal to the General Court T-570/10). It confirmed that it is not sufficient, in order for the consumer’s economic behaviour to be affected, for the consumer to consider the sign having reputation as less attractive, prestigious or exclusive as a result
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