TRADEMARK DILUTION
Enhanced protection: trademarks with reputation
It appears that an ample and adequate legal framework is in place for protecting trademarks with a reputation in the EU, but is this really the case, asks Marina Perraki of Tsibanoulis & Partners Law Firm.
trademarks, introduced the optional provision of protection against trademark dilution. T is is namely for protecting trademarks with reputation against an identical or similar sign from being used in relation to dissimilar goods where the use of the later sign takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the prior trademark. T is provision has been implemented in all EU member states and has been extended by the Court of Justice of the European Union (CJEU) to also apply in cases of use relating to similar goods or services. T e Community Trade Mark Regulation 207/2009 includes a similar provision. As the CJEU has confi rmed (Intel v CPM UK),
D
it is suffi cient that only one of the three types of injury exists (detriment to the distinctive character of the earlier mark, detriment to the repute of that mark, or taking unfair advantage of the distinctive character or the reputation of that mark). Detriment to distinctive character lies
parallel to pure dilution—namely, blurring the distinctive character of the mark. Similarly, detriment
to the reputation of the mark is
irective Nos. 89/104/EC and 2008/95/ EC, in place to approximate the laws of EU member states relating to
parallel to tarnishment: the harmful impact of undesirable connotations on the reputation of the mark. Unfair advantage relates to ‘free- riding’ by a third party. It appears from the above that an ample
and adequate legal framework is in place for protecting trademarks with a reputation in the EU. But is this really the case?
Blurring As laid down by the CJEU, with respect to dilution by blurring the trademark owner needs to provide evidence of detriment to the distinctive character of the trademark, either actual and present or seriously likely to occur in the future. Proof that 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 as a consequence of the use of the later mark. T e reputation of the earlier mark and the
calling into mind of the earlier mark need to be proved as well, but this is not suffi cient to establish detriment to its distinctive character. T e CJEU has stated that it is immaterial
whether the owner of the later mark “draws real commercial benefi t from the distinctive character
76 World Intellectual Property Review Annual 2015 World Intellectual Property Review November/December 2014
of the earlier mark”. T erefore, the earlier trademark owner need not claim and prove that the owner of the later trademark has presented increased profi ts as a result of using the mark. However, does the earlier trademark owner
need to claim and prove that its turnover is decreased as a result of the same use? What else could “change in economic behaviour” mean? Dilution by blurring applies primarily to cases
of non-competing goods, where any fi nancial loss is unlikely, at least in the early stages of dilution or serious likelihood of it. T is means that the owner of an earlier trademark with reputation that does not have any fi nancial data to support the dilution by blurring claim, or has not (yet) suff ered any fi nancial loss, should in practice be deprived of its right to fi le a mere cease-and-desist dilution by blurring claim. It would also deprive the trademark owner
from protection in cases where the later mark is merely applied for and not used. T is would appear contrary to the wording of the directive.
Applicability issues In Environmental Manufacturing v Offi ce for Harmonization in the Internal Market (OHIM) in May 2012, the General Court was asked to apply the above-mentioned case law. Not doing so, it found that it was not necessary to plead
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