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Dilution of Well-Known Trademarks: Harmful or Unfair?

Explore the concept of dilution in trademark law and the potential harm or unfairness it can cause. Learn about the EU dilution concept, types of injuries to marks with a reputation, and the importance of well-known trademarks. Discuss the factors considered in determining a reputed trademark and the assessment of harm or risk of harm. Examine the potential shift towards unfair competition and the recognition of goodwill values.

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Dilution of Well-Known Trademarks: Harmful or Unfair?

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  1. Trademark Law InstituteAmsterdam October 15 and 16, 2010 Concepts of marks with a reputation Jan Rosén Professor of Private Law Stockholm University

  2. The EU Dilution Concept Three types of injuries to marks with a reputation following from art. 5 (2) TM Directive: • Blurring – acts detrimental to the distinctive character • Tarnishment – acts detrimental to the repute • Free-riding – taking unfair advantage of the distinctive character or the repute

  3. Dilution – always harmful? • Art. 5 (2) TM Directive: • Two forms of detrimental uses – tarnishment and blurring • Free-riding – no clear detrimental effect but unfair use of distinctive character or repute

  4. What is a well-known TM? • Recognition of TM adding emotional and psychological attributes to products and services – an intangible output based on reputation • A move to broaden TM Law into brand protection • Protection against dilution an over-arching legal remedy?

  5. Concept of a reputed TM • An issue of fact - not a matter of law • Degree of public knowledge/recognition among the relevant sector of the public • All relevant facts of the case: (i) market share; (ii) intensity of use; (iii) geographic extent; (iv) duration of the use; (v) amount of investment • Significant part of the public • Similarity between reputed mark and later sign • Later mark establish a link to the reputed mark.

  6. Use not necessary? • Application denied when there is a risk of dilution: • Swedish Court of Patent Appeals N0 97-065: • ABSOLUT VODKA • TULOSBA AKDOV

  7. Two-step line of reasoning? • (1) Association strong enough to establish a link • (2) risk of injury in the assessment of possible infringement • Relevant factors very similar when deciding existence of detriment/risk of detriment or those used when determining the mental association, the link.

  8. Negative or unsure elements whenassessingprotectionagainstdilution • What is a enough to establish a link? • What is a significant part? • Detriment must mean a change in economic behaviour of the average consumer – proof thereof must be given by the owner of the well-known TM. • What is due cause in art. 5 (2) TM Directive?

  9. Positive assessment of a reputed TM • Dilution proved when one of the functions of a mark is captured by the ”link”. • Possible to prevent free-riding even when no harm is factually demonstrated, if not due cause for the later mark to be in usage. • A shift into unwarranted new areas?

  10. A movecloser to unfaircompetition? • At least the assessment of free-riding has a tendency to move into unfair commercial practise. Strong recognition of goodwill values. • Market Court: worked up positive impression among consumers, an ”attention value”. • Generally harmful if goodwill is used by others - no need to prove harm in the individual case. • TM Law weaker than unfair competition law?

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