Trade mark dilution- an overview

Trade mark dilution is a concept that can be forgotten about, with many new trade marks owners not knowing what it is. While it may seem unimportant, it can have a big impact on the future of your mark if a case is instigated.

In simple terms, trade mark dilution is the weakening of a well-known or famous brand through its use on other goods or services. While it may seem strange to allow a course of action against the use of a trade mark on completely unrelated goods or services. Trade mark dilution has developed as it was believed famous marks needed a higher level of protection from potential infringement.

When trade marks were first developed, it was understood that their narrow function was to indicate the origin of the goods or services. An example to illustrate this would be an artist signing their work to show it originated from them. However, over time, additional functions have said to develop including protection given to a reputation. Dilution has been said to have developed to protect these additional functions.

Dilution can be found in a number of forms. The key types are dilution by blurring and dilution through tarnishment.

Dilution by blurring is the traditional notion of dilution. This occurs where an identical mark is used on unrelated goods or services to that of a famous mark. There has to be evidence that this use could have an impact on the well-known mark’s uniqueness and distinctiveness. The mark used has to detract customers from the original well known mark therefore reducing the strength of it.

Dilution through tarnishment is a weakening of the distinctiveness of a well-known mark through unauthorised and inappropriate associations. This includes any use of the mark which is critical to its owners or the product or service it represents. Any attempt to attract customers away from the mark owner through criticism will also fall under tarnishment.

While this may not seem relevant to you as a new trade mark owner, it may impact you if you are trying to gain success by riding on the coat-tails of another.

For any more information or guidance, contact Jane at The Trademarkroom

By Ellis Sweetenham