Trademark Dilution and Its Relevance to Trademark Laws

    Trademark dilution is a legal concept which provides the owner of a trademark the legal right to bar others from using the trademark in a manner which would jeopardize its character. Most instances of trademark dilution occur when a trademark with a sufficient level of public visibility is used for products which can, but might not, cause customer confusion.

    The more well-known the trademark in question, the more likely that trademark dilution may apply to it. Laws against trademark dilution are necessary because well-known and reputable trademarks must be protected regardless of whether their unauthorized use causes customer confusion.

    Types of Trademark Dilution

    There are three types of trademark dilution; these are blurring, tarnishment, and free-riding. Of these three, blurring is the most common and basic. Blurring occurs when the unauthorized use of any trademark serves to make the trademark less distinctive. When trademarks are used for products which have no connection to those produced by the trademark owner, the trademark has been blurred. By signifying these unrelated products, the trademark will lose some of its power of association with the products for which it was originally meant.

    Free-riding, a specific form of blurring, is the unauthorized use of a trademark which results in the eventual positive association of the trademark owner’s goods or services with others which are unrelated. Those who free-ride attempt to use a well-known trademark and its associated goods and services to promote their own business activities.

    Tarnishment is a form of trademark dilution which mainly occurs when a trademark is used for products contrary to the corporate values of the trademark owner. Another form of tarnishment is the use of a trademark to criticize or offend the trademark’s owner. 

    Eligibility for Protection Against Trademark Dilution

    Not every trademark can be legally protected against the effects of dilution. In most jurisdictions, laws require the trademark owner to prove that the trademark in question has acquired a minimum level of distinctiveness or renown. In addition, only certain types of trademarks can usually be protected. Those which are either names of people or ordinary words usually cannot receive this protection; only trademarks which are purely brand names or coined terms can.

    In addition, several jurisdictions require the registration of a trademark as a defensive trademark before it may become eligible for protection against dilution. Generally, courts and trademark offices determine whether a particular trademark is eligible on a case-by-case basis. This is because most laws do not explicitly state details which would apply to every alleged case of trademark dilution.

    Legal Action Against Trademark Dilution

    Those who seek to act against trademark dilution must first ensure that the incident in question can be addressed by way of legal action. If the entity which allegedly committed trademark dilution intended to conduct business activities through public recognition of that trademark, diminish that trademark’s reputation, or both, that entity may be liable to legal action and consequences.

    Anyone planning to take legal action must also verify that the other party’s first use of the trademark for business purposes took place after the date on which any trademark laws in the relevant jurisdiction came into force. The extent of the original trademark owner’s use of the trademark pertaining to its exclusive use is another important point to be considered. If this scope is not deemed to be wide enough, legal action cannot be taken.

    Trademark Dilution and Trademark Infringement: Legal Implications

    Trademark dilution is not to be confused with the related but different offense of trademark infringement. Although customer confusion is a common feature of trademark dilution, there is no legal requirement to prove that this confusion has occurred in order to act against dilution. On the other hand, trademark laws dictate that courts must assess the likelihood of confusion before making a decision on trademark infringement.

    Additionally, there are more possible consequences which one who has committed infringement may experience when compared to those which a trademark dilution offender may suffer. The only possible legal consequence of dilution is the payment of damages by the defendant to the trademark owner. However, those who have committed trademark infringement must repay all profits obtained through the infringement, immediately cease use of the trademark, and pay additional damages if the offender deliberately violated the trademark owner’s rights.

    This article is brought to you by Exy Intellectual Property Malaysia and Singapore.