30 - Dilution and Damage beyond Confusion in the European Union

Summary

Dilution is commonly defined as the “gradual whittling away of the distinctive character of a trademark.” An action against dilution is relevant in cases where the consumer is not confused as to the commercial origin of goods or services and where the same or similar sign is used in relation to dissimilar goods or services for which the claimant’s mark is registered. Yet the original concept articulated in the first case considering protection of a trademark beyond the notion of confusion and similarity of goods, the 1924 Odol decision of the Landgericht at Elberfeld in Germany, speaks of damage to the drawing or selling power of a mark leading to the lessening of the mark’s significance in its own market, even if the goods to which the defendant applies the same sign are not in competition with the plaintiff’s goods. This contribution assesses whether the common definition of dilution fully encompasses the type of damage that goes beyond confusing uses. The contribution also addresses the question of whether from an international and domestic European Union perspective the protection of reputational value of a trademark is commensurate to the protection of the “interest of the owner” the Trade Related Aspects to Intellectual Property Rights (TRIPS) Agreement of the World Trade Organization (WTO) defines as a minimum standard in the context of protection of well-known marks under 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention).