The provision, according to Article 1 (1) of the TRIPS Agreement, establishes a minimum standard of protection. Therefore countries are free to grant protection in accordance with Article 16 (3) of the TRIPS Agreement not only to registered trademarks but also to unregistered trademarks. The provision also serves to grant protection where both conditions of Article 16 (3) are not fulfilled (namely an indication of a connection between the dissimilar goods and/or services and the owner of the well-known mark and likelihood of damage to the interests of the owner of the well-known mark), but also where only one of those conditions is fulfilled.
If Baeumer’s proposition is correct, then the effect of the second proviso to Article 16 (3), when implemented by WTO contracting states desirous of granting higher standards of intellectual property rights protection pursuant to Article 1 (1), would be to protect the advertising value of a well-known mark by prohibiting the misappropriation of the advertising value of such well-known mark in respect of goods which are not similar to those in respect of which the well-known mark is registered, if the interests of the owner of the registered well-known mark are likely to be damaged by such misappropriation. Further, countries are free to extend such protection to unregistered well-known marks. In short, such an interpretation prohibits a misappropriation of a mark’s advertising value which causes dilution.
Such an interpretation of Article 16 (3) of the TRIPS Agreement is supported by Frederick Mostert, who observes that –
Article 16 (3) will probably serve as a basis for legal action founded on a likelihood of confusion of business connection or sponsorship, [but] it is also possible that this provision will form the grounds, where appropriate, of an action of trademark dilution in the absence of any confusion but where some association of the well-known mark with the goods or services of the registered owner is present.
Such an interpretation also broadly gives effect to the jurisprudence developed by the WTO Appellate Body in interpreting other WTO Agreements, notably the Agreement on Agriculture. The Appellate Body has consistently referred to Article 31 (1) of the Vienna Convention on the Law of Treaties of 1969 in interpreting WTO Agreements. Article 31 (1) of the Vienna Convention provides that;
“A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose.”
In the Japan-Alcoholic Beverages Case, the Appellate Body, applying Article 31 (1) of the Vienna Convention in the context of the Agreement on Agriculture, held that
“One of the corollaries of the ‘general rule of interpretation’ in the Vienna Convention is that interpretation must give meaning and effect to all the terms of the treaty. An interpreter is not free to adopt a reading that would result in reducing whole clauses or paragraphs of a treaty to redundancy or inutility.”
In the Canada-Dairy Case, the Appellate Body similarly held that the task of the treaty interpreter is to ascertain and give effect to a legally operative meaning for the terms of the treaty. It held that the applicable fundamental principle of effet utile is that a treaty interpreter is not free to adopt a meaning that would reduce parts of a treaty to redundancy or inutility.
In United States – Standards for Reformulated and Conventional Gasolene Case, the Appellate Body emphasized that the rules advanced above have attained the status of “customary or general international law”.
The objectives and purpose of the TRIPS Agreement are (a) to promote effective and adequate protection of intellectual property rights, (b) by introducing adequate minimum standards and principles concerning the availability, scope and use of such rights, (c) while expressly providing that contracting states may implement in their domestic laws more extensive protection than those required by the Agreement. If the effet utile principle is then applied to Article 16 (3) in this context, the second proviso should be read independently as prohibiting trademark dilution in order to give effect to Article 1 (1). From this premise, that proviso may now be closely scrutinized to ascertain its scope and extent.
The second proviso of Article 16 (3) extends Article 6bis of the Paris Convention to goods or services which are not similar to those in respect of which the well-known mark is registered, provided the interests of the owner of the registered trademark are likely to be damaged. Article 16 (3) is therefore premised on likelihood of damage, and not on actual damage. The interests of the owner of the registered well-known trademark are likely to be damaged (a) if the use of the conflicting mark is likely to impair or dilute in an unfair manner the unique position of the registered well-known mark in the market, (b) if the use of the conflicting mark is used on goods or services which are of an inferior quality, or of an immoral, unwholesome or obscene nature, thereby diminishing by tarnishment the advertising value of the registered well-known mark in the eyes of the public, (c) if the use constitutes a free ride on the back of the registered well-known mark, or (d) if the use of the conflicting mark genericises the registered well-known mark. When purposively construed, this proviso therefore prohibits dilution by blurring, by tarnishment and by genericisation, since they all damage the interests of the trademark owner in the mark.
It may also be noted that Article 16 (3), when literally interpreted, extends protection only to registered, as opposed to unregistered, well-known marks. Such an interpretation, however, seems self-contradictory and anomalous because Article 6bis of the Paris Convention, which Article 16 (3) seeks to extend, governs protection without registration or use, provided the mark is well-known. Such an interpretation also does not give adequate effect to the ‘minimum protection’ provisions of Article 1 (1). This presumably explains why Dr. Annette Kur argues that the reference to “registered well-known marks” in Article 16 (3) is a drafting error. Dr. Kur notes that early drafts of the TRIPS Agreement contained a provision which required registration as a condition for protection, but that this provision was not included in the final text. Therefore, the inclusion of registration in Article 16 (3) was an oversight when the text was finalized. Dr. Kur’s approach, thus gives effect to Article 1 (1) of the TRIPS Agreement.
In conclusion, it is submitted that Article 16 (3) of the TRIPS Agreement provides for protection that extends beyond the principle of specialty enshrined in Article 6bis of the Paris Convention. When the two provisos to Article 16 (3) of the TRIPS Agreement are read disjunctively, the second proviso protects the advertising value of well-known registered trademarks from dilution. When the two provisos are read conjunctively, Article 16 (3) is limited to prohibiting misappropriation likely to cause confusion as to sponsorship, association or affiliation. While the jurisprudence favours the former interpretation, there may be a need to amend Article 16 (3) of the TRIPS Agreement to pellucidly separate the two provisos. Opportunity may then also be taken to delete references to registered well-known marks in Article 16 (3), and to clearly define the meaning of trademark dilution, possibly using the legislative text of Article 3 of the World Intellectual Property Organization Model Provisions for Protection Against Unlawful Competition, as a legislative precedent.
Although the TRIPS Agreement defines, for the first time in international trademark law, when a mark may be regarded as well-known, such a definition is narrow and not all encompassing. The TRIPS Agreement should also be amended to provide clearer guidelines of when a mark should be regarded as well-known. The salutary effects of such an amendment becomes self-evident if it is remembered that all WTO member countries have to comply with the TRIPS Agreement and that some countries, notably, the United States of America, protect only famous marks from dilution, while the TRIPS provisions require protection for well-known marks.
- The World Intellectual Property Organization Model Provisions For Protection Against Unlawful Competition
In 1996, the World Intellectual Property Organization published its Model Provisions for Protection Against Unfair Competition, which were accompanied by Explanatory Notes. The Model Provisions do not constitute binding international standards, but rather act as guidelines or soft law which countries affiliated with WIPO can use in drafting or improving legislation governing unfair competition in their jurisdictions. Article 3 of the Model Provisions is of particular importance to this discussion because it provides for anti-dilution protection. Article 3 (1) of the Model Provisions provides that,
“Any act or practice, in the course of industrial or commercial activities, that damages, or is likely to damage, the goodwill or reputation of another’s enterprise shall constitute an act of unfair competition, regardless of whether such act or practice causes confusion.”
In terms of Article 3 (1), any act or practice by a trader that damages another trader’s goodwill or reputation constitutes unfair competition, even in the absence of confusion. Such acts or practices, according to the Explanatory Notes, should exceed what is necessary to protect the trader’s legitimate interest, and Article 3 (1) does not apply to cases of truthful and non-misleading comparative advertising. As pointed out by Gielen in Article 3 of the Model Provisions, any act or practice that damages, or is likely to damage, the goodwill or reputation of another’s enterprise will constitute an act of unfair competition, regardless of whether such an act or practice causes confusion. Of course, it will immediately be said that rather a lot of the trading on the market leads to competitors being damaged, without this being capable of being considered an act of unfair competition. Neither is it the intention that all damage be conceived as such. In the notes, it is stated that when the damage is legitimately done, for example, in comparative advertising that is not misleading, there can be no question of unfair competition.
Article 3 (2) then exemplifies instances where damaging another’s reputation or goodwill may, in particular, result in dilution. It provides that;
“Examples of Damaging Goodwill or Reputation:
(a) Damaging another’s goodwill or reputation may, in particular, result from the dilution of the goodwill or reputation attached to
- a trademark, whether registered or not;
- a trade name;
- a business identifier other than a trademark or trade name;
- the appearance of a product;
- the presentation of products or services;
- a celebrity or well-known functional character.”
The Explanatory Notes then observe, in respect of the list of examples set out in Article 3 (2) (a) (i) to (vi), that they should be protected from dilution because of the desire of other traders to take unfair advantage of their uniqueness by engaging in acts or practices which cause the dilution of such signs by blurring or by tarnishment. As such, the Explanatory Notes correctly distinguish the conduct of misappropriation from the damage of dilution.
The Model Provisions note that the damage of dilution can occur outside a competitive relationship between traders, and in respect of non-competing goods, even in the absence of confusion as to the source of the goods. The Model Provisions then set out useful guidelines to be used in determining whether a trader has diluted the advertising value of any of the business signs specified in Article 3 (2) (a) (i) to (vi). In terms of these guidelines, due regard should be taken of (a) the similarity of the defendant’s and the plaintiff’s signs, (b) the circumstances under which the defendant used or misappropriated the advertising value of the plaintiff’s sign without authorization, and (c) the extent of such use.
Distinctive trade dress is similarly protected from dilution under the Model Provisions. It is recognized that where a product is distinctive because of its non-functional aesthetic features, the unauthorized copying or adoption of such features may dilute the product dress distinctive character.Likewise, where a service is presented by a particular trader through marketing techniques like advertising, any imitation of the method of presentation is recognized as having the potential of diluting the advertising value of the method of presentation by blurring.
Article 3(2)(b) of the Model Provisions then defines the term “dilution of goodwill or reputation” for the purpose of the Model Provisions as the lessening of the distinctive character or advertising value of a trademark, trade name or other business identifier, the appearance of a product or the presentation of products or services or of a celebrity or well-known fictional character. In terms of this definition, dilution may not totally destroy the distinctive character or advertising value of a trademark or other business sign. It might have only a “lessening” effect on such distinctive character or advertising value. This is what Schechter termed “the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon noncompeting goods”. In respect of comparative advertising, the Model Provisions note that such a practice should be permitted only to the extent that the advertisement does not unduly damage the goodwill or reputation attached to the relevant business sign. From this, it may be observed that the dilution of the advertising value of a business sign may be caused, for example, by untruthful and misleading comparative advertising, because such practices are unconcealed misappropriation practises which unduly damage the goodwill or reputation attached to the relevant business sign.
Article 3 of the Model Provisions therefore deals with trade practices which damage another trader’s reputation or goodwill. In particular, any act or practice in the course of trade that damages, or is likely to damage, another trader’s goodwill or reputation in his business sign constitutes unfair competition, regardless of whether it causes confusion. A claim for damaging another trader’s reputation or goodwill, in terms of Article 3 (2) (a) and (b) of the Model Provisions, may be based on the dilution of the advertising value or distinctive character of a trademark, whether registered or not.
The WIPO Joint Recommendation Concerning Provisions On The Protection Of Well-Known Marks
In 1999, the Assembly of the Paris Union for the Protection of Industrial Property, and the General Assembly of the World Intellectual Property Organization jointly adopted, at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO which took place in Geneva from 20 to 29 September, 1999, a Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. The policy justification of the Joint Recommendation is found in its preface, which states that,
“The Recommendation is the first implementation of WIPO’s policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles.”
The Joint Recommendation was therefore an international harmonization initiative. It should be noted, however, that the Joint Recommendation is not a treaty and has no binding effect. It arose from a realization that although WIPO and WTO member states are obliged, as a matter of law, to implement both Article 6bis of the Paris Convention and Article 16 (3) of the TRIPS Agreement, there was no consistency of approach in national laws in respect of the protection of well-known marks. The meaning of, and the terminology used to describe, a well-known mark in most cases differed from jurisdiction to jurisdiction. This divergence of approach, meaning and terminology was exacerbated by the impact of developments in information technology, because domain names were increasingly coming into conflict with well-known marks. To remedy the divergence, WIPO convened a Committee of Experts in 1995, which ultimately became the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications. The SCT then produced a draft Recommendation, which was adopted in 1999 as the Joint Recommendation.
The first salient feature of the Joint-Recommendation is that it provides specific criteria for use in determining whether a mark is well-known. It will be remembered that Article 6bis of the Paris Convention had left open the question of when a mark is to be regarded as well-known to the competent authorities of member states. Article 16 (2) of the TRIPS Agreement simply requires WTO member states, in determining whether a trademark is well-known, to take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.
The lack of uniform international criteria of what is a well-known mark meant in turn that different countries used different criteria. In some countries, a numerical threshold of recognition was required to establish that a mark is well-known, while other countries used less mathematical formula. In other countries, a distinction is drawn between famous marks, well-known marks and marks with an outstanding reputation. According to Mostert. Courts and Commentators use a variety of terms to refer to well-known marks, including “notorious”, “famous”, “highly renowned”, “highly reputed”, and “exceptionally well-known” marks. These terms have such a large degree of overlap and inter-connection that their multiple use has caused a fair amount of confusion. In fact, an illustrious panel of experts on well-known marks indicated that such “usage reflects no more than a linguistic muddle”.
Basile Catomeris echoes the views of Frederick Mostert in more lyrical language by observing that;
“The expression “well-known” has been used for decades in Article 6bis of the Paris Convention. It seems to have no ancestor, nor has it, so far, any nomenclature descendant capable of being adopted with no ambiguity in the world of trademarks.”
The Joint Recommendation therefore seeks to achieve harmonization by providing non-exhaustive criteria to assist WIPO member states in determining when a mark is well-known in the member state. According to Article 2 of the Joint Recommendation, all relevant circumstances “from which it may be inferred that a mark is well-known” should be taken into account. The onus is on the owner of the well-known mark to produce information from which it may be inferred that the mark is well-known.
To exemplify, Article 2 (1) (b) sets out a number of interrelated guidelines which may be considered, conjunctively or disjunctively, depending on the particular circumstances of each case, in determining whether a mark is well-known. These include –
- The degree of knowledge or recognition of the mark in the relevant sector of the public: The degree of knowledge or recognition contemplates consumer surveys and opinion polls, without setting out the quantitative results from such surveys or polls necessary for a mark to attain the status of a well-known mark. In this context, the relevant sector of the public includes the interested sector within which the particular goods or services are purchased, or sold, or are distributed, or traded. This is a factual inquiry which depends, (a) on the type of goods or the nature of the services offered, and (b) the economic sphere in which there is a knowledge of the mark. Knowledge by the public at large is not required, except where there is a dispute that the use, registration or application for registration of a mark conflicts with a well-known mark either by impairing or diluting in an unfair manner the distinctive character of the well-known mark, or by taking unfair advantage of the distinctive character of the well-known mark, in which case a WIPO contracting state may “require that the well-known mark be well-known by the public at large”.
- The duration, extent, and geographical area of any use of the mark: According to the Explanatory Notes, these are integral indicators in determining whether a mark is, or is not, well-known. Actual use of the mark in the member state is, however, not a requirement. The focus of enquiry is on use of the mark in neighbouring territories, in territories in which the same language or languages is or are spoken, in territories which are covered by the same electronic or print media, in territories with close trade relations with the state undertaking the enquiry, and use on the internet, and so on.
- The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation at fairs or exhibitions, of the goods and/or services to which the mark applies: Promotion of the mark is to be considered as a category independent of use, and includes both print and electronic advertising, internet-based advertising, and promotion at exhibitions and fairs.
- The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark: Registrations are relevant insofar as they reflect use of the trademark in different countries, by the proprietor or with his licence or approval.
- The record of successful enforcement of rights in the mark, in particular the extent to which the mark was recognized as well-known by competent authorities: Here, enforcement covers opposition proceedings. This guideline underscores the applicability of the principle of territoriality: if a well-known mark is successfully protected against infringement as such, or is recognized as such, in a neighbouring state, this strengthens general perception and acceptance of the mark as a well-known mark in that geographic area. It may also apply in respect of the mark being the subject of attempts by non-authorised third parties to register the same or confusingly similar names as domain names.
- The value associated with the mark: The valuation of marks is now big business, and this fact was advanced as a socio-economic reason necessitating the protection of a mark’s advertising value. The same rationale informs this legislative guideline, which ex industria validates the earlier proposition made ex hypothesi.
In order to prevent the competent authorities of a country from erroneously considering that all the factors specified in Article 2 (1) (b) need to be satisfied, or that other factors not specified in Article 2 (1) (b) cannot be considered, in determining whether a trademark is well-known, Article 2 (1) (c ) expressly states that the factors in Article 2 (1) (b) are only guidelines to assist the competent authority to determine whether a trademark is well-known. As such, it is open to the competent authority to take other factors into account. The second salient feature of the Joint Recommendation is found in Articles 3 and 4, namely the protection accorded to well known marks in cases of conflicts with other business identifiers.
In terms of Article 3 (1) of the Joint Recommendation, WIPO contracting states who at their discretion choose to be guided by the Joint Recommendation to grant a well-known mark protection against conflicting marks, business identifiers and domain names should do so, at least with effect from the time the mark becomes well-known in the contracting state. This means that a contracting state is not obliged to grant protection to an internationally well-known mark, if that mark is not well-known in that state, unless it opts to grant a higher level of protection than that required under the Joint Recommendation. The scope of protection granted to a well-known mark in cases of conflict with other marks is then set out in Article 4. In terms of Article 4 (1) (a), a mark is to be deemed in conflict with a well-known mark if the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation or a transliteration, liable to create confusion, of the well-known mark, and if the mark, or an essential part thereof, is used, or is the subject of an application for registration, or is registered, in respect of goods and/or services which are identical or similar to the goods and/or services to which the well-known mark applies. By prohibiting the use or registration of a sign which is the same, or essentially the same, as a well-known mark for identical or similar goods and/or services, this Article in effect protects the product-distinguishing function of the well-known mark and broadly corresponds to Article 16 (1) of the TRIPS Agreement and Article 6bis (1) of the Paris Convention. As noted by Kunze Paragraph 1 (a) corresponds to the traditional concept of protection against the use or registration of a conflicting mark for similar goods or services, which is liable to create confusion, as contained in Article 6bis of the Paris Convention.
In terms of Article 4 (1) (b), a mark is to be deemed to be in conflict with a well-known mark if the mark, or an essential part thereof, constitutes a reproduction, an imitation, a translation or a transliteration of the well-known mark, regardless of the goods and/or services for which the mark is either used, or is the subject of an application for registration, or is registered, if (i) the use of the mark is liable to create a connection between the well-known mark and the goods and/or services of a third party, and where such use would be likely to damage the interests of the proprietor of the well-known mark, or (ii) the use of the mark is likely to impair or dilute in an unfair manner the distinctive character of the well-known mark, or (iii) the use of the mark would take unfair advantage of the distinctive character of the well-known mark. A few brief comments are proffered in respect of Article 4 (1) (b).
First, article 4 (1) (b) applies to non-competing goods or services. Second, Article 4 (1) (b) (1) seeks to prohibit confusion of sponsorship or association, and broadly corresponds to the first proviso of Article 16 (3) of the TRIPS Agreement. Third, Article 4 (1) (b) (ii) seeks to prohibit the dilution of the well-known mark. Dilution occurs where the use of the conflicting mark is likely to impair or dilute in an unfair manner the distinctive character, advertising value or unique position of the well-known mark in the market place. Article 4 (1) (b) (ii) focuses on dilution by blurring, but equally applies where the conflicting mark is used on goods or services which are of an inferior quality or of an immoral or obscene nature. Thus, dilution by tarnishment is also covered under Article 4 (1) (b) (ii). In its present form, Article 4 (1) (b) (ii) broadly corresponds to the second proviso of Article 16 (3) of the TRIPS Agreement, when read with Article 1 (1) of the TRIPS Agreement. More significantly, however, is the use of the expression “in an unfair manner”, in Article 4 (1) (b) (ii) to qualify the “impairment” or “dilution” of the well-known mark by the use of the conflicting mark. This creates an exception which would admit as legitimate fair uses of a conflicting mark such as are mentioned in Article 17 of the TRIPS Agreement, namely (a) fair use of descriptive terms which take account of the legitimate interests of the trademark owner and third parties; (b) acquiescence of use by the trademark owner; (c) honest concurrent uses; and (d) use on spare parts. What is prohibited by the qualification in Article 4 (1) (b) (ii) are injurious and unjustified misappropriations like untruthful, misleading and disparaging comparative advertising or disparaging parodies of another’s well-known mark, which erodes the mark’s advertising value and causes dilution.
Article 4 (1) (b) (iii) applies where there is, in the mind of the purchasing public, no wrong connection between the source of the goods or services in respect of which the conflicting mark is used, and the owner of the well-known mark. In other words, Article 4 (1) (b) (iii) does not address the harm of confusion of sponsorship. Article 4 (1) (b) (iii) likewise does not apply in cases of dilution by blurring or tarnishment. Rather, according to the Explanatory Notes, it applies where the use of the conflicting mark amounts to a free ride on the goodwill of the well-known mark for the person who uses the conflicting mark. It seeks to give effect to the principle that a person should not reap where he has not sown. Article 4 (1) (b) (iii) is therefore subject to the fair use defences set out in Article 17 of the TRIPS Agreement. It should also be noted that WIPO member states have a discretion to require that for a well-known mark to benefit under the extended protection offered under Article 4 (1) (b) (ii) and (iii), the well-known mark should be known to the public at large. Article 4 (l) (b) overall corresponds to Article 3 of the WIPO Model Provisions for Protection Against Unfair Competition, and to Article 16 (3) as read with Article 1 of the TRIPS Agreement.
The third salient feature of the Joint Recommendation relates to the element of bad faith in using or registering a well-known mark. In terms of Article 4 (1) (d), Article 4 (1) (a) and (b) of the Joint Recommendation does not apply where rights in an otherwise conflicting mark were acquired prior to the time when the mark became well-known in a WIPO contracting state. However, there is one important exception from this principle, namely, when a mark was used or registered, or the application for its registration was filed, in bad faith. It may be noted that Article 6bis (3) of the Paris Convention provides for no time limit for the cancellation of a mark registered in bad faith. Bodenhausen defined bad faith in the context of Article 6bis (3) of the Paris Convention, protecting the distinguishing and source values of a mark, as normally existing when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered.
As defined by Bodenhausen, bad faith uses or registrations of a trademark are prohibited because they conflict with a well-known mark’s product distinguishing function or source function. Predatory intent or bad faith, on the other hand, signifies an infringer’s intent to trade upon the reputation, goodwill or advertising value of a well-known mark by adopting an identical or similar junior mark for dissimilar goods or services. In respect of conflicting marks which are registered but not yet used, or which are the subject of an application for registration, Article 4 (1) (d) of the Joint Resolution should be read as applying not only to applications for the cancellation of the registered mark whose registration was made in bad faith, but equally to refusals of applications where the applicant evidently cannot claim ignorance of a well-known mark as belonging to an owner established or domiciled in a WIPO contracting state and likely to cause confusion of association or dilution. Lastly, it should be noted that the existence of bad faith is judged by a subjective test, and is normally proven by circumstantial, rather than direct, evidence.
In conclusion, it may be noted that the Joint Recommendation (a) contains pellucid guidelines of when a mark may be regarded as well-known, (b) extends protection to (i) the product-distinguishing function of well-known marks in Article 4 (1) (a) by prohibiting the use, registration or application for registration of conflicting marks liable to create confusion with the well-known mark, (ii) the advertising function of a well-known mark in Article 4 (i) (b) (ii) by prohibiting the use, registration or application for registration of conflicting marks which may dilute or tarnish the distinctive character, reputation or advertising value of a well-known mark, (iii) well-known marks by prohibiting acts which amount to a free-ride on the goodwill of the well-known mark, and; (iv) well-known marks against bad faith uses, registrations and applications for registration.
CHAPTER 3 – EVOLUTION OF TRADEMARK DILUTION IN U.S.A. AND U.K.
COMMON LAW PROTECTION
There was no ready acceptance by the courts to protect trademarks against dilution under the common law following Schechter’s article. The first reason accounts to a no precise common law definition of dilution. In this situation, the courts were hesitant to extend common law protection to dilution claims because they perceived dilution claims as “inviting abuse by monopoly-inclined interests, exposing small businesses to harassment, diminishing the available free use of the language and, as one court feared, swallowing up all competition in the claim of protection against trade name infringement”. The second reason relates to the origins of the misappropriation doctrine itself as part of the United States general law of unfair competition. Apparently, the doctrine of misappropriation was born in 1918 in the United States Supreme Court decision in International News Service v Associated Press. This case occurred during World War 1, and AssociatedPress, the plaintiff, and International News Service, the defendant, were competitors in the news gathering business. AP used to gather “hot news” from Europe, which it would send to its subscribing newspapers in the American East Coast and West Coast. INS used to take AP’s hot news items from publicly distributed newspapers and telegraph them to newspapers on the West Coast that subscribed to the INS system. AP’s complaint was that INS was misappropriating its hot news items which AP had gathered at great expense and effort.
The misappropriation in INS v AP did not at that time fit into any identifiable category of unfair competition. It was not an appropriation of confidential information, since INS took the hot new items from publicly distributed newspapers which were already sold in New York. It was not misrepresentation or palming off because INS did not misrepresent the true source of the hot news items. Moreover, the conduct of INS did not amount to copyright infringement, because the news items were not copyrightable, since what INS appropriated was the underlying news items, not the method of expression in the news items. The United States Supreme Court concluded that INS actions constituted a new form of misappropriation and held that:
“It is no answer to say that complainant spends its money for that which is fugitive or evanescent to be the subject of property… In a court of equity, where the question is one of unfair competition, if that which complainant has acquired fairly at substantial cost may be sold fairly at substantial profit, a competitor who is misappropriating it for the purpose of disposing of it to his own profit and to the disadvantage of complainant cannot be heard to say that it is too fugitive or evanescent to be regarded as property. It has all the attributes of property necessary for determining that a misappropriation of it by a competitor is unfair competition because it is contrary to good conscience.”
However, the doctrine seemed to have beenjudicially abandoned in Sears, Roebuck & Co v Stiffel & Co, when the United States Supreme Court held that if an article was not protected by a federal patent or copyright statute, state courts could not forbid others to appropriate that article under unfair competition laws. In Goldstein v California, a case which dealt with the constitutionality of California’s record and tape piracy statute, the United States Supreme Court however resiled from its Sears decision, and held that the misappropriation doctrine applied where Congress had not indicated that it wished to regulate a subject by federal statute.
When misappropriation of the advertising value of a trademark occurs, what is misappropriated is not the trademark per se, but its distinctiveness, uniqueness, commercial magnetism and selling power. Since there is a substantial difference between the orthodox functions of a trademark on the one hand, and its advertising function on the other hand, it is only fair that under United States common law, the misappropriation of the advertising value of a trademark performing the latter function should be protected by the misappropriation doctrine, because it may ultimately result in the dilution of the trademark.
THE FEDERAL TRADEMARK DILUTION ACT (FTDA)
The first federal anti-dilution statute was enacted in the United States in 1996, in the form of the FTDA. The FTDA was an amendment to Section 43 of the Lanham Act, the United States federal trademark statute. There were some doubts initially as to whether the FTDA would pre-empt state anti-dilution statutes, but the majority of court decisions on the issue have resoundingly held that the FTDA does not pre-empt state anti-dilution statutes. Under United States law, a state statute is pre-empted where:
“Congress has explicitly mandated the pre- emption of state law, or has adequately indicated an intent to occupy the field of regulation, thereby displacing all state laws on the same subject. Even in the absence of such express language, or implied congressional intent to occupy the field, we may nevertheless find state law to be displaced to the extent it actually conflicts with federal laws. Such actual conflict between state and federal law exists when “compliance with both federal and state regulations is a physical impossibility”, or when state law “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.”
The FTDA then proceeds to define the expression “dilution” by providing that:
“The term “dilution” means the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties; or likelihood of confusion, mistake or deception.”
The Lanham Act was further amended in 1999 by the Trademark Amendments Act, providing for opposition to the registration of a trademark based on the ground of dilution, and where the mark has been registered, for cancellation of the registration of such mark based on the ground of dilution. The Trademark Amendments Act also amended the Lanham Act by making it clear that dilution in violation of Lanham Act §43 (c ) is not a ground for ex parte refusal of registration by the Patents and Trademark Office and is solely a ground for an inter partes proceeding of opposition or cancellation.
Meaning of Dilution in the FTDA
Mark Sommers criticizes the language adopted in defining the expression “dilution” in the FTDA. In his view, the FTDA:
either omitted certain words that would have cured confusion or added unnecessary words that will cause confusion or failed to define certain terms with sufficient precision. More specifically, [the FTDA] defines “dilution” with terms that describe “blurring” and “whittling away” but not with terms that describe “tarnishment” and “disparagement”, which the drafters apparently intended to include within the scope of “dilution”.
It is accepted here that the federal statutory definition of “dilution” is cast in terms of the theory of dilution by blurring. Just as a drop of iodine dilutes a gallon of pure water, so too will the unauthorized use injure the famous mark’s ability to exclusively focus the attention of the public to its goods.
The exclusion of dilution by tarnishment from the federal statutory definition of “dilution” presented very little problems, if any, in practice, because the courts had recourse to the legislative history of the FTDA in order to “read in” tarnishment dilution into the FTDA. In Moseley – v – Secret Catalogue Inc, Justice Stevens had to refer to the legislativehistory of the FTDA in holding that the FTDA protected against tarnishment. In his Lordship’s view:
“The House of Representatives Subcommittee on Courts and Intellectual Property of the House Judiciary Committee’s report stated that the “purpose of H.R. 1295 is to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it, even in the absence of a likelihood of confusion.”
And in respect of the views of the Senate, his Lordship noted that;
“In his explanation of the Bill, Senator Hatch also stated that it was intended to protect famous trademarks from subsequent uses that blur the distinctiveness of the mark or tarnish or disparage it”.
The definition of “dilution” in the FTDA, despite omitting to include tarnishment, correctly described dilution as the lessening of the capacity of a famous mark to exclusively focus on its goods. In this respect, it corresponded with Article 3(2)(b) of the WIPO Model Provisions for Protection Against Unfair Competition.
Only famous marks were protected from dilution by the FTDA. The FTDA set out an eight factor non-exhaustive list of guidelines for use by the courts in determining whether a mark is famous and distinctive. The list broadly corresponded with the list set out in Article 2(1)(b) of the WIPO Joint Recommendation Concerning Provisions on Protection of Well-Known Marks and the list that was judicially developed by the European Court of Justice in General Motors Corporation v Yplon SA. The list also incorporated theguidelines in Article 16 (2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights. In determining whether a mark is distinctive and famous, the courts considered in the context of the FTDA, factors such as, but not limited to:
- whether the mark is distinctive and famous and the degree of inherent or acquired distinctiveness of the mark: First, the opening paragraph to section 43(c)(l) excluded the misappropriation of a famous mark that “causes dilution of the distinctive quality of the mark”. Second, although only famous marks were protected from dilution under section 43(c), courts were enjoined not to determine whether a mark is famous only, but whether a mark is distinctive and famous. Third, a mark’s inherent or acquired distinctiveness was made a criterion of whether the mark is distinctive and famous. Fourth, although the first paragraph to section 43(c)(l) proscribes misappropriations which cause the dilution of the distinctive quality of the famous mark, the definition of “dilution” in section 45 spoke about the lessening of the capacity of a famous mark to identify and distinguish its goods. The debate has centered on the question whether the requirement of distinctiveness is separate from the requirement of fame, or whether the two terms are synonyms with the same meaning.
McCarthy views the reference to a mark’s distinctiveness in the opening paragraph to section 43(c)(1) of the Lanham Act as a synonym for fame. In his views:
“the better view is that there is in §43(c) no separate statutory requirement of “distinctiveness”, apart from a finding that the designation be a “mark” that is “famous”. Distinctiveness is used here only as a synonym for “fame”. Even if “distinctiveness” is regarded as a separate requirement, it would, in the author’s view, be redundant. To be a “mark” eligible in the first place for protection under §43(c), basic trademark principles dictate that a designation has to be “distinctive” either inherently or through acquisition of secondary meaning
1. Members shall give effect to the provisions of this Agreement. Members may, but shall
not be obliged to, implement in their law more extensive protection than is required by this Agreement, provided that such protection does not contravene the provisions of this
Agreement. Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system and practice (emphasis added).
 86 TRADEMARK REP. 103, at 130.
the Appellate Body, WT/DS103/AB/R and WT/DS113/AB/R, 13 October, 1999, Para. 133.
BE IT RESOLVED, that the International Trademark Association endorses permitting comparative advertising of goods and services so long as such advertising exists within a framework which:
(a) prevents comparative advertisements that are explicitly or implicitly false or misleading; cause a likelihood of confusion or association with the marks or trade names of competitors, or otherwise violate principles of fair competition;
(b) provides effective enforcement mechanisms including preliminary and permanent injunctions, corrective advertising and damages; and
(c) encourages self-regulatory mechanisms if possible.
“It is believed that such a joint recommendation, supported by a large number of countries, belonging to one or both of the [Paris Union or the World Intellectual Property Organization], will have more impact in the foreseeable future than trying to have a new treaty adopted by a diplomatic conference (perhaps in one or two years) which would take many years to enter into force and to be ratified by a substantial number of countries.”
See also Annette Kur, “The WIPO Recommendations for the Protection of Well-Known Marks”  7
– 8 International Review of Industrial Property and Copyright Law, 824 – 845.
Provisions”, Note 69 above, at 22, commenting that:
“The [Joint Recommendation] provisions are an important step forward, compared to the minimum standards of protection provided by Article 6bis of the Paris Convention and Article 16 (2) and (3) of the TRIPS Agreement. They clarify certain points which were open to interpretation, and they considerably improve the protection of well-known marks against dilution. With their adoption, the academic discussion on the differences between well-known marks in the (restrictive) sense of Article 6bis Paris Convention, so-called famous marks, marks of high renown (and other proposed denominations) should belong to the past.
See also the International Trademark Association’s Board of Directors Resolution on Well-Known Marks Protection of 18 September, 1996, available at www.inta.org/boardresolutions, last visited on 27thSeptember, 2004, which provides that
“WHEREAS, lack of consistency in protection of “well-known” marks, including imposition of userequirements within a particular jurisdiction, fosters public deception and commercial dishonesty,as well as poses an untoward risk that a company will be precluded from doing business under itsown mark in a jurisdiction precisely because the strength of its reputation led to a pirating of itsmark; and
WHEREAS, despite international convention and multilateral treaty provisions, many countries do not extend sufficient protection to well-known marks; and
WHEREAS, many countries apply different and conflicting criteria for determining what constitutes a well known mark;
BE IT RESOLVED, that the International Trademark Association endorses protection of well-known marks without requiring registration and/or actual use in the form of sales of goods or services bearing the mark in the jurisdiction in question if such mark has sufficient local reputation to be considered “well-known”.
BE IT FURTHER RESOLVED, that the International Trademark Association endorses consideration of the following factors as criteria for establishing a “well-known” mark:
(a) The amount of local or worldwide recognition of the mark
(b) The degree of inherent or acquired distinctiveness of the mark
(c) The local or worldwide duration of use and advertising of the mark
(d) The local or worldwide commercial value attributed to the mark
(e) The local or worldwide geographical scope of the use and advertising of the mark
(f) The local or worldwide quality image that the mark has acquired
(g) The local or worldwide exclusivity of use and registration attained by the mark,
and the presence or absence of identical or similar third party marks validly
registered for or used on identical or similar goods and services.
Trademark World, 20 – 23, at 21.
nature of the goods and/or services to which the conflicting mark applies.
(1) (b) (iii) should be read as excluding commercially legitimate uses such as, for example, the sale of
spare parts. See further Note 52 above and accompanying text.
Property (Geneva: BIRPI, 1967), at 93.
In sum, to the extent antidilution laws permit an owner of a trademark to succeed on a dilution claim where it cannot establish a likelihood of confusion under traditional trademark analysis, the laws are an obstacle to the accomplishment and execution of the full purposes and objectives of the Lanham Act and, accordingly, should be pre-empted.
During the House of Representatives proceedings on the FTDA, it was stated that:
“It is important to note that the proposed federal dilution statute would not pre-empt state dilution laws. Unlike patent and copyright laws, federal trademark law co-exists with state trademark law, and it is to be expected that the federal dilution statute should similarly co-exist with state dilution statutes.”
World [February] 16 – 19, at 17.
at 24 – 128 (2004) commenting that
The concept [of dilution] was first introduced into the United States in the 1920s and 1930s
through the writings and congressional testimony of Frank Schechter, §24:91, at pp 24 – 164 to 24 – 165.