Trademark dilution and its types

The dilution phenomenon occurs when a third party uses a mark or trade name in commerce that is sufficiently similar to a famous mark such that the consumer’s perception of it changes, even if the infractor’s mark involves goods or services totally unrelated to those associated with the famous mark.

 

Trademark dilution often results in diverted sales, which is due to the mark’s weakened distinctiveness including the associations and/or reputation connected with it (2002).

Thus, trademark dilution is divided into three types: tarnishment, blurring and adulteration. Tarnishment occurs when the infringing mark portrays the infringed mark in a negative light and uses elements morally repulsed by society in general. It may also happen when the infringer is offering low quality products, hindering the trademark’s owner reputation.

 

Blurring, on the other hand, happens when the distinctiveness of a mark is impaired by association with another similar mark or trade name. Finally, adulteration happens when a third party modifies the basic characteristics of a trade name and/or mark. According to the author, this type of dilution originated after a case involving two American tractor companies.

 

 

The infringer showed, through pejorative propaganda, a deer running away after seeing its competitor’s tractor, alluding to the inert deer in John Deere’s symbol. In this case, the original trademark symbol, which is a static deer, was adulterated and

was shown moving.

 

Cabral (2002) identifies that trademark dilution is an offense to its integrity, allowing companies to pursue actions against third parties who use its mark and/or symbols in a negative way. Although trademark dilution does not negatively affect the owner (e.g. consumer confusion), there still may be long-term consequences. Hence the importance for an organization to protect its trademark distinctiveness.

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Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.

Source: Diluição: uma teoria defensiva ou ofensiva?

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“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”

“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”

Trademark Dilution

Trademark Dilution

Trademark dilution refers to acts that weaken the uniqueness of a famous trademark, typically as a result of blurring or tarnishment of the famous trademark. Unlike trademark infringement, trademark dilution involves use of a trademark in connection with goods or services that do not compete with those connected to the famous trademark. Trademark dilution therefore stands for the proposition that some trademarks are so well known that they deserve protection beyond the standard likelihood-of-confusion analysis for determining trademark infringement. 

The elements of a trademark dilution are:

  • Fame —A trademark must be famous for dilution purposes to allege a claim of trademark dilution;
  • Protects the Strength of a trademark for the Owner —Instead of protecting consumers from confusing the source of (a) competing, (b) similar, or (c) related goods or services because of the similarity of the trademarks, trademark dilution protects the owner of a famous trademark from any entity that would weaken the ability to identify and distinguish the goods or services of the genuine trademark;
  • Necessary Showing —The owner of a famous trademark need only show that there is a likelihood of dilution, rather than the actual existence of dilution, to be awarded relief. 

Trademark Dilution

In Brazil, Dilution is not foreseen by law. We use, by extension, the article 130, III of the Brazilian IP Law which says: “Art. 130. The trademark owner or the depositor is also guaranteed the right to: III – ensure their material integrity or reputation.”

Also, here in Brazil, there are three types of Dilution:

  1. Tarnishment: association with less valuable products or services.
  2. Blurring: weakening of a strong sign by using it in other contexts.
  3. Adulteration: adulteration of the brand, modifying its basic characteristics

The dilution theory is widely recognized by Brazilian courts, even though it is not clearly provided in the Brazilian IP Law.

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Lawyer Author of the Comment: Laís Iamauchi de Araujo
Source 
Headline: Trademark Dilution – Brazilian Courts

“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”