US DILUTION AMENDMENT BILL PASSED BY HOUSE


Yesterday the US House of Representatives passed a bill that will become known as the Trademark Dilution Revision Act of 2005. The bill seeks to undo the “damage” done by the Supreme Court in the Victoria’s Secret case and to iron out a few dilution wrinkles that have come to light since the original Federal Trademark Dilution Act was passed in 1995. Major changes to dilution law are:
*It is made clear that likely, rather than actual, dilution is required for a successful claim.
*There is no need to show that the claimant has suffered economic injury.
*It is made clear that the senior mark must be famous among the general US consuming public. This means that fame in a niche product or geographical market will be insufficient.
*It is made clear that the Act outlaws both blurring and tarnishment.
*A non-exhaustive multifactor test for blurring.
*A definition of tarnishment.
The bill now goes to the Senate.

Dilution – the pun is inevitable

The IPKat notes that the amendment provides stronger protection, but to a narrower range of marks. He’s pretty puzzled though – one of the factors in the multifactor test for blurring is “Any actual association between the mark or trade name and the famous mark”. The factors in the test are not prerequisites for a successful blurring claim, though if they are present they will help to show that blurring has occurred. How can a junior mark damage an earlier mark if consumers do not associate the later mark with the earlier mark? This is something that has been realised in the EU, where the ECJ in Adidas v Fitnessworld has said that there must be a “link” or “association” between the two marks for there to be detriment or unfair advantage.

The bill is available here – it is HR 683.
Perfect dilution here and here
US DILUTION AMENDMENT BILL PASSED BY HOUSE US DILUTION AMENDMENT BILL PASSED BY HOUSE Reviewed by Anonymous on Wednesday, April 20, 2005 Rating: 5

No comments:

All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here: http://ipkitten.blogspot.com/p/want-to-complain.html

Powered by Blogger.