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.The bill now goes to the Senate.
*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 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