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Thursday, 22 March 2007

Today's CFI dilution decision

Points of interest in the CFI’s VIPs decision:

* The CFI states that, although the primary function of a mark is to indicate origin, marks also have economic value as image conveyors. Art.8(5) of Regulation 40/94 protects marks against any use which might damage that image.

* Art.8(5) doesn’t set out to prevent every mark which is similar or identical to an earlier mark from being registered. Instead, prima facie evidence of one of the types of harms which is more than merely hypothetical must be adduced.

* Where a mark has an exceptionally high reputation, it may be possible to prove dilution without adducing any further factual evidence.

* Advertising investment does not of itself demonstrate that a mark satisfies the Art.8(5) criteria.

* Here the earlier mark had been used on a fast food chain. While such mark may have a reputation, the fact that it is well known does not automatically mean that it is prestigious.

* Dilution was unlikely here since the term VIP already had a meaning and the later user’s services were directed only at a very limited public.

* There was no detriment to repute because there was nothing inherently unsavoury about the later services.

*There was no evidence of how a mark famous for restaurants could confer an advantage on the later services.
The IPKat reckons that the CFI isn’t breaking too much new ground here, but it’s nice to see that it’s making explicit a number of points that we’ve believed to be true all along.

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