This Kat thought about counter-history in doing some research on famous marks and dilution. Still being mystified a bit about what dilution is all about, he asked himself: what would have happened if the TRIPS Agreement had not embraced dilution in Article 16(3)? For those Kat readers who have not committed TRIPS to heart, we remind you that Article 16(3) provides as follows:
"Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use."Voilà—dilution in its later various national forms had been given international imprimatur. But this imprimatur was not pre-ordained. Indeed, in his classic 1975 work, Patents, Trademarks, and Related Rights: National and International Protection, Stephen Ladas describes the history of Article 6bis of the Paris Convention, which gave international recognition to the notion of a well-known mark. He describes how a proposal for a new paragraph to be added to Article to 6bis, to provide for dilution-like protection, was rejected at the Lisbon Conference of 1963. This was also the time that there was still substantial skepticism how far to allow trade mark protection to go beyond the classic conceptualization of the trade mark right.
If the more broad pro-trade mark position had not taken root, perhaps the anti-dilution forces would have fond it more difficult, if not possible, to amend Article 6bis via the enactment of Article 16(3) of TRIPS. Perhaps the position would have remained that dilution, in all its various forms, was not an appropriate expansion of the trade mark right. This not to say that dilution should been condoned; only that trade mark law was not the way to do it. In such a counter-history world, what would anti-dilution have looked like? This Kat can imagine three possibilities.
Secondly, provided that the infringing party is a competitor and one could point to deleterious market effect, a claim of unfair competition might have been possible. In a similar vein, anti-dilution legislation could have been part of national unfair trade practice law.
|Plasticity comes more easily|
to some of us than others ...
A full counter-history to the enactment of anti-dilution legislation could no doubt raise additional causes of action, other infringements of trade mark, at the national level. But counter-history as an act of imagination also means resigning oneself to the present. Anti-dilution as part of trade mark law is here to stay as part of the trademark laws—or is it?