IPKAT AT INTA: 2

The IPKat is continuing to relish the delights of the INTA Annual Meeting. He hasn't just been networking though, he has also been sampling the educational programme. Today he attended a session the fundamentals of making a dilution claim, delivereed by Sandra Edelman (Dorsey & Whitney LLP) and Rodrick J Enns (Enns & Archer LLP). The moderator was Mark S VanderBroek (Troutman Sanders LLP). He learnt about the impact of last year's Victoria's Secret case, decided by the Supreme Court. One big question is whether, following that case, a claimant can succeed in a dilution claim just by arguing that the defendant has a mark that is identical to the claimant's famous mark, or if instead, the claimant must also show that there is something else that causes consumers to associate the earlier and later marks. Although various post-Victoria's Secret cases have found dilution merely on a showing of identical marks, it was pointed out that in all of those cases there was activity that would have been classed as traditional infringement as well. In other cases identity of the marks has not been enough. Furthermore, there have been no successful dilution cases where the two parties' marks have not been identical.

The IPKat points out that there is a parallel here to the development of the UK's law on dilution-style infringement. In the UK, particularly following the ECJ's decision in Adidas v Fitnessworld, courts and the Trade Mark Registry require more than just the fact that the appearance of a second mark on the market makes the first mark less distinctive. Instead, in most cases they have required there to be something to link the two uses together in the minds of consumers, the underlying fear being that too liberal approach would involve the court "throwing away" the specification of the goods for which the earlier mark is registered.