DILUTION'S SAVIN GRACE?

The IPKat wishes to draw your attention to a recent US case. Those of you who have been following US law will realise that the Supreme Court delivered a decision last year, Mosley v V Secret, which stated that, in order to succeed in a Federal dilution claim, claimants must prove actual dilution rather than mere likelihood of dilution. However, the court made a rather cryptic comment:

“It may well be, however, that direct evidence of dilution such as consumer surveys will not be necessary if actual dilution can reliably be proven through circumstantial evidence–the obvious case is one where the junior and senior marks are identical.”

There has been argument about whether this means that where the parties' marks are identical, this in itself constitutes circumstantial evidence of dilution and in that situation alone, there is no need to prove actual dilution OR whether circumstantial evidence can only be used to prove actual dilution if the marks are identical. In Savin v Savin, the District Court opted for the latter reading. However, the Savin court’s decision was overturned by the Second Circuit Court of Appeals on 10 December, which stated that where marks are identical, dilution can be assumed. Nevertheless, this presumption only applies where marks are identical and, according to the Second Circuit, the test for the identity of marks must be a very strict one – even marks containing the same words but in different typefaces may not meet it.

The IPKat thinks that this decision has an air of swings and roundabouts about it. While the actual dilution standard has become more lenient, claimants must undergo the difficult task of showing that their marks are identical in order to benefit from this loosening of the test. Merpel wonders what the position would be in the EU – certainly there are hints (such as the Advocate General in General Motors v Yplon) that actual dilution is needed for infringement in the EU, but no thought seems to have been given as to whether there would be a lesser standard for identical marks.

Lots of discussion of actual dilution here