DILUTION IS DEAD; LONG LIVE DILUTION

On Friday the US President signed the Dilution Revision Act 2006 into force. The Act replaces 1995’s Federal Trademark Dilution Act with a new dilution regime that includes:

* a likely (rather than actual) dilution standard;
* a tougher standard for judging whether the earlier mark is famous (and so qualifies for dilution protection);
* a new definition of blurring, complete with a six-part non-exhaustive test for blurring;
* a new definition of tarnishment, which makes it explicit that tarnishment is classed as infringing dilution (it was omitted from the 1995 Act).

The IPKat says that the new Act should never have been necessary. 10 years is an unacceptable lifespan for legislation that had been talked about since the 1930s and highlights how inadequate and inconsistent the drafting of the 1995 Act was. However, the 2006 Act is far from perfect. In particular, it’s all very well getting rid of the actual dilution standard and replacing it with a likely dilution standard, but this creates a new problem: how likely must the dilution be? ‘Likely’ suggest more likely to happen than not to happen, which is still pretty hard to prove. The sensible approach would be for a court to say that in dispensing with the 1995 Act, Congress clearly intended to facilitate dilution actions. However, in the past, US courts have tried their level best to cut dilution back to the quick and its far from clear that they will stop doing so now.

Full text of the Act (and amusing song) @ The Trademark Blog here.