An unlikely likely dilution case

In an unlikely appendix to the late, but not paricularly lamented, Federal Trademark Dilution Act 1995, the Court of Appeal for the 9^th Circuit in the US has found a defendant to have diluted an earlier mark under the 1995 Act. (Readers will remember that the 1995 Act was rendered effectively unforceable by the Supreme Court requiring trade mark owners to show actual, as opposed to likely, dilution, i.e. dilution that has already happened).

In this case, eBay argued that perfumebay.com diluted the eBay mark. The court agreed. Since the case was brought before October 2006, the 1995 Act was applied. The District Court had erred in finding no dilution. In particular, it had applied the wrong test (the Seveth Circuit Eli Lilly test instead of the Second Circuit Nabisco test). However, under either test, the District Court should have found dilution since the eBay mark had strong recogniton and the defendant’s mark had used either the entire eBay mark [perfumEBAY] or at least the dominant Bay element so that consumers consumers may no longer associate the usage of the “Bay” suffix with eBay’s unique services.

The IPKat says that there are two odd but associated things about this case: to the IPKat’s knowledge, this is about the only post-Victoria’s Secret infringement by dilution case decided under the 1995 to have actually found actionable dilution. However, the reason for this is probably that rather than apply an actual dilution standard, the court required only likely dilution. Certainly the zeitgeist is in favour of a likely dilution standard, as introduced by the 2006 Act, but the 2006 Act is not retroactive. Surely cases under the 1995 Act remain governed by Victoria’s Secret which requires actual dilution?