Trademark Reporter, Vol. 94, pg. 1163, 2004
This article compares trademark dilution laws currently existing in the U.S. and the European Union.
The use of trademark dilution should be limited to a small subset of cases in which the confusion doctrine does not apply but where actual damage can be proven.
Trademark dilution laws prevent other companies from using logos similar to a registered trademark to take advantage of the trademark’s distinctive character, water down the trademark’s character, or to create a negative connotation for that trademark.
Historically, courts and legal scholars alike have had difficulty in defining what constitutes trademark dilution both in the U.S. and in the European Union (EU). However, the adoption of the European Directive by the European Union has given some clarity to Europe’s dilution laws, while U.S. dilution laws are still somewhat murky.
The EU’s new Directive sets out a standard dilution doctrine to be applied through Europe, but the European case law has yet to define clear borders for what constitutes a dilution case.
In the United States, the Supreme Court has created two categories of dilution cases: where the confliction trademarks are identical and where the marks differ. In order to prove dilution in the case of differing trademarks, the court requires more than circumstantial evidence alone, often in the form of expert testimony and survey evidence.
Under either the U.S. or EU dilution law there is no violation from a mere risk or likelihood of damage. Some actual detriment to the mark must be proven by reliable evidence; speculation and conjecture are not enough.
Both the U.S. and the EU have expanded their doctrines of trademark confusion in recent years. Trademark confusion covers issues where a consumer might consider two trademarks to be associated. With the continued expansion of the confusion doctrine, the use of dilution laws should be limited to a select number of cases in which actual damage can be proven.