Trademark dilution

What is dilution?

Dilution is a phenomenon and an umbrella term for two types of harm which mark can suffer, blurring and tarnishment. In tarnishment, use of a junior mark takes an unfair advantage of the reputation or fame of the senior mark or a situation in which character of a mark is impaired. In blurring, trademarks  function to distinctive goods and services of one undertaking from another is decreased due to the use of similar marks in commercial activities without due cause.

Dilution V. degeneration

It must be noted that dilution does not equal degeneration in trademark law. In degeneration, the distinctive character of a trademark has eroded; hence the Mark is not capable of distinctive goods of one undertaking from another. Therefore, the Mark has turned into a generic name such as BIKINI, THERMOS, and ESCALATOR, which all used to be trademark protected.

Assessment of the trademark’s distinctiveness

Trademark’s distinctiveness function can be considered to be the most important factor when assessing whether the mark can be protected and registered as a trademark or not. Furthermore, it serves the origin function of the Mark as well since it enables consumers to distinguish goods and services of one undertaking from another. As mentioned earlier, without distinctive character, trademark is not entitled for protection in Finland since protection is not available for all signs. (I.e. ECJ C-206/0, C-238/08).

According to main rule, there is a likelihood of confusion between the trademarks if the goods and services which the Marks are associated with are identical or similar.

According to the Trademark Act, proprietor of a well-known trademark can claim marks to be confusingly similar regardless whether the goods and services are identical or similar. This extended scope of a protection is subject to conditions that use of a well-known mark without due cause could take an  unfair advantage of the earlier Mark’s reputation or unauthorised use of a Mark could be detrimental to the distinctiveness  of a well-known Mark.

Assessment of likelihood of confusion

Assessing the likelihood of confusion between the well-known trademarks and Marks without reputation is different from ordinary assessment of likelihood of confusion pursuant to assessment test. When assessing the likelihood of confusion between well-known trademark and later Mark, there is a need to particularly assess the association between the senior mark and junior mark. (I.e. ECJ C-408/01). Therefore, the scope of protection is extended for well-known marks and therefore there might be a trademark infringement, even without likelihood of confusion. Registered trademark with a reputation does not require evidence of confusion, because likelihood of confusion is not a condition thereto.

Unfair advantage means, regarding the distinctiveness of the registered trademark, misappropriation of the attractive capacity of the registered trademark; misappropriation of the attractive capacity of the registered trademark; or regarding the reputation, unauthorised exploitation of the Mark’s image and prestige connotations within the consumers. (ECJ C-329/09).

Adverse effect or detriment for a character or reputation of a well-known trademark means the blurring or tarnishment explained in the first paragraph.

In Dilution, the trademark’s ability to distinguish goods or services from another undertaking of which the Mark is registered and intended for in commercial use is adversely effected due to the use of a later similar trademark. This may result in a loss of identity and ability to transfer positive image and connotations of the earlier trademark among the consumers.

This is particularly the case when earlier trademark does not attract the consumers in same way it used to, and its ability to attract the consumers in the goods and services of which the Mark is intended for, is adversely effected (ECJ C- 252/07). Image is adversely affected particularly in cases where similar trademark is commercially used for the different goods and services of which the well-established trademark was known for.

List of trademarks with reputation in Finland

Since 2007, Finnish Patent and Registration Office, has held a list of reputation with trademarks in Finland. It must be noted that list is not a part of a trademark database but a separate database. Aa Mark can be included in the public list by an application. For a payment, FPRO issues a copy of the list. If the mark meets certain requirements, it can be listed. Marking is valid for five years and it can be renewed by an application.