Trade Mark Dilution

Traditionally to prevent someone from using a trademark, one had to claim that it was causing confusion with an already existing mark. i.e. the ‘misrepresentation’ claim. However, now days even the Trademark dilution view is given merit. Trademark dilution is a claim which the owner of a famous trademark can make to forbid others from using a mark that reduces the value or distinctiveness of the famous mark.

Imagine if there was a watch being sold with the trademark ‘PEPSI’ or mineral water with the mark ‘ROLEX’. Now, there would obviously be no confusion that the mineral water was  not associated with the ‘ROLEX’ brand of watches. But if people start ROLEX mineral water, ROLEX restaurants, ROLEX publishers then the distinctive value of ROLEX brand will diminish. The exclusiveness and excellence of the brand will be associated with all the other good or services using the trademark ‘ROLEX’.

It is believed that it was the case V Secret Catalogue Inc v. Moseley, 54 U.S.P.Q.2d 1092 (The Victoria’s Secret Case) which made the U.S. Government feel the need for a Trademark Dilution legislation, which gave rise to Trademark Dilution Revision Act (TDRA) of 2006, several provisions of the EU Trademark Harmonization Directive of 2008 and
amendments in the Canadian Trademark Act. In the Victoria’s Secret Case, the plaintiffs claimed that a chain of lingerie stores called ‘Victor’s Little Secret’ was tarnishing the ‘Victoria’s Secret’ brand. Due to absence of a legislation on Trademark dilution, an injunction was not granted. In this case the plaintiff could not prove dilution. However, by virtue of TDRA proof of dilution is not necessary to claim dilution, the likelihood of dilution is sufficient.

Types of trademark dilution: Basically there are only two types of trademark dilution

•         Blurring-        When distinctive quality of the mark is diminished (Like in the ‘ROLEX’ example above)

•   Tarnishment- When image projected by the mark is offended (E.g. Like the Victoria's Secret case above or If there is a pornographic site using trademark ‘SONY’)

Exceptions to trademark dilution: There are basically two exceptions to the doctrine of trademark dilution

•  If the trademark is parodying, criticizing or commenting on the famous brand
• If all advertisements and presentations of the trademark make it possible for comparison with the famous mark

In Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 464 F. Supp. 2d 495, 504-05 (E.D. Va. 2006), defendant’s goods ‘Chewy Vuiton’ were held to not be dilution of  ‘Louis Vuitton’ because it was merely a parody of ‘Louis Vuitton’. The case can be found here.

In Levi Strauss & Co.v. Abercrombie &. Fitch Trading Co. 633 F.3d 1158 (9th Cir. 2011) use of the ‘Arcuate design’ stitched on the pockets of the jeans was registered trademark of ‘Levi Strauss’ was held to be diluted by Abercombie & Fitch’s ‘Ruehl design’. Levi Strauss lost the case but an appeal is still pending.

Keywords: canada, exceptions to trademark dilution, levi strauss v. Abercombie, Louis Vuitton v. Haute Diggity Dog, trademark, trademark dilution, types of trademark dilution, V Secret Catalogue v. Moseley,  Best Indian Legal Blogs