The US has provided federal protection against blurring since 1995.36 However, federal dilution law was entirely rewritten by the Trademark Dilution Revision Act of 2006, which introduces a new § 43(c) into the Lanham Act. This defines blurring as “association arising from the sim-ilarity between a mark or trade name and a famous mark that impairs
34 Lanham Act, § 43(c)(1) and (2).
35 TMA sections 5(3), 10(3).
36 In the Federal Trademark Dilution Revision Act of 2006, which introduced § 43(c) into the Lanham Act.
the distinctiveness of the famous mark’. Importantly, for the first time, the TDRA introduces a six-factor test for blurring.37 These factors are:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
What is notable is that while they are meant to detect harm to distinc-tiveness, it is questionable whether they do so. Factors (ii), (iii) and (iv) establish that the senior mark is a strong one. Whether this is appropri-ate is questionable since we might assume that strong marks are more distinctive and therefore more difficult to harm. Factors (i), (v) and (vi) are primarily addressed to whether the junior mark would be likely to be associated with the senior mark. While association is an important part of establishing that a mark’s distinctiveness has been harmed, it does not amount to harm in itself. Yet, the test contains no factor that is capable of determining whether a mark’s distinctiveness has been dam-aged and it would appear that the legislative test for blurring is a very easy one to satisfy.
However in reality the courts have been more robust in applying the test than its factors would suggest. For example, in Haute Diggity Dog v Louis Vuitton38 the Fourth Circuit did not find blurring where the junior user produced parody versions of the senior products, such as CHEWY VUITTON plush handbags for dogs designed to parody LOUIS VUITTON luggage. The Court first observed that famous marks cannot be granted automatic protection. Instead, they must go
37 § 43(c)(2)B.
38 Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC 507 F.3d 252, 265–268 (4th Cir. 2007).
through the six-factor test. Applying the test here, although all six fac-tors were satisfied, the Court observed that this was in the nature of a parody and that the test was not exhaustive. The Court took into ac-count that consumers would recognise that the junior use was a parody and found that if anything the junior use would strengthen the link be-tween the senior mark and the senior goods.
2. The UK
Since the UK chose to adopt the optional provisions of Articles 4(4)(a) and 5(2), it provides registered trade marks with protection against det-riment to distinctive character, or blurring. However, the difficulty of proving blurring has meant that it has always been treated with a de-gree of scepticism. For example in Daimler Chrysler v Alavi (MERC)39 Pumfrey J labelled the concept as “somewhat fugitive”. He observed that logically any second use of a mark with a reputation would harm its distinctiveness. However, cannot be the case mere second use is in-tended to be actionable as this would give the trade mark owner a mo-nopoly in his mark. The dividing line between actionable and non-ac-tionable detriment was not considered to be clear.
Considering this uncertainty about blurring, it is perhaps not coinci-dental that it is the UK that is responsible for the “change in economic behaviour” standard adopted by the Court of Justice in Intel v CPM.40 The difficult standard appears to require senior users to show some sort of empirical evidence of actual or likely loss of sales occasioned by the diluting use,41 though the CJEU has not explained the precise form of this evidence, or how such a loss of sales can be attributed to the jun-ior use, rather than other circumstances such as economic conditions.
This has had a devastating effect of the detriment to distinctive charac-ter cause of action, making it almost impossible to prove. It first arose in Electrocoin,42 where it was borrowed without precedent from the CJEU’s case law on misleading wine denominations and comparative
39 Daimler Chrysler AG v Alavi (t/a Merc) [2001] R.P.C. 42, [92]–[93] (Ch).
40 Intel Corp Inc v CPM United Kingdom Ltd (C-252/07) [2009] E.T.M.R. 13 [77].
41 See Jennifer Davis, The European Court of Justice Considers Trade Mark Dilution, (2009) 68 C.L.J. 290.
42 Electrocoin Automatics Ltd v Coinworld Ltd [2005] E.T.M.R. 31 (Ch).
advertising. It was then inserted into the questions referred to the CJEU by the Court of Appeal in Intel.43
A further demonstration of the UK’s ambivalent attitude towards blur-ring can be seen in recent cases which have inserted confusion elements into the blurring analysis, even though the CJEU made it clear early on that confusion is not necessary in dilution cases.44 In Whirlpool v Kenwood,45 the Court of Appeal considered whether the shape of the Kenwood kMix food mixer harmed the distinctiveness of the Kitchen-Aid food mixer which was registered as a Community trade mark. Find-ing no detriment to distinctive character, Lloyd LJ found that no one would purchase the junior Kenwood mixer under the “misapprehen-sion” that it was the senior KitchenAid mixer, nor would there be any initial interest confusion. Incidentally, this was a case where the senior user did suffer a loss of market share after the launch of the junior prod-uct, but this was attributed to lawful competition rather than to any blurring effect. Similarly, in Och-Ziff Management v OCH Capital,46 Arnold J discussed blurring on the basis that customers speaking over the telephone47 might initially mistake the junior OCH mark for the senior OCH-ZIF mark and might be confused, leading to a loss of busi-ness for OCH-ZIF. Ultimately though the dilution case was abandoned for lack of reputation on the part of the senior mark.
Under, there seems little prospect of “pure” dilution protection since a key component of passing off is misrepresentation and the courts have shown little inclination to do away with this ingredient.48 How-ever, blurring has been recognised as a form of damage for the purposes of fulfilling the third requirement of passing off. Thus, in Tattinger v Allbev,49 the Court of Appeal found that the “erosion of distinctiveness”
caused to the term CHAMPAGNE when the defendant launched a soft drink named ELDERFLOWER CHAMPAGNE constituted damage.
43 Sabel BV v Puma AG (C-251/95) [1997] E.C.R. I-6191; [1998] E.T.M.R [20].
44 Intel Corp Inc v CPM United Kingdom Ltd [2007] E.T.M.R. 59 (CA).
45 Whirlpool Corp v Kenwood Ltd [2010] E.T.M.R. 7 [127] (CA).
46 Och-Ziff Management Europe Ltd v Och Capital LLP [2011] E.T.M.R. 1 [137]
(Ch).
47 The telephone was particularly important since both companies were active in trading, where the telephone is a common means of communication.
48 See further the discussion of unfair advantage.
49 Taittinger SA v Allbev Ltd [1993] F.S.R. 641, 669–670 (CA).
This type of reasoning was recently employed in Diageo v Interconti-nental, where Arnold J,50 upheld by the Court of Appeal,51 found dam-aged based on the fact that the use of the term VODKAT for a drink containing fermented alcohol of below 22% alcohol by volume would make VODKA less distinctive as an indicator of spirit-based drinks of at least 37.5% ABV. In both cases though, erosion of distinctiveness was only considered once misrepresentation was found.
E. Protection against tarnishment