Trade Mark Infringement Without Confusion - Dilution

Protecting trade marks against dilution has always been controversial. Traditionally, trade mark protection has been tied to whether consumers are confused. This can be justified because it means that the infringement action serves to protect consumers. However, there is no need for confusion in the dilution action, meaning that the traditional rationale for trade mark protection does not work. This has led to fears that dilution creates ‘property’ in trade marks and only benefits the trade mark owner.

It has also been very difficult to prove dilution. Unlike confusion, dilution is based on subconscious processes, and so both courts and legislators have had difficulty in defining it, and devising a test for it, and some have been sceptical about whether it takes place at all. Although these issues are no longer new, this is nevertheless a timely seminar: the US has only recently completely replaced its dilution legislation and, at the end of last year, the European Court of Justice issued its first decision considering the meaning of the types of detriment and unfair advantage that European legislation requires (another is in the pipeline).

This seminar brings together leading speakers from the US, the UK and the Benelux (which has always claimed that European dilution law is based on the pre-harmonisation Benelux law) to consider issues including:

• Should we protect trade marks against dilution?
  If so, which marks should benefit from dilution?
• How can dilution be proved?
• Is the present scope of dilution too wide?
• What are the differences between the protection available in the US and Europe? Can we learn from each others’ experiences?

The seminar is allied to two of IBIL’s key research themes: (i) IP and European integration and (ii) comparative trade mark law.

The American Perspective

Professor J. Thomas McCarthy, Founding Director, McCarthy Institute of Intellectual Property, University of San Francisco, USA
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The Benelux Perspective

Professor Charle Gielen, NautaDutilh, Amsterdam, The Netherlands
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The UK Perspective

Professor David Llewellyn, White & Case, and King's College London, UK
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Chair: The Rt. Hon. Sir Robin Jacob, Court of Appeal, UK

Accreditation: 2 CPD hour by the Solicitors Regulation Authority