European Dilution: Mapping the Origin and Roles of the Reputation Requirement

Publication details

Luminita Olteanu, ‘European Dilution: Mapping the Origin and Roles of the Reputation Requirement’ (2022) 11(1) Journal of Law and Jurisprudence 32.

Abstract

To qualify for enhanced trade mark protection against blurring, tarnishment and free-riding under the harmonised European Union (EU) trade mark law, senior trade mark owners must show that their trade marks have ‘reputation’. Although a central condition for dilution claims, the concept of ‘trade mark reputation’ does not have a definition in the EU trade mark legislation. The Court of Justice of the European Union has clarified the meaning of ‘trade mark reputation’ but has done so in a rather descriptive manner. Seeking to fathom the reasons why the EU legislator chose ‘reputation’ as a prerequisite for enhanced trade mark protection, this article offers a historical examination of the case law of several EU Member States before the harmonisation of the EU trade mark law, focusing on the way in which the courts rationalised marks’ reputations in trade mark infringement cases. It concludes that the selection of the reputation requirement by the EU legislator and the overall design of the EU dilution law was informed by the considerations of the Member States’ courts, which granted extra protection to trade marks enjoying a certain degree of recognition rather than the dilution regime of a specific jurisdiction.