The Protection of Well-Known Trade Marks as a Way to Protect Investment?

Publication details

Ilanah Fhima, ‘The Protection of Well-Known Trade Marks as a Way to Protect Investment?' in Enrico Bonadio & Patrick Goold (eds), The Cambridge Handbook of Investment-Driven Intellectual Property (Cambridge University Press, 2023).

Abstract

This chapter explains that trade marks, unlike most other intellectual property rights, have never needed to be creative to benefit from protection. Rather, it is 'distinctiveness' - a trade mark's essential function - and not creativity that is the customary dividing line between those signs which are worthy of trade mark protection, and those which are not. Confusion is the archetypal way in which a mark’s distinctiveness can be impaired. When consumers are confused about the origin of goods, they cannot be sure that the mark is distinguishing the goods of the undertaking whose products they are seeking to purchase. Thus, classic consumer-based trade mark infringement is seen as protecting the interests of both consumers and trade mark owners.

Infringement based upon trade mark dilution does not require consumers to be confused. Some have claimed that dilution denotes a departure from protecting the distinctiveness of trade marks, to protecting a trade mark owner’s investment in promoting their mark, instead. This chapter contends that this characterisation is only partially correct. It argues that dilution by blurring – the original form of dilution – is intimately related to the distinctiveness of a trade mark, meaning that an action based on blurring has the potential to protect the interests of trade mark owners and consumers alike. However, in Europe what is termed as 'dilution' encompasses much wider protection than against blurring alone. In particular, trade mark owners also receive protection against an unauthorised use which takes unfair advantage of their marks, thus the focus of this action is not on an effect on the senior trade mark, but rather on whether the image of that mark built up by the trade mark owner’s investment has been misappropriated by the junior user. The chapter explains how jurisprudence of the Court of Justice of the European Union (EU) has enhanced the significant role that protecting investment plays in European dilution in the form of the unfair advantage action by making it exceptionally difficult to prove blurring but much easier to show unfair advantage. Consequently, unfair advantage has become the dominant ‘dilution’ cause of action in Europe.

Tarnishment, or detriment to repute, falls part way between the two sets of interests – while the focus is on whether the image the trade mark owner has created by investment is impaired, some scholars have argued that this also has a 'consumer protection' angle. Dilution protection in Europe is limited to senior registered marks with a reputation. Restricting protection to marks which are known to a significant section of the public could also be seen as a proxy for protecting investment, given that a key method for achieving such knowledge is through investment in advertising. Once again though, the chapter argues that there are competing explanations for the reputation requirement.

A recurring theme in this chapter is that while protection of investment plays a key role in European dilution, there are various other interests at play. This makes it impossible to identify a single normative basis for European dilution. This is perhaps unsurprising, given that dilution under European trade mark law combines three separate actions: blurring, tarnishment and unfair advantage, each with their own unique history and justification.

Find out more about the book and how to access this chapter here.