The main function of a trademark is showing the commercial origin of the product; however with the expansion of the transportation, communication and high amount of investments in trademark images in global dimension, this aim becomes inadequate for the new coming functions. Anti-dilution protection aims to protect the marketing power of the trademark which derives from its brand image. It protects trademarks against the activities which may have the effect of lessening the exclusivity and brand image shielded by trademarks.
There are two types of dilution; dilution by blurring and dilution by tarnishment.
Dilution by blurring occurs if an identical or similar sign to a registered trademark with reputation with a strong message to public is used on similar or non-similar goods. Then the earlier trademark with reputation loses its power to arise immediate association with the goods it is registered and used to2. That risk also called “gradual whittling away” or “dispersion of identity”.
Dilution by tarnishment means the impairment of a mark’s reputation through inappropriate or negative associations. Public will not be confused, but through the link made between the later mark and earlier trade mark the reputation of the latter will be harmed. Tarnishment generally occurs if a trade mark with reputation or similar mark is used in relation to inferior products or in an unwholesome context, where such use without the trade mark owner’s consent will evoke negative associations with the famous mark in the minds of the public3.
First case related to dilution was German Odol case in 1925; however trademark protection against dilution was first introduced in Schecter’s article of The Rational Basis of Trademark Protection4
Directive5 does not openly use the term dilution; however articles 4/3, 4/4(a) and 5/2 may be regarded as the dilution related part of Directive. Then these articles stipulate protection for a mark with a reputation against its use on dissimilar goods or services.
Art. 4/3 of the Directive is a mandatory provision for Member States. According to this article a trademark shall not be registered, or, if registered should be declared invalid, if it is an identical or similar sign to an earlier Community trademark with reputation, and is or has been registered for non-similar goods and services without due cause, thereby taking unfair advantage of, or being detrimental to the distinctive character or the repute of the earlier Community trade mark.
Art. 4/4(a) is similar to Art. 4/3; but it provides optional protection for national trademarks under the same situations. Member States may provide further protection for national trademarks with reputation against dilution.
Art. 5/2 also provides optional protection to trademarks with reputation in Member States. It covers the later use on non-similar goods and services; however as for Adidas Benelux BW v. Fitnessworld Trading decision6, Member States where it exercises the option provided in Art. 5/2 of Directive, should grant protection to proprietor of earlier mark against signs similar or identical in relation to both identical and similar or goods or services not similar.
“Reputation” stated in those articles is not equal to well-known trademarks in the context of Art. 6bis of Paris Convention or Art.16 of TRIPS. These well-known trademarks are already protected with a separate article of Directive; Art. 4/2(d). Reputation requested in Trademark Directive is clarified in General Motors Corp. v. Yplon SA decision of ECJ7. Earlier trademark should be known to significant part of the relevant sector of the public. It is sufficient that mark has reputation in a substantial part of a Member State.
In L’oreal v. Bellure case, ECJ is referred with the question of the likelihood of confusion or association under Art. 5/2 and stated that likelihood of confusion is not required for Art. 5/2 to apply. It is enough for a link to be established by the relevant sector of the public without confusion as a result of similarity between trademarks8. This requirement of link between earlier mark with reputation and later mark further described in Intel9 case of ECJ.
There has to be a similarity between signs which are used in relation to not similar goods and services. The condition of similarity between the mark and the sign, referred to in Art. 5/2 of the Directive, requires the existence, in particular, of elements of visual, aural or conceptual similarity10.
When the detrimentality of later use to the earlier mark concerned, several elements, such as similarity of respective marks, inherent distinctiveness of the earlier trademark, the extent of the reputation that the earlier mark enjoys; the range of goods or services for which the earlier trademark enjoys a reputation, uniqueness of the mark in the marketplace, whether the respective goods/services, although dissimilar, are in some way related or likely to be sold through the same outlets, and whether the earlier mark will be any less distinctive for the goods/services for which it has a reputation than it was before should be considered11.
The other perquisite for proprietor of the earlier mark to exercise his rights under Art. 5/2 is the use of trademark “without due cause”. The meaning of without due cause is defined in Bayerische Motorenwerke AG and BMW Nederland BV v. Deenik12 decision of ECJ.
In order to benefit from the protection introduced by Art. 4/4(a), the proprietor of the earlier mark must prove that the use of earlier mark “would take unfair advantage of, or be detriment to, the distinctive character or the repute of the earlier trademark”. The proprietor of the earlier mark does not have to demonstrate the actual and present damage, but foreseeable injury which will ensue from the later use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such injury will occur in future13.
Trademark Regulation14 is essentially same with Trademark Directive. As it is in Directive, Regulation also does not have clear provisions on dilution.
Art. 8/5 of Regulation corresponds to articles 4/3 and 4/4(a) of Directive. Different from the language used in Directive, Art. 8/5 of Regulation openly states the requirement of proprietor’s opposition which is an implicit requirement in Directive.
Art. 8/5 defines the threshold of reputation as; if the earlier mark is a Community trademark it must have reputation within the Community and in case earlier mark is a national trademark it should have reputation in the Member State concerned. However it is unclear that whether it means that a Community trademark must have reputation which extends beyond more than one member state for art. 8/5 to be applied15.
Another difference from Directive is that under Art. 108 of Trademark Regulation, if a Community trademark application dilutes another Community trademark with reputation in Community, it can be converted into national trademark.
Art. 9/1(c) of Regulation is the corresponding provision of Art. 5/2 of Directive which regulates the rights conferred with trademarks. Difference between them is the scope of reputation; which is Member State in Art. 5/2 of Directive.
According to Art. 14/1 of Regulation, effects of Community trademarks are governed by the Regulation, and infringement of Community trademarks shall be governed by national laws related to the infringement of national trademark. Thus, dilution of Community trademarks will be determined according to regulation, but the remedies are constructed from the law of the Member state where the action is sought.
Turkish trademark law is essentially same with European Trademark Directive and Regulation. For protection against dilution related articles of Decree Law16 on dilution are; Art. 8/4 and 9/1(c).
For protection against dilution, earlier trademark should have reputation. Turkish version of Art. 8/4 of Decree law states this condition as “earlier trademark which has reached a level of reputation in public”. TPI has published a guideline on determining the reputational level of trademarks and their application. In this guideline TPI counts 17 criteria used in the determination of the repute of trademark. 18th criterion is any evidence that might be used to prove the reputation of trademark. So this is not a closed number count.
As it is in Directive and Regulation, trademarks with reputation are different than well known trademarks under Paris Convention art. 6bis and TRIPS art.16. Then well-known trademarks according to Paris Convention 6bis are separately stated under Art. 7/1(i) of the Decree Law.
Since Art. 8/4 of Decree Law uses the word even/ bile (Turkish), it seems appropriate to the language of Decree Law that protection conferred on trademarks with reputation under Art. 8/4 of Decree covers later use in both similar and dissimilar goods and services.
Proprietor of earlier trademark shall oppose to registration (Art. 8/4 of Decree Law) or infringement (Art. 9/1(c) of Decree Law). TPI is not obliged to consider the refusal of registry or infringement without any demand, by itself.
Decree Law does not mention likelihood of confusion or association. Confusion is not a requirement for both outcomes17.
Detriment to distinctive character means the decrease in the power of attraction of trademark as a result of usage of same or similar signs by different entities. Then when the consumer sees the later mark he/she makes a conscious or unconscious mental link with the mark with reputation18.
Detrimental to reputation of trademark may happen in different ways. Trademark with reputation may be used on goods or services with inferior quality or use on the goods against brand image. Type of goods of services of later mark may lead to inappropriate associations and links with mark with reputation which may damage the repute of first mark. Mark with reputation may be used in a way that defamatory to brand’s image19.
As it is in Directive and Regulation, in order to anti-dilution protection to apply there should not be any due cause. Defenses against refusal for registration of mark and infringement in Decree Law are similar to Directive. They may be used against dilution claims.
Actual damage is not required. The risk of possible or foreseeable damage is sufficient under the condition that TPI or Court is convinced on it. To exercise his rights, trademark proprietor should first get a decision from TPI for proving the fact that his mark has reached to a certain level of reputation within the public concerned. TPI and the Courts are competent on deciding on the reputation of the trademark20. But the priority on time belongs to TPI. Accordingly, Court of Appeal decided that the condition of legal interest for filing a suit is not met if the proprietor did not exhaust the legal remedies at TPI first21.
The basic idea of dilution is the same in EU and Turkish law. They both try to provide an equitable protection to trademarks with reputation which exceeds the traditional scope of right conferred on trademark.
Language of the Decree Law is closer to Trademark Regulation. Then Art. 8/4 of Decree Law explicitly states the opposition of proprietor as Art. 8/5 of Trademark Regulation.
In Turkey cases of dilution are mostly seen under Turkish Commercial Code’s provisions on unfair competition, since there is no confusion to the origin of the goods and services.
Therefore number of the cases where Art. 8/4 is discussed is relatively low and the term dilution is not used in those cases. It is mostly referred as detrimental to the distinctive character or repute of the mark with reputation.
Trademarks entitled to dilution protection are relatively more clear under EU Law. Decree Law’s language makes it difficult to separate well-known trademarks and trademarks with reputation. There is a tendency to add the well-known trademarks to dilution protection under Art. 8/4 of Decree Law and expand the protection of Art.8/4 of Decree Law to similar goods because of the language of Art. 9/1(c) of Decree Law.
Different from European Union, Turkey has an administrative decision for proving the reputation of the trademark. Then in order to obtain protection against dilution, it is better for proprietors to get a decision from TPI first.
Language of Turkish Decree Law is more suitable for interpreting the anti-dilution protection in a way that it includes both similar and non-similar goods and services. Then unlike Directive and Regulation it uses the word even before the later non-similar trademarks which the protection sought against.
The major differences between parties are in the determination of reputation of the earlier mark, further protection against similar goods and role of the administrative decisions in the protection against dilution. The conclusion is that; European Union and Turkey has different structures, policies and aims in trademark law; but close relations stemming from the associate membership and accession negotiations bring them closer in this field and particularly in protection against dilution.
Author : By Emriye Özlem Şeker, LL.M. Maastricht University.
Source : http://www.mondaq.com/article.asp?article_id=452748&signup=true