Trade Mark dilution, a brief note.

By Paul Bicknell

A trade mark conveys an economic advantage on the proprietor but historically and certainly before the dilution provisions became law in our legal system the economic advantage did not extend to: “a particular trade mark’s actual vulnerability to exploitation or free riding by other traders” Griffiths (2003), this was vulnerability has been recognised by the judiciary. Re Joseph Crosfield & Sons [1910] 1Ch 130, at 141.

 However, this narrow degree of protection was, over time, addressed – indeed it is said that Schechter’s works influenced this extension.

The dilution provisions entered the legal system of England and Wales by way of transposition from the Trade Mark Directive manifesting in sections 5(3) and 10(3) of the TMA, the leading commentary around the time of the aforesaid held this new form of damage with a skeptical hand, describing it as “controversial” Carty (1997) but over time as will be seen below the said provisions have been useful to those with property rights particularly with the maintenance of those rights when that mark to which those rights are attached has established a reputation in the market place.   

Dilution is a form of damage and has been defined as: “the gradual whittling away or dispersion of the distinctive character of the identity and hold upon the public mind of the public of the mark or name by its use upon non-competing goods”, Schechter explains:

“the more distinctive or unique the mark, the deeper is its impress upon the public’s consciousness, and the greater its need for protection against vitiation or disassociation from the particular product in connection with which it has been used.”