Dilution can be viewed as a tool used by trade mark owners to ensure effective protection of well-known Trade Marks. The originator of the doctrine, Frank I. Schechter, stated: “that the preservation of the uniqueness or individuality of the trade mark is of paramount importance to its owner” – (“The Rational Basis of Trademark Protection” by F. I. Schechter (1927)). Therefore, it is more concerned with protecting trade mark owners and ensuring they have exclusivity over Trade Marks than operating in the public interest. Dilution prevents others from using the trade mark by creating barriers. It considers the harms that may be caused to the Trade Mark owner and acts on this, regardless of the suppressive effects this may have on consumers, in relation to expressing themselves with the use of the Trade Marks, for example Parody.

The incorporation of Dilution in UK Law

The Trade Marks Act 1994 (hereafter TMA), section 10(3) implemented article 5(2) of Directive 89/104 and in doing so incorporated dilution. This section states that a person infringes a registered trade mark if he uses a sign which is identical or similar to the reputable trade mark. Furthermore, by using the sign without due cause, it takes unfair advantage of, or is detrimental to the reputation of the Trade Mark.

Article 4(4)(a) of Directive 89/104 is implemented into section 5(3) TMA and aims to prevent the registration and the use of any sign that is identical, or similar to an earlier reputable trade mark.

So, what happens in the case of when an infringing and dilutive trade mark has already been registered? Section 47(2)(a) (also article 4(4)(a) of Directive 89/104) states that unless there had been prior consent from the owner of the earlier registered trade mark, a subsequent registration of a trade mark caught by Section 5(1-4) will be declared invalid.

The case Sabel BV v Puma AG(C-251/95) [1997] ECR I-6191; [1998] I CMLR 445 made clear that a Trade Mark owner was entitled to stop the use of the trade mark without proving the likelihood of confusion between the two infringing mark to that of his own.

When looking at what is meant by a reputable trade mark, the case General Motors Corp v Yplon SA (C-375/97) [1999] ECR I-5421; [2000] RPC 572 states that in order to be classed as reputable and thus be able to use dilution, the trade mark “must be known by a significant part of the public concerned by the products or services which it covers”. This results in a large number of Trade Marks being classed as reputable and therefore able to use dilution to prevent the use of their registered marks.

The case Intel Corp Inc [2009] Bus. LR. 1079; [2008] ECR I-8823 can be viewed as bringing some boundaries to this area of law and narrowing the scope of dilution protection. The case concerned Intel Corp Inc, the Trade Mark owner of Intel, a well-known and reputable company in relation to computer and computer related products. The company sought to invalidate the trade mark “Intelmark”, which was a registered trademark of marketing services.  The case reached the European courts on the basis that regardless of the difference in services that both companies provide, the use of the trade mark “Intelmark” was likely to bring an association to the trade mark “Intel”. The ECJ stated that the “reputation of a trade mark must be assessed in relation to the relevant section of the public as regards the goods or services for which that mark was registered. That may be either the public at large or a more specialised public.”

The case narrows the concept of dilution to where a company has a reputation restricted to a certain class or category of goods then it is unlikely that a later trade mark will affect that reputation, if it is within a different class of goods.