Trademark dilution: The blurry arena

Symbols or words are traditionally trademarks when individuals or corporations use them for the purpose of identifying or differentiating their goods or services. In modern times, however, slogans, colours, smells, shapes, sounds, gestures, and even taste may be trademarked. By giving exclusive right to a mark's owner to use the mark for identifying products or services, trademark acts as protection towards the owner of the mark. While laws have been passed for the protection of trademarks considering marketable value, trademark doctrine has significantly developed for the prevention of trademark infringement worldwide. However, remedies for trademark dilution have lacked importance.

Taking into consideration the Zinn v Seruga case (2009) in the USA, diminishing the capacity of a famous mark for the purpose of identifying and distinguishing goods or services is known as trademark dilution. Lessening the uniqueness of such a mark occurs in two possible circumstances – (1) when there is presence or even absence of competitiveness between the one owning the well-known mark (original or senior user) and the one using it later (junior user), (2) when there is absence or presence of the likelihood of mistake, confusion or deception. 

Thomas McCarthy believes that a trademark dilution can be said to occur at instances when any company or individual uses a mark that is either the same or significantly similar to a mark that has already been in existence, activating minds of the consumers to somehow relate between both the marks. Thus, the strength of the original mark wears out. In the case of the 'Kodak bicycle' for instance, irrespective of the fact that most consumers are unlikely to think that the famous company now has a branch or got involved with the bicycle business, and although customers are well aware that the source of Kodak bicycle is different, it would lessen the image of Kodak being solely associated with film. 

Therefore, it is eroding the strength of the Kodak film company, since customers may think of Kodak film when they see Kodak, or may think of the bicycles. Moreover, in the recent past, selling of “perfumebay”, “perfume-bay” or “PerfumeBay” over the internet has been mentioned to dilute the famous shopping site “eBay”. Not just the consumers are protected from confusion (as in infringement matters); the theory of dilution protects the worth of the trademark to the holder of such.

Dilution by “tarnishment” mentions an unsanctioned usage of a particular mark that exposes the mark in an objectionable manner, likely to put forward uncomplimentary thoughts regarding the product of the owner, thereby tarnishing goodwill investment made in the owner's mark. Distributers of a well-known counterculture poster were sued by Coca-Cola Company when a poster wrote “Enjoy Cocaine” in the same font as Coca-Cola, making it look like a coke ad. While Bangladesh's Trademark Act, 2009 is capable enough to protect tarnished marks, however, dilution by “blurring” remains a problem. 

Professor Frank I. Schechter, the introducer of dilution law, defines the harm done by “blurring” as the “gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name”. The consumers' strong association of a particular mark is blurred since the mark's association is now being shared between two goods. Whenever the unique identity of a particular mark is weakened over its use on goods that are not similar, dilution by blurring occurs. Meaning that, the usage of a mark on a competing product dilutes that mark as much as usage of such mark on a non-competing product. It is anticipated that the original trademark holder, specially in the case of dilution by blurring, suffers “death by a thousand cuts” over time. As in Kodak's example above, blurring would occur provided the trademark “Square” is used for shoes, “Bata” used for aspirin and so on. Scholar Barton Beebe mentions that in order to discover that a mark blurs another, it is upon the judge to find out that the other user's mark is truly making customers to “think for a moment” prior to recognising that the original mark refers to the products of the owner of original mark. 

While it is not uncommon for small entrepreneurs to sell 'BMW' undergarments at the streets of Dhaka, as little an impact it may be on the car company, businesses with names such as “United” or “Unique” keep rising. Thus, even upon an attempt in addressing dilution by blurring through an amendment in the Trademark Act, 2009, efficient management of the complexity would perhaps be difficult, yet worth a shot.

The writer is a Lecturer in Law, University of Asia Pacific.