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Trademark Dilution and Trademark Use

Trademark Dilution and Trademark Use. Katja Weckstrom University of Turku, Finland IPSC at Depaul University, Chicago, Aug. 9, 2007. Starting point. Same problem: inadequate limits on trademark rights Same solution proposed:

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Trademark Dilution and Trademark Use

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  1. Trademark Dilution and Trademark Use Katja Weckstrom University of Turku, Finland IPSC at Depaul University, Chicago, Aug. 9, 2007

  2. Starting point • Same problem: • inadequate limits on trademark rights • Same solution proposed: • trademark use requirement as a threshold question in infringement analysis • Different answers: • US: maybe, but problematic • EU: no • Find conceptual limits by scrutinizing dilution protection? • Limited to some marks • Excluded categories

  3. Arsenal Football Club v. Reed

  4. Adidas v. Fitnessworld • Active wear marketed under the trademark Perfetto (Fitnessworld)

  5. Adam Opel v. Autec

  6. Gillette v. LA-Laboratories This blade FITS all Parason FLEXOR* and all Gillette SENSOR* HANDLES. *registered trademarks

  7. Conclusions • The balancing test should weigh in favour of the plaintiff in case of clear evidence of passing off, while it should equally clearly weigh in favour of the defendant, when such evidence is absent. • The type of use is indirectly relevant • Some uses are less likely than others to cause consumers to make a connection between the origins of the products. • A typical non-trademark use inherently weighs less on the balancing scale than a trademark use, which if entailing use of an identical mark on identical goods, mandates a finding of infringement. • In contrast, under Article 5.2 the court is obliged to consider whether the defendant has used the mark without due cause. The type of use employed is clearly relevant in this inquiry.

  8. Yet to come • Trademark use as threshold requirement not optimal in US either • Comparison to the US and the new FTDRA • Additional conceptual limits for balancing? • Is statutory exclusion a workable solution in the EU? • Is it necessary?

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