The Actual Dilution Requirement What Can Europe Learn From The American Experience

The role that the actual dilution standard plays in Trademark dilution proceedings, a comparison between the approaches adopted in the United States, United Kingdom, European Union Tribunals and the individual EU Member States. Notably, it is not the aim of this paper to assess whether dilution ought to be basis for protection for trademarks. This has been discussed ad nauseam in both the US and the European jurisdictions. The main focus of the paper will be to show the varying approaches adopted in an analysis of the dilution standard to be applied. Essentially, the aim is to show the EU and especially the UK, are heading down a path already trodden by the US to the extent that soon they too will require statutory salvation. It is proposed to analyse the origins of the actual dilution requirement in the various jurisdictions and to access what lessons we can learn from the differing approaches. In essence, why did the US feel it was fundamentally necessary to move away from the strict actual dilution requirement? Should Europe follow the US lead or carry on in blissful ignorance of the guidance proffered by the US volte-face?The approach of the United States was considered at length in Victoria's Secret. Central to this case was whether s. 43(3) of the Lanham Act required proof of actual dilution or merely the likelihood of or threatened dilution. The answer to this question is of particular importance in the tests which will be employed to detect blurring, tarnishment and unfair advantage. Is the test merely empirical, based on actual lost revenues and consumers responses to the later mark, or something more? The US clarified its position by passing the Trademark Dilution Revision Act 2006. Now the previous US standard of actual dilution in the US jurisdiction has been statutorily replaced with a likelihood of dilution standard. An analysis of the US actual dilution standard will, prima facie, appear to be no more than of historical importance. However since it appears from recent decisions and commentary that the EU and the UK are moving consistently towards an actual dilution standard, the US actual dilution history is of invaluable guidance.