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Furthermore, the 1999 Paris Union and the WIPO Joint Recommendation on Well-Known Marks confirmed that a mark is deemed to be in conflict with a well-known mark if it ‘constitutes a reproduction, an imitation, a translation, or a transliteration of the well-known mark’, ‘irrespective of the goods and/or services for which a mark is used.’
(C) Absence of Anti-Dilution’s Protection
Though well-known marks are endowed with some additional special protection under international treaties, generally, both the Paris Convention and TRIPS have not explicitly defined the process for verification of a well-known mark and set up criteria for anti-dilution’s protection. The nearest that international law comes to a dilution provision is in the ‘soft law’ of the Joint Recommendation. This only suggests that countries should grant protection against dilution. It provides no guidance as to how countries should test for this. Both the U.S. and the EU have at least attempted to provide dilution protection, which should definitely meet the Recommendation. Even though neither jurisdiction''s test is perfect, the Recommendation provides no standard against which such legislation may be tested.
Comparative Studies in Well-Known Mark’s Anti-Dilution Protection
(A) USA’s Position
The United States is in the leading position with regard to well-known mark’s anti-dilution protection. The basic law is the Trademark Act of 1946 (the Lanham Act). Its intent was to prohibit trademark infringement, and to protect consumers from being confused into thinking they were buying a well-known branded product, however in fact they were purchasing the inferior. The Lanham Act was amended by Congress as the 1996 Federal Trademark Dilution Act (FTDA). The goal of the FTDA is to enable businesses to protect the companies’ investment in branding their products. Under the FTDA, actual dilution criteria for well-known mark’s protection was applied. Unlike the traditional cause of action under trademark law, dilution theory protects not the consumer but rather the value of the trademark to the trademark holder.
Thus, the addition of dilution theory to the federal trademark law arena was a legislative act of particular moment to trademark holders.
Under the FTDA, not only is competition between the plaintiff and the defendant not required,
but the legislative history of the Act specifically contemplated the situation in which the products involved are unrelated and non-competing but nonetheless dilution occurs.
Significantly, the U.S. Congress passed the Trademark Dilution Revision Act in 2006, replacing the actual dilution standard with a likelihood of dilution standard. This new Trademark Dilution Act Revision is a landmark law which steps forward to a higher level of trademark legal protection in the United States.
Then what is trademark “dilution” under the U.S. laws? The FTDA defines the term "dilution" as "the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of (1) competition between the owner of the famous mark and other parties, or (2) likelihood of confusion, mistake, or deception."
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