If you are considering applying for a trade mark, you might encounter the concept of trade mark dilution. This term refers to the unauthorised use of a trade mark that will likely weaken the distinctiveness of a well-known trade mark. Although the concept is still relatively unexplored in Australia, it is highly relevant for Australian businesses who trade overseas. This article will explain trade mark dilution and how you can identify it within Australia.
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What is Trade Mark Dilution?
Trade mark dilution describes the unauthorised use of a trade mark that will likely damage the reputation of an easily recognisable trade mark. This usually occurs in famous trade marks known to broad audiences.
Trade mark dilution differs from trade mark infringement, although the two commonly occur in the same instance. This is because trade mark dilution does not necessarily involve the unauthorised use of a trade mark in connection with goods or services similar to those offered with the famous mark.
When is a Trade Mark Diluted?
For trade mark dilution to occur, a trade mark must be recognisable to the general public to be well-known. However, this is not the case in all countries. For instance, in the United States, a trade mark must be widely recognised by the public to be considered famous. On the other hand, in the European Union, it is up to the courts to decide how well-known a trade mark must be to be considered famous enough to be diluted.
You must also demonstrate that unauthorised third-party use will weaken or tarnish the distinctiveness of your trade mark. This means customers are less likely to be able to distinguish famous goods or services from other brands. The famous trade mark owner only needs to show a likelihood of dilution rather than actual dilution.
Continue reading this article below the formTrade Mark Dilution in Australia
Most countries recognise some form of trade mark dilution, with the requirements and penalties varying worldwide. For example, Australia has no explicit dilution law. Instead, trade mark laws are more general. For example, trade mark law in Australia covers the use of well-known trade marks that will likely cause consumers to infer a connection between unrelated goods or services to the detriment of the original trade mark owner. Similarly, Canada prohibits the unauthorised use of a trade mark that will reduce the goodwill of a trade mark.
Types of Trade Mark Dilution
We outline the three main types of dilution in the table below:
| Blurring | Blurring occurs when the unauthorised use of a famous trade mark weakens the trade mark’s distinctiveness. For example, this might involve putting a famous brand name on a completely unrelated product, so consumers begin to associate the unauthorised mark with the original. This is the most common type of trade mark dilution. |
| Tarnishment | Tarnishment occurs when the unauthorised use of a famous trade mark is offensive. This might mean the unauthorised use mocks the original trade mark or its owner. For example, if a food business uses the Chanel trade mark on their packaging and the food is of poor quality, they may tarnish the trade mark. |
| Free-riding | Free-riding refers to the unauthorised use of a well-known trade mark to create a positive association with unrelated goods or services. For example, unauthorised use of a high-end brand name for an unrelated good or service is considered free-riding. This type of dilution is recognised in the EU. |
Key Takeaways
Although Australian trade mark law does not explicitly consider the concept of trade mark dilution, it is still essential to understand, particularly for those trading in international markets. Some key things to remember include the following:
- trade mark dilution is a term used to describe the unauthorised use of a trade mark that is likely to weaken the distinctiveness of or damage a well-known trade mark;
- for a trade mark to be famous, it must be recognisable to the general public; and
- there are three main trade mark dilution types: blurring, tarnishing and free-riding.
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Frequently Asked Questions
Trade mark dilution is a term that describes the unauthorised use of a trade mark that is likely to weaken the distinctiveness of a well-known trade mark. Trade mark dilution usually occurs in famous trade marks known to broad audiences.
Most countries recognise some form of trade mark dilution, with the requirements and penalties varying worldwide. For example, Australia has no explicit dilution law. Instead, trade mark laws include the use of well-known trade marks that are likely to cause consumers to infer a connection between unrelated goods or services.
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