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In a word, the U.S. trademark legislation of anti-dilution is a complicated process, covering many thorny questions to resolve. Even today, whether the “likelihood of dilution” standard in judging well-known mark infringement is an appropriate way to protect well-known marks still remains unknown. Would it be an excessive protectionism of well-known marks and discriminating other business competitors’ just rights? Because existing small businesses and potential future businesses will be severely limited when choosing how to market their products under this new Revision Act. Another concern is that it is still in the absence of precisely articulating how likely it must be before the dilution takes place to trigger federal protection in the future.
(B) European Union’s Position
Generally speaking, the European Union (EU) has been steadily building up jurisprudence in trademark dilution protection area. Taking the dilution laws of the United States as a benchmark, EU would be well advised to pay attention to the problems experienced in the U.S. to eliminate avoidable trouble in the context of establishing or adopting new anti-dilution laws.
Under the EU’s legislation, a mark must be shown to have a reputation before it qualifies for EU dilution protection. What is important here is not whether the earlier mark has a good or bad reputation. Instead, it is the degree to which the mark is known by the public that matters. According to the European Court of Justice (ECJ)''s reading, the concept like “recognition” or “reputation”, is a neutral term.
The ECJ has taken the same approach as the U.S. towards the distinctiveness of the earlier mark, finding that the strongerthe earlier mark''s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it.
It is reasonably understandable, because the owners of these strong marks most probably have more to lose once being infringed, therefore there may have been a feeling that more reputable marks are more worthy of protection. Article 5(2) of the EU Trademark Directive enables an owner of a trademark with "a reputation" to prevent anyone from using identical or similar marks in a manner that "takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark."
The mark with weaker inherent distinctive character will be lesslikely to benefit from protection.
In comparison with the debate over the actual dilution requirement in the Unites States, the debate in the EU has attracted lower level of attention. Consequently, there also has been little consideration of the role of multifactor tests under such a requirement. The ECJ has neither expressly ruled on whether anti-dilution plaintiffs must prove actual dilution, as opposed to likely dilution, detriment or unfair advantage in either infringement cases or registration challenges, nor commented on whether multifactor tests could play a role in establishing unfair advantage or detriment. The only guidance in relation to how to show "actual detriment" comes from the Advocate General in General Motors: “.... The taking of unfair advantage or the suffering of detriment must be properly substantiated, that is to say, properly established to the satisfaction of the national court: the national court must be satisfied by evidence of actual detriment, or of unfair advantage. The precise method of adducing such proof should in my view be a matter for national rules of evidence and procedure, as in the case of establishing likelihood of confusion.”
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