Further to our recent post about the ESA and the 'dilution"? or 'tarnishment"? of trade-marks, the Trademark Dilution Revision Act of 2006 recently became law in the United States. The new Act, which was a response to a US Supreme Court decision dealing with trade-mark dilution, expressly gives owners of 'famous"? marks the right to prevent the use in commerce of a mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment to the famous mark. The Act confirms that dilution can occur regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
'Dilution by blurring"? means an association arising from the similarity between a mark or trade name and the famous mark that impairs the distinctiveness of the famous mark. 'Dilution by tarnishment"? means an association arising from the similarity between a mark or trade name and the famous mark that harms the reputation of the famous mark.
The new legislation should make it easier for owners of famous trade-marks in the US to bring and prosecute dilution claims. As discussed in our previous post, there is not an equivalent law in Canada. However, certain parts of the Canadian Trade-marks Act (those dealing with the 'depreciation of goodwill"?) have been equated with US dilution principles.