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Abstract:
The author compares the trademark anti-dilution and anti-free riding provisions of Articles 4(4)(a) and 5(2) of the 1988 European Union Trademark Directive with the United States Federal Trademark Dilution Act of 1996. Interpretations of the European Court of Justice are compared with that of the United States Supreme Court in the Victoria's Secret decision and of the lower federal courts. The author concludes that on both sides of the Atlantic, the courts have resolved cases by an abstract reading of the wording of their respective laws, divorced from their theoretical foundations. In both the E.U. and the U.S., courts have had little success in making sense of their anti-dilution laws.

trademark, anti-dilution, anti-free riding, EU, European Union, Trademark Directive, Trademark Dilution Act, Victoria's secret

Abstract:
Before and after the 2003 Supreme Court decision in Victoria's Secret, too many courts have assumed that an accused non-confusing trademark that closely resembles a famous mark would be likely to result in blurring and damage to the senior user's famous mark. The author opines that the main lesson of the Victoria's Secret case is that courts, in deciding claims for violation of the federal Anti-Dilution Act, should not rest their decision upon assumptions but should require evidence to prove the critical elements of a claim of dilution of a trademark. The author splits the anti-dilution prohibition into three elements required for a statutory violation for blurring: (1) multiple uses will likely occur such that they may cumulatively cause damage to the famous mark; (2) the accused mark is likely, to the ordinary consumer, to call to mind the famous mark; and (3) blurring will likely cause damage to ("dilute") the strength of the famous mark. The author argues that courts should demand a firm evidentiary basis to find that the three elements will in all probability occur.

Victoria's Secret, confusion, confusing, non-confusing, trademark, famous mark, Anti-Dilution Act