Judging Dilution in the United States and Japan

Posted: 12 Sep 2008

See all articles by Kenneth L. Port

Kenneth L. Port

Mitchell Hamline School of Law; William Mitchell College of Law

Date Written: September 10, 2008

Abstract

Dilution is a rare cause of action both in the United States and Japan. Dilution is viewed skeptically in both countries. Even though the concept of dilution is more in keeping with a Civil Law jurisdiction where the trademark itself is more subject to property ownership, in both jurisdictions, the only real justification for dilution that makes normative sense is to elevate the trademark to a level of a moral right - a moral right in which a corporation is deemed to be the "personhood" worthy of protection no matter what. This may be the justification that both country's courts have difficulty with. This extension of trademark law into and supporting monopolies is inconsistent with the basic orientation of free competition that both societies adhere to.

There is a perception in Japan that the United States is dilution-happy. However, with only 22 cases in 10 years where dilution is exclusively claimed, a mere 2.7% of all reported trademark cases in the same time period, 96 it is hard to conclude that the United States is as dilution-happy. Rather, it may be that only truly famous marks, as in Japan, actually seek relief and then they succeed in the United States only 40% of the time. This is not the picture of a dilution-happy society.

Legislatively, Japan has chosen a very vague route in defining the dilution right. The United States has chosen a very specific route. The federal dilution right in the United States is now extremely well defined. In Japan, it has been extremely vague and confusing to judges and parties since its inception in 1993. This may be because the Japanese legislature does not agree with the United States legislature that trademark dilution is that important. The United States judiciary has been very inconsistent in applying the dilution right. The legislature is attempting to assert their will by making it more specific and, in Congress's mind, more clear. In Japan, no such clarity is offered. The UCPA has been amended 12 times since 1993, 97 when the dilution right was created. If the Japanese legislature thought it was significant enough, they most certainly would have amended the statute to provide clarity as one would expect from a Civil Law nation. That they have not speaks volumes. It seems that the Japanese legislature is much more forgiving of the tension with the judiciary than the United States Congress.

Therefore, in Japan and the United States, dilution cases are reported infrequently, significant damages are rare, judicial standards are high while legislative standards are low, and neither country is anything close to being dilution-happy, in all senses of the word.

Suggested Citation

Port, Kenneth L., Judging Dilution in the United States and Japan (September 10, 2008). Available at SSRN: https://ssrn.com/abstract=1266326

Kenneth L. Port (Contact Author)

Mitchell Hamline School of Law ( email )

875 Summit Ave
St. Paul, MN 55105-3076
United States

HOME PAGE: http://mitchellhamline.edu/biographies/person/kenneth-l-port/

William Mitchell College of Law ( email )

875 Summit Ave
St. Paul, MN 55105-3076
United States

HOME PAGE: http://mitchellhamline.edu/biographies/person/kenneth-l-port/

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