Trademark dilution refers to acts that weaken the uniqueness of a famous trademark, typically as a result of blurring or tarnishment of the famous trademark. Unlike trademark infringement, trademark dilution involves use of a trademark in connection with goods or services that do not compete with those connected to the famous trademark. Trademark dilution therefore stands for the proposition that some trademarks are so well known that they deserve protection beyond the standard likelihood-of-confusion analysis for determining trademark infringement.
The elements of a trademark dilution are:
- Fame —A trademark must be famous for dilution purposes to allege a claim of trademark dilution;
- Protects the Strength of a trademark for the Owner —Instead of protecting consumers from confusing the source of (a) competing, (b) similar, or (c) related goods or services because of the similarity of the trademarks, trademark dilution protects the owner of a famous trademark from any entity that would weaken the ability to identify and distinguish the goods or services of the genuine trademark;
- Necessary Showing —The owner of a famous trademark need only show that there is a likelihood of dilution, rather than the actual existence of dilution, to be awarded relief.
In Brazil, Dilution is not foreseen by law. We use, by extension, the article 130, III of the Brazilian IP Law which says: “Art. 130. The trademark owner or the depositor is also guaranteed the right to: III – ensure their material integrity or reputation.”
Also, here in Brazil, there are three types of Dilution:
- Tarnishment: association with less valuable products or services.
- Blurring: weakening of a strong sign by using it in other contexts.
- Adulteration: adulteration of the brand, modifying its basic characteristics
The dilution theory is widely recognized by Brazilian courts, even though it is not clearly provided in the Brazilian IP Law.
Lawyer Author of the Comment: Laís Iamauchi de Araujo
Headline: Trademark Dilution – Brazilian Courts
“If you want to learn more about this topic, contact the author or the managing partner, Dr. Cesar Peduti Filho.”
“Se quiser saber mais sobre este tema, contate o autor ou o Dr. Cesar Peduti Filho.”