On Dilution Of The Trademark

Trademark dilution is the loss or material lessening of the distinctiveness of trademarks both famous and highly distinctive. The theories of Harvard School and Chicago School concerning the justification of trademark protection both have their merits. The flaw of Harvard School lies in the fact that, in the first place, it simplifies to excess the consumers'motive in purchasing things and, in the second place, it furnishes little evidence to support its conclusion that trademark protection would result in the monopoly in specific goods by the trademark owner, while its value lies in its warning to people that overprotection would amount to barriers to free competition and market entrance. While Chicago School's justification for trademark protection is kind of persuasive, it also errs in that it values trademarks to excess, which may result in overprotection of trademarks by the competent authorities in practice. Dilution doctrine can also be justified from economic perspective. Only trademarks, registered or non-registered, of common category or unusual, are covered by dilution law, other business symbols are not the subject matter of dilution protection. Only famous and highly distinctive marks deserve protection by dilution law, famous means being widely recognized by the general public in China, common marks and marks recognized only by the public concerned do not deserve dilution protection. Highly distinctive means the protected mark, when used independently, can naturally recall the public to the goods or services it symbolizes. High distinctiveness is an independent condition for dilution protection, marks famous but not highly distinctive are not qualified for dilution protection. It is a mark's distinctiveness, rather than selling power, that is damaged by dilution acts. The result of dilution is the loss or material lessening of the highly famous mark's distinctiveness. Dilution law has a stricter requirement for the similarity between the senior and the junior mark, That is, the two marks must be so similar that consumers believe they are essentially the same one. If consumers are able to distinguish the two marks dilution would not result. Dilutive acts include blurring and genericide, though tarnishment may be governed by trademark law or unfair competition law, it does not fall within the scope of trademark dilution. Dilution law should only cover acts happening in the field of non-similar goods or services, using of the mark in identical or similar goods or services does not constitute dilution. The use of the junior mark has to be commercial for the act to be dilutive, non-commercial use is excluded from the scope of dilutive use except in the case of genericide. There shall be some exceptions to dilution, mainly including use of the senior mark in comparative advertisement, parody, news report and comment, and other non-commercial use. Besides, uses with legal reasons shall be excluded from dilution. There is no essential difference between the categories and contents of remedies for dilution and other trademark infringement acts, there are two types of civil remedies: injunction and damages. Injunction includes preliminary injunction and final injunction, the author insists that preliminary shall apply only to acts of genericede rather than blurring, and damages may be recovered only when the defendant is willful and causes actual economic loss to the plaintiff. In the end of this dissertation, China is suggested to introduce dilution doctrine in the third revision of its Trademark Law and provide workable provisions.