Dilution and unfair advantage in trade mark law : are they truly harmful and worthy of legal intervention?

Abstract

The main objective of this dissertation is to provide an in-depth analysis of the concepts of blurring, tarnishment and unfair advantage with the aim of discerning whether they are truly harmful, thereby necessitating legal intervention. The dissertation introduces the subject by looking at the functions of a trade mark and the relative grounds available for invalidating or refusing registration. It also delves into certain concepts, such as distinctiveness and reputation, which are imperative for understanding the legal basis for trade mark protection. The causes of action intended to protect trade marks against dilution and unfair advantage, as developed in jurisprudence and doctrine, are critically examined. An analysis of the ‘without due cause’ caveat is also carried out. The author concludes that while blurring and tarnishment require legal intervention to protect the trade mark and consumers, unfair advantage should not merit legal intervention as it addresses the benefit derived by the third party rather than the harm caused by the use of the trade mark. The author suggests that more importance to quantitative evidence demonstrating how famous a mark is should be given, and that a test quantifying the “fame” threshold should be adopted. Furthermore, in the interest of legal certainty, the author proposes that the “likelihood-of-dilution” standard is included in the law and that greater clarification should be given on quantifying a monetary remedy in cases where dilution is found.