Trademark Law Institute Amsterdam October 15 and 16, 2010 Concepts of marks with a reputation Jan Rosén Professor of Private Law Stockholm University

The EU Dilution Concept Three types of injuries to marks with a reputation following from art. 5 (2) TM Directive: Blurring – acts detrimental to the distinctive character Tarnishment – acts detrimental to the repute Free-riding – taking unfair advantage of the distinctive character or the repute

Dilution – always harmful? Art. 5 (2) TM Directive: Two forms of detrimental uses – tarnishment and blurring Free-riding – no clear detrimental effect but unfair use of distinctive character or repute

What is a well-known TM? Recognition of TM adding emotional and psychological attributes to products and services – an intangible output based on reputation A move to broaden TM Law into brand protection Protection against dilution an over-arching legal remedy?

Concept of a reputed TM An issue of fact - not a matter of law Degree of public knowledge/recognition among the relevant sector of the public All relevant facts of the case: (i) market share; (ii) intensity of use; (iii) geographic extent; (iv) duration of the use; (v) amount of investment Significant part of the public Similarity between reputed mark and later sign Later mark establish a link to the reputed mark.

Use not necessary? Application denied when there is a risk of dilution: Swedish Court of Patent Appeals N : ABSOLUT VODKA TULOSBA AKDOV

Two-step line of reasoning? (1) Association strong enough to establish a link (2) risk of injury in the assessment of possible infringement Relevant factors very similar when deciding existence of detriment/risk of detriment or those used when determining the mental association, the link.

Negative or unsure elements when assessing protection against dilution What is a enough to establish a link? What is a significant part? Detriment must mean a change in economic behaviour of the average consumer – proof thereof must be given by the owner of the well-known TM. What is due cause in art. 5 (2) TM Directive?

Positive assessment of a reputed TM Dilution proved when one of the functions of a mark is captured by the ”link”. Possible to prevent free-riding even when no harm is factually demonstrated, if not due cause for the later mark to be in usage. A shift into unwarranted new areas?

A move closer to unfair competition? At least the assessment of free-riding has a tendency to move into unfair commercial practise. Strong recognition of goodwill values. Market Court: worked up positive impression among consumers, an ”attention value”. Generally harmful if goodwill is used by others - no need to prove harm in the individual case. TM Law weaker than unfair competition law?