Compliance measures available to prevent dilution of trademarks

The dilution of a well known trademark is an act that reduces and weakens the distinctiveness of the mark and harms and tarnishes the goodwill therein. The diluter exploits the notoriety and reputation of another’s well known trademark to earn illegal commercial gain, in doing so causing harm to the trademark’s owner. Enterprises that own well known trademarks need to pay close attention to this.

Types of dilution

Well known trademark dilution is divided into three types – blurring, tarnishing and genericisation. The term “blurring” means the act whereby someone uses a trademark identical or similar to the well known mark for non-identical or non-similar goods or services. For example, using the computer trademark Lenovo on beer products.

The term “tarnishing” means the act whereby someone uses a trademark identical or similar to a well-known trademark for a non-identical class of goods or services that tarnishes, defames or has a negative impact on the reputation of the well known trademark. For example, using the perfume trademark Chanel for toilets.

The term “genericisation” means that a well known trademark ultimately becomes the generic name of the good due to improper use, thereby losing its distinguishing function, for example Bayer’s trademark Aspirin becoming the generic name for acetylsalicylic acid pharmaceuticals.