The U.S. congress has approved an amendment to the Trademark Dilution Act, in a move intended to close a loophole that the U.S. Supreme Court found in a case involving the marks VICTORIA’S SECRET and VICTOR’S LITTLE SECRET. The Trademark Dilution Revision Act will now be sent to the President for signature, which is expected to occur in the next few week.
When first introduced, the Trademark Dilution Act was intended to provide additional protection to “famous marks” over and above the protection available to less well known marks, which require there to be confusion due to use with similar products or services, overlapping channels of trade and the like. So if a mark is well known enough, in theory no one should be able to use that mark or a similar mark for any goods or services. The problem noted by the Supreme Court in the case involving VICTOR’S LITTLE SECRET, was that it required the famous mark owner to prove that the other mark had caused actual dilution, rather than likelihood of injury.
The new Act makes it clear that a famous mark owner has a cause of action even in the absence of actual dilution, if the identical or similar mark is likely to cause dilution by blurring its distinctiveness or tarnishing its image. The new Act exempts use of famous marks for noncommercial purposes such as parodies, criticisms or new reporting.
Unfortunately for the well known brand owners of the world, this legislation will not be applicable in Canada, where there’s no statutory provisions that are specific to famous marks. The Supreme Court of Canada recently ruled that, in theory, a mark could be famous enough that it would transcend its goods and services boundaries. However, in the case of BARBIE and VEUVE CLICQUOT, neither mark, though well known for dolls and champagne, was famous enough to stop a third party from using very similar marks for restaurant services and retail clothing services, respectively.