Trademark dilution is a legal doctrine that protects the distinctiveness and reputation of famous marks beyond the traditional confusion-based framework. While the fundamental objective remains consistent across jurisdictions—to safeguard the immense goodwill and "commercial magnetism" of prominent brands—the statutory frameworks and thresholds for protection vary significantly.
This analysis compares the statutory frameworks, protection thresholds, and legal tests for dilution in the United States, the European Union, and Armenia, highlighting key differences and judicial interpretations.
The United States: Codified Dilution Doctrine
U.S. trademark dilution is governed by the Trademark Dilution Revision Act of 2006 (hereinafter: the “TDRA”), 15 U.S.C. § 1125(c). Under the TDRA, protection is exclusively reserved for "famous" marks—those widely recognized by the general consuming public of the United States. This high threshold excludes marks that are merely well-known within niche or regional markets. The statute explicitly recognizes two forms of dilution::
- Dilution by Blurring: An association arising from the similarity between a mark and a famous mark that impairs the latter's distinctiveness. The TDRA provides six non-exhaustive factors for this assessment, including the degree of similarity and the extent of the owner's exclusive use. For example, if "Coca-Cola" were registered as a trademark for clothing, the distinctive association of the original mark with a soft drink manufacturer would gradually erode.
- Dilution by Tarnishment: An association that harms the reputation of the famous mark, often through association with unsavory or inferior products. For example, if "Chanel" were used for a line of pesticides, the association with toxic chemicals would damage the luxury brand's prestigious image.
These claims are actionable regardless of competition or likelihood of confusion, and regardless of whether the junior use is on similar or dissimilar goods.
The European Union: Reputation-Based Protection
The European Union addresses dilution through Article 9(2)(c) of the EU Trade Mark Regulation (EUTMR) 2017/1001 and Article 10(2)(c) of the Trade Mark Directive (TMD) 2015/2436. A key distinction from the U.S. is the threshold: the EU requires "reputation" rather than "fame." A reputation exists when the mark is known by a significant part of the public concerned by the products or services covered by that trademark.
The EU framework prohibits the use of a sign that, without due cause, "takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark".
This captures three distinct injuries:
- Detriment to Distinctive Character (Blurring): Weakening the mark's ability to identify source.
- Detriment to Repute (Tarnishment): Reducing the mark's power of attraction through negative association.
- Unfair Advantage (Free-riding): Benefiting from the mark's prestige without compensation.
The Court of Justice of the EU (CJEU) holds that while reputation, similarity, and a "link" leading to harm must be established, proof of actual damage is not required; a risk of such harm suffices.
Armenia: Functional Equivalence and Judicial Interpretation
Armenian trademark law does not employ the term "dilution" and contains no standalone dilution provision. Instead, protection for well-known marks is governed by Articles 29–31 of the Law of the Republic of Armenia on Trademarks.
Article 30(2) allows owners of well-known marks to prohibit unauthorized use of similar signs on non-identical goods or services if it implies a connection and is likely to harm the rights holder's interests. Unlike the U.S. and EU, Armenian law requires a formal recognition procedure by the Board of Appeal under Article 31 for a mark to be declared "well-known". Without this, cross-class protection may be limited.
(similarity of goods, similarity of signs, and risk of confusion) still applies, with well-known status acting as an "amplifying factor" for confusion likelihood. The Court affirmed that for well-known marks, goods identity is not mandatory, but sign similarity and risk of harm are essential.
Conclusion
The U.S., EU, and Armenia protect renowned marks from dilution-like harms, but with differing thresholds and doctrinal granularity. The U.S. demands "fame" and explicitly defines blurring/tarnishment. The EU uses a "reputation" standard and includes "free-riding." Armenia, through its well-known mark regime, achieves functional parity but requires formal recognition and applies a unified "harm to interests" standard.
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Author:
Karine Markosyan
Junior Associate, Legelata Legal and Tax
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This material is produced by or for Legelata LLC. The information contained in this piece is provided for general informational purposes only and does not contain a comprehensive analysis of each item described. Prior to undertaking (or omitting) any action, the reader is advised to seek professional advice tailored to their specific situation. Neither Legelata nor the author accept and hold liability for acts or omissions taken in reliance upon the contents in this material.
LEGELATA LLC 03/04/2025
