Protecting Trade-mark Distinctiveness: The Risk of Dilution as Illustrated by the Genericism of Geographical Indicators

Protecting Trade-mark Distinctiveness: The Risk of Dilution as Illustrated by the Genericism of Geographical Indicators

The proposition that consumers are confused by the use of geographical indicators (GIs) by producers other than those from the specified geographic region is arguably a weak one. Evidence that GIs have become generic terms in many countries bolsters this argument because consumers generally do not consider generic marks to be indicia of source. However, authentic producers of GI products have suffered dilution of their marks. “Dilution” is defined as “the lessening of the capacity of a famous mark to identify goods or services” in the American Lanham Act.[FN1] As discussed below, protection against dilution appears to be a logical and necessary component of trade-mark law, beyond the concept of depreciation found s. 22 of the Canadian Trade-marks Act.

There are two types of dilution codified in American law: blurring of distinctiveness and tarnishment. In this post I will deal only with the former. This type of dilution occurs when there is “a blurring of the mental associations evoked by the mark, such that the ability of the mark to uniquely evoke the cognitive network originally associated with that mark has been whittled away or diluted”.[FN2] To illustrate, a mark such as COCA-COLA is indicative to consumers of a single producer of a certain product. In contrast, DIJON is not. DIJON is indicative to consumers of a type of mustard generally. In fact, DIJON might bring to mind other famous brand names associated with mustard, such as French’s. Thus, while the mark COCA-COLA is quite distinctive, the distinctiveness of DIJON has been blurred by the use of this mark by those other than the authentic producers of this specific mustard in Dijon, France.

Blurring can occur even when the second user of the mark is engaged in a completely different business than the original trade-mark owner. The reasoning for this type of protection is that even though a consumer may be unlikely to be confused by the use of DIJON for mustard and the concurrent use of DIJON for lampshades, there is a “weakening of associations, whittling away or lessening of the capacity of the famous mark to identify goods and services”.[FN3]

Where there is competition between the original trade-mark owner and the second party, however, blurring becomes “a step along the path to mere descriptiveness and possibly genericism”.[FN4] GIs have arguably succumbed to genericism in many countries due to dilution through use of the mark by both authentic producers and competitors.

Dilution is not simply an added trade-mark right, it is a concept that enables owners of famous marks to protect the distinctiveness of their trade-marks. Trade-mark law is premised on the notion of distinctiveness. Inherent or acquired distinctiveness is an essential requirement for registration under the Trade-marks Act.[FN5] If trade-mark owners, however, are unable to protect the distinctiveness of their mark against dilution, it seems paradoxical to protect only distinctive marks, since, once registered, distinctiveness can subsequently be lost along with statutory trade-mark protection.

The tale of GIs is illustrative of the need for statutory safeguards against trade-mark dilution by demonstrating the susceptibility of strong marks to competing use ultimately resulting in genericism. Once distinctive of high-quality products emanating from certain regions that resulted (in a number of cases) in the unique characteristics of the final product, GIs now merely serve to identify a broad class of products of varying quality, made by dozens of different producers. Thus, many GIs have been diluted to the point of genericism.

If legislatures are serious about protecting trade-marks then there is arguably the need for some sort of protection against dilution, as dilution wears away at the essential qualification for trade-mark registration. While it is likely too late to save “generic” marks, statutory protection against dilution would enable existing trade-mark owners to protect the distinctiveness of their marks on a going-forward basis. As trade-mark and brand equity continue to increase, so do the financial and business reasons for protecting the distinctiveness, and thus the trade-mark rights, of famous marks. Something akin to the prohibition against blurring found in American legislation might be a useful place to start.[FN6]

[FN1] Lanham Act, 15 U.S.C. § 1127 (1946).
[FN2] Jacob Jacoby, "The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism Fame, Confusion and Dilution" (2001) 91 Trademark Rep. 1013.
[FN3] Ibid.
[FN4] Ibid.
[FN5] Trade-marks Act, R.S.C. 1985, c. T-13 s. 12.
[FN6] The Federal Trademark Dilution Act, 15 U.S.C.S. § 1125 (2002).