A comparative legal study of the dilution of registered trade marks in selected jurisdictions to further the development of the remedy in South African law

[摘要] ENGLISH ABSTRACT:Trade marks are among the most valuable commodities of the modern business world.Adequate protection for trade marks to prevent the misappropriation of their incrediblemarketing power is therefore important.The aim of this dissertation is to make recommendations regarding the furtherdevelopment of existing South African law regarding the protection of registered trademarks against dilution, particularly by the courts. Current statutory protection isexamined and compared with trade-mark law in the United States and the EuropeanUnion.Although the concept of dilution originated in Germany, most of its development tookplace in the United States, starting in 1927 with an article by Frank Schechter. Dilutionoccurs when the awareness that a specific mark signifies a single product from a singlesource changes to an unmistakable awareness that the same mark signifies various thingsfrom various sources. The primary theories as to how dilution occurs are blurring andtarnishment. Although the dilution concept is widely recognised, there is still a debateamongst legal scholars on whether trade marks deserve protection against dilution.The extent of protection that the law gives to trade marks largely depends on the socioeconomicfunctions that a trade mark is perceived to fulfil. The original source or originfunction is protected by the traditional infringement provisions. The identification ordistinguishing function, quality function and advertising function subsequently gainedrecognition. The advertising function is statutorily recognised in various jurisdictions,which prevents trade-mark dilution.Statutory recognition of dilution in the United States first occurred in State law from1947 onwards. Protection is generally given to distinctive or strong trade marks where asimilar mark is used on dissimilar goods in the absence of confusion in such a way thatthere is a likelihood that the reputation of the senior mark will be injured. Theparameters of the concept were developed and refined mainly through case law. Federalprotection against dilution was only introduced in 1995. The new Act, although widelywelcomed, also brought some unpredictability and interpretation problems.The first statutory dilution protection for trade marks in Europe is found in the UniformBenelux Trade Marks Act. In 1989 the European Union adopted the TrademarkDirective, with the aim of harmonising the legal protection afforded to trade marks. Itsdilution provisions were incorporated into the United Kingdom's Trade Marks Act of1994. The sometimes conflicting interpretations of these provisions by the English courtsand the Court of Justice of the European Communities are discussed.The South African Act shows a substantial degree of harmony with legislation in theUnited Kingdom and other European countries. Aspects of the wording of the dilutionprovisions are however open to interpretation by the courts. Until the end of 2003 therewas only one major trade-mark dilution case decided by a South African court, namelySAR v Laugh It OjJPromotions, which is discussed in detail. The dissertation concludes with recommendations to aid South African courts in thefuture interpretation and application of the dilution provisions. Amendments to thelegislation are also proposed to promote greater clarity.

[发布机构] Stellenbosch University