"The protection of trademarks is the law's recognition of the psychological function of symbols."1

INTRODUCTION

Advertising used to be about informing consumers where the products they purchased came from and which person or corporation was responsible for their manufacture. However, over the past 50-60 years, advertisers have been striving to give brands an image or identity, which induces consumers to buy the brand as much as the underlying product to which it is affixed. Brands have therefore become valuable economic assets in their own right.

Whilst the words and logos that are protected by trade mark registration represent a very small part of the overall branding strategy of a corporation, trade mark law is still an obvious starting point for protecting a corporation's brand.

Trade mark law has traditionally focused on preventing second uses of a trade mark where a consumer is likely to be confused into thinking that the second user's goods originate from the trade mark owner. In other words, according to early trade mark law, trade marks only functioned as indicators of origin. However, the developments in branding outlined above, mean that consumers no longer care who manufactures their products as long as they are "official" products.

Part I of this paper looks at how trade mark law in the US and Europe has started to take into account this shift in the way that consumers interact with brands and to protect the brand image/equity that brand owners create in their marks. In particular we shall see how the US legal commentator Schechter called for a change in the law, as early as the 1920s. In fact, Schechter claimed that preserving the distinctiveness that a mark acquires through advertising was the "only rational basis for trade mark protection."2

Part II will go on to consider how the Court of Justice of the European Union (CJEU), in its eagerness to recognise the changed interaction between consumers and trade marks, has developed its own concept of marks have advertising/communication/investment functions in addition to their essential (origin) function. Whilst this is an exciting development for brand owners, it is unclear from the CJEU's dicta when these functions are infringed. It seems that the Court could benefit from delving a little deeper into exactly what these functions represent and the rationale for protecting them.

Part III considers how consumers interact with modern marks and shows that the advertising/communication/investment functions are at least partly attributable to the fact that consumers are vulnerable to corporate selling messages contained in advertising. In some cases, consumer loyalty to particular brands may be described as being irrational (at least in the psychological sense of the word). Therefore, the CJEU needs to ensure it does not protect the new non-origin functions absolutely, as this would be far from being the rational basis for protection that Schechter envisaged.

Having performed the above analysis, part IV will look at three of the most common models proposed for trade mark protection: misappropriation, property and harm-based theories. It will then consider which of these models is best suited to protecting the brand value/equity that modern marks have acquired and will examine how having a concrete legal basis for trade mark law could assist the CJEU in future cases.

PART I - BRAND EQUITY - THE LEGAL PERSPECTIVE

1.1. How Marketing has Changed

"The astronomical growth in the wealth and cultural influence of multi-national corporations over the last fifteen years can arguably be traced back to a single, seemingly innocuous idea developed by management theorists in the mid-1980s: that successful corporations must primarily produce brands, as opposed to products.3"

In the early nineteenth century, the primary concern of every manufacturer was to establish a reputation for the quality of their goods. Advertisements used to inform consumers about the existence of some new invention and convince them that their lives would be better if they used, for example, cars instead of wagons, telephones instead of mail and electric light instead of oil lamps.4 Therefore advertising was designed to inform and educate the public.

After a time, the market became flooded with mass-produced products that were physically fairly indistinguishable from each other. Therefore, manufacturers started to create a brand image in an attempt to entice consumers away from similar products created by rivals.5 Advertisers worked to ensure that marks symbolised to consumers not just the identity of the origin/manufacturer of the goods but also a whole host of other information about the underlying products built up through the trade mark owner's advertising.

Certain industries (e.g. clothing) arguably managed to make consumers desire logos more than the underlying product. Until the early seventies, logos on clothes were generally discreetly placed on the inside of a collar and hidden from view, however, as Klein points out today "logos have grown so dominant that they have essentially transformed the clothing on which they appear into empty carriers for the brands they represent.6"

The result of this is that brands have become economic assets with equity value completely independent of the goods they are affixed to. According to Klein, the defining moment was in 1988, when Philip Morris purchased Kraft for $12.6 billion, six times what the company was worth on paper, for the name "Kraft".7 Today brands such as Coca-Cola are valued at more than $70 billion.8

So what does this increasing autonomy and economic value of brands have to do with trade mark law? Trade mark law only protects a small part of a corporation's brand; it protects the name or logo (provided they are registered) of the corporation, rather than the brand identity of the corporation as a whole. However, as we shall see in the subsequent sections, the changed focus of branding has infiltrated into and influenced trade mark law.

1.2. Schechter and Dilution

Trade mark protection has traditionally been based on enabling consumers to identify without any possibility of confusion the manufacturer or origin of branded products. This was sensible when consumers and advertisers used marks only to indicate who manufactured the underlying products. However, as marks began to play a much more active role in consumer purchasing behaviour (as outlined in section 1.1 above) and became valuable business assets in their own right, the focus of trade mark protection was forced to change.

As early as the 1920s, a US legal commentator called Frank Schechter recognised that the ramifications of modern trade meant that consumers rarely knew or cared who manufactured products they purchased.9 Instead marks had come to signify goods that emanated from the same – possibly anonymous – source as previous goods they have experienced bearing that mark.10 For example, if we consider the situation of a consumer purchasing a particular brand of soap, when that consumer sees the trade mark in the supermarket, he does not see it as signifying who manufactured the soap but instead as indicating the fact that here is a product that he has tried before, that was satisfied with and would like to try again.

This shift in focus meant that consumers were now associating information about the goods with the mark rather than the manufacturer:

"today the trademark is not merely the symbol of good will but often the most effective agent for the creation of good will, imprinting upon the public mind an anonymous and impersonal guaranty of satisfaction creating a desire for further satisfactions. The mark actually sells the goods. And, self-evidently, the more distinctive the mark, the more effective is its selling power.11"

Schechter said that the focus of trade mark law had to develop from its traditional roots in preventing junior (third party) uses on similar goods and services where they could cause consumer confusion to protecting the mark's "selling power" or its "distinctiveness" amongst the public; this could be harmed in circumstances where the junior use was on completely different goods and consequently the consumer was unlikely to be confused.

According to Schechter, the real damage that had to be prevented for the modern mark was "the gradual whittling away or dispersion of the identity and hold upon the public mind of the mark or name by its use upon non-competing goods."12 Schechter concluded "that the preservation of the uniqueness of a trademark should constitute the only rational basis for its protection."13

Schechter gave the following example, which illustrates particularly well how damage can be caused by use of an earlier mark on non-competing goods in circumstances where confusion might not arise:

"If you take Rolls Royce for instance, if you allow Rolls Royce restaurants and Rolls Royce cafeterias, and Rolls Royce pants, and Rolls Royce candy, in 10 years you will not have a Rolls Royce mark any more.14"

Schechter further concluded that the more distinctive or unique a mark was (i.e. if the mark was an arbitrary, coined or fanciful rather than a descriptive word), the more protection it should receive because it had only ever been associated in the public's mind with that desirable product.15

1.3. Analysis of Schechter's Theory

The damage that Schechter described has become known as dilution, or more specifically blurring. Schechter's theory is very persuasive because it is the result of careful analysis of how trade marks function in the market.16 Indeed erosion of distinctiveness in the Rolls Royce mark is something that we can all appreciate and it intuitively feels right to stop a junior use that diminishes the associations built up in that luxury brand. However, Schechter did not offer any information about when such damage would occur and which second uses of a mark should be stopped. It was therefore left for national legislators and the Courts to bridge this gap.

1.4. Adoption of Dilution in the US

Schechter's theory actually sparked a great deal of debate and scepticism amongst trade mark purists, who thought that trade mark law should always be based on preventing confusion as to origin.17 It was therefore not until 27 years after Schechter's theory that the doctrine of dilution was first enshrined in law by the State of Massachusetts.18 Eventually, in 1995, dilution was adopted in US federal law by the Federal Trademark Dilution Act (FTDA), with the insertion of a new section 43(c) in the Lanham Act19 that allowed a trade mark owner to obtain an injunction if another person's use in commerce caused dilution of the distinctive quality of a famous mark.20

The Lanham Act defined "dilution" as:

"the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the owner of the famous mark and other parties, or likelihood of confusion...21"

(emphasis added)

The Act clearly adopted Schechter's dilution doctrine, however, it protected "famous" marks as opposed to arbitrary, coined or fanciful marks.

The US Courts went on to develop Schechter's dilution doctrine substantially. For example, they identified a second form of dilution in addition to blurring, which they called tarnishment.22 Tarnishment occurs if a famous trade mark (or similar mark) is used on inferior products or in an unwholesome context, which is likely to cause the public to associate negative information with the mark.23 An example of tarnishment would be using the name of a famous retailer as the name of a sex shop (a real life example, as we shall see below). Tarnishment, perhaps even more than blurring, protects the brand image that advertisers seek to build up in their marks. Although many injunctions were granted on the basis of tarnishment, it was not explicitly stated in the wording of the FTDA.

Over time, problems started to arise as a result of judicial interpretation of the FDTA.

Firstly the US Courts developed a low standard as to what constituted a "famous" mark: fame in a particular product market or geographical area was sufficient to ensure protection against dilution.24 Schechter made it clear that dilution was about protecting marks where their public reputation transcends product boundaries i.e. there was no need for use on competing classes of goods/services and accordingly consumer confusion. If Schechter's theory was based on protecting marks that had become sufficiently famous for their reputation to transcend product markets, surely protection should not extend to marks that are famous in just one product market or geographical area.

The second problem with the US Courts' interpretation of federal dilution legislation arose due to a judgment of the Supreme Court in Moseley v Victoria Secret.25 The facts of this case are that the defendant, Mr Victor Moseley, set up a sex shop called "Victor's Little Secret" that sold lingerie and other adult novelties – the reputable brand of Victoria's Secret took exception to this use and claimed that Mr Moseley was diluting and tarnishing their trade reputation.

Victoria Secret lost its case before the Supreme Court because the Court held that it had failed to provide evidence of actual economic damage caused by the allegedly diluting junior use of the mark.26 The Court unanimously decided that "the mere fact that consumers mentally associate the junior user's mark with a famous mark is not sufficient to establish actionable dilution."27 This was a very difficult standard to impose on trade mark proprietors because, even if they could show empirical evidence of loss of sales, it would be difficult to relate this loss back to the defendant's use of a mark, rather than general economic conditions.

Furthermore this actual dilution requirement would require proprietors to wait until they have suffered actual economic damage before allowing them to take action. However, an inherent difficulty with blurring and tarnishment is that it is very difficult to identify the point at which junior uses start to cause damage to the famous mark. Referring back to Schechter's example, the second use of Rolls Royce on a candy store is unlikely to diminish the exclusivity of the mark in the mind of the purchasing public, however, what about the fifth use or hundredth use of that mark? At what point does the car manufacturer start to suffer actual economic damage as a result of the dilution of its selling message? It may be that all of these uses collectively harm the proprietor's income rather than any one use in particular, however, should the proprietor be forced to sit back and watch as the distinctiveness of its mark suffers death by a thousand cuts?

A further problem with the judgment in the Moseley case was that the Supreme Court even cast doubt on whether tarnishment, which was by then well established in State Courts, was protected by the FTDA.28

Following the Moseley judgment, there was substantial rallying by the International Trade Mark Association, and the FTDA was repealed and replaced by the Trademark Dilution Revision Act 2006 (TDRA). The TDRA expressly acknowledged that proprietors could prevent tarnishment as well as blurring. It also made it clear that the proprietor did not have to prove actual economic damage but only likelihood of dilution, which is a more sensible standard than that proposed in Moseley. Nevertheless the legislation still required something more than a mere possibility or risk of blurring.

The legislation also introduced a new fame standard for marks to qualify for protection, requiring marks to be "widely recognised by the general consuming public of the United States as a designation of source"29 thereby removing marks with "niche fame" from the remit of dilution protection.

The experience of the US in introducing dilution is important because it shows the difficulties in determining: (i) how famous a mark must be before it should be protected against dilution; and (ii) when dilution should be stopped given that by the time actual harm occurs it will be too late for the trade mark proprietor to halt the detriment to their brand image.

The next section goes on to consider how European legislation has dealt with these two issues.

1.5. Adoption of Dilution in Europe – Article 5 TMD

As trade mark law in Europe currently stands, the European Trade Mark Directive30 (TMD) provides minimum standards of protection for adoption across EU member states.

It is interesting to note that the infringement provisions, which are set out in Article 5 TMD, take a similar approach to that in Article 5 of the Benelux Trade Marks Act 1971 in that they classify separate infringement situations i.e. use on identical goods, use on similar goods, use on dissimilar goods and the damage that should be prevented in each situation.31 This is an altogether different focus to the US legislation described above.

This paper refers throughout to articles 5(1)(a), 5(1)(b) and 5(2) of the TMD, therefore, these provisions are set out in full in the appendix.

Article 5(1) TMD addresses use on identical goods and similar goods. According to the preamble to the TMD, these two provisions are geared towards preserving the traditional role of trade marks i.e. "in particular to guarantee the trade mark as an indication of origin."32 The preamble also states that article 5(1)(a) TMD should offer "absolute protection" to trade mark owners i.e. infringement should arise automatically if the second use employs an identical mark in relation to identical goods/services. The idea behind this is that it makes it easier for trade mark owners to stop use of their marks on counterfeit goods.

Advocate General Jacobs in Adidas v Fitnessworld 33 confirmed that, by preventing detriment to distinctive character and repute, article 5(2) TMD effectively protects against blurring and tarnishment respectively. However, the notion of taking "unfair advantage" is quite different to US dilution legislation. AG Jacobs in that case also pointed out that there was no apparent difference between taking unfair advantage of a mark's distinctive character or of its repute, therefore, we tend to consider "unfair advantage" as the third type of infringing use in addition to blurring and tarnishment.34

Like the US federal legislation, article 5(2) grants protection to marks that have acquired such a reputation that consumers would make a link with junior uses even on dissimilar products/ markets. However, article 5(2) differs from US law in that it protects marks with "reputation" rather than "famous" marks.

Originally it was thought that article 5(2) only applied in circumstances where the second user used the mark in relation to dissimilar goods/services, however, in Davidoff v Gofkid35 the CJEU ruled that it also applied where goods were identical or similar. This is surely correct, however, it has broken the neat classification between the different sections of article 5 TMD.

1.6. Extent of Protection under Article 5(2)

This section considers whether the CJEU has fared any better than the US Courts did initially in determining: (i) which marks should be protected; and (ii) when infringement occurs.

1.6.1. Which Marks?

As we saw above, the US legislature was forced to amend its federal dilution legislation to ensure that marks with niche fame would not qualify for dilution protection.

The EU test for whether marks have a reputation and therefore fall within article 5(2) comes from General Motors36:

  1. the mark must have a reputation amongst either the public at large or a more specialised public, depending on the type of product or service concerned;
  2. the mark must be known to a significant part of the relevant public, bearing in mind the market share, intensity/ geographical extent/ duration of use and size of the investment in promoting it; and
  3. it is not necessary for the mark to be known in the whole of the territory concerned provided it is known by the public in a substantial part of that territory.

Arguably this test includes marks with niche fame in a particular product market. As stated in section 1.4, there is difficultly reconciling this with the kind of dilution protection envisaged by Schechter.

There is a trade-off between granting strong protection to "top marks" (as has occurred in the new legislation in the US) or providing weaker protection to a greater number of marks that have niche fame in a particular product market. The CJEU seems to have gone with the second approach, therefore, we would theoretically expect the CJEU to be conservative in the way it applies the protection under article 5(2) TMD. However, as we shall see below, the CJEU has in fact interpreted "unfair advantage" in such a way that grants a substantial degree of protection to a large pool of marks.

1.6.2. When does Infringement Occur?

1.6.2.1. The Link

The CJEU has repeatedly insisted that the protection under article 5(2) exists independently of consumer confusion.37 However, the CJEU does require that consumers establish some sort of connection or link between the two marks.38 This approach seems entirely sensible because ultimately what Schechter was seeking to protect was the exclusivity of the mark in the eyes of the public, therefore we should never lose sight of the fact that (although confusion is not required) consumers must make some sort of connection between the earlier registered mark and the second use of an identical/similar sign.

The exact nature of this link has been hotly debated. Jacob LJ in his referring judgment to the CJEU in Intel suggested that the link must be more than "a mere passing to mind".39 He was concerned that the protection would be too monopolistic unless the average consumer at least wondered whether there was a trade connection between the proprietor and second user.40

The CJEU in L'Oreal v Bellure, however, confirmed that this link only had to be a mere calling to mind but that whilst the mere existence of the link is necessary, it is not sufficient to prove infringement.41 This approach seems sensible because anything stronger than a mere link would be getting into the realms of confusion.

1.6.2.2. What is needed for tarnishment and blurring?

As discussed in section 1.4 above, there is an inherent difficulty with blurring and tarnishment in that it is very difficult to identify the point at which those uses will damage the mark's exclusivity. For this reason, the CJEU does not require actual harm as it would be unfair to require the trade mark proprietor to wait until actual dilution has occurred before bringing an infringement action. Instead the Court "requires evidence of a change in the economic behaviour of the average consumer of the goods or services...or a serious likelihood that such a change will occur in the future".42

The legal commentator, Simon Fhima, complains that this approach by the CJEU of requiring the owner to show a change or likely change in economic behaviour is extremely restrictive. In particular:

"the lack of guidance as to what will amount to a change in economic behaviour has meant that the vast majority of trade mark owners have been unable to put together a credible blurring case because they simply do not know what evidence to adduce and tribunals have repeatedly thrown out blurring cases because no concrete evidence of a change of economic behaviour has been provided.43"

Whilst Simon Fhima is correct, we should welcome the fact that the CJEU has not fallen into the trap of the US Supreme Court in Moseley by requiring mark owners to prove actual loss of sales. Nevertheless, perhaps a better understanding of exactly what the concept of "dilution" is seeking to protect in the "distinctiveness" of marks will make it easier for Courts and brand owners to predict when blurring and tarnishment occur. This paper undertakes just such an analysis in part III.

1.6.2.3. Unfair Advantage

Whilst the CJEU has taken a pragmatic approach to blurring and tarnishment, the Court appears to have adopted a different path in its interpretation of "unfair advantage". The current keynote case on unfair advantage is L'Oreal v Bellure.44 L'Oreal brought a trade mark infringement action against a number of defendant companies (Bellure, Starion and Malaika) who were making smell-alike versions of their perfumes. The defendants were using L'Oreal trade marks, such as TRESOR, MIRACLE, ANAÏS-ANAÏS and NOA NOA on imitation boxes and bottles and in comparison charts indicating to consumers which of their perfumes smelt like those of the claimant.

L'Oreal alleged that the use of similar marks on the rival perfumes themselves amounted to taking an unfair advantage under article 5(2) TMD. Furthermore they alleged that the use of identical marks fell under article 5(1)(a) TMD. This paper goes on to consider the CJEU's judgment in relation to article 5(1)(a) in part II, however, this section is primarily concerned with the interpretation of article 5(2) TMD and therefore considers the CJEU's judgment on "unfair advantage".

The key part of the judgment that considers the meaning of "unfair advantage" states that:

"[t]he advantage arising from the use by a third party of a sign similar to a mark with a reputation is an advantage taken unfairly...where that party seeks by that use to ride on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark's image.45"

(emphasis added)

This interpretation is significant because it does not require any harm to the earlier mark (let alone a serious likelihood of harm, which is the test for blurring/tarnishment) but is instead concerned with the advantage acquired by the second user.

This interpretation of unfair advantage has not proved popular with a number of legal commentators, who see this as an attempt to sneak in a remedy for unjust enrichment under the guise of trade mark law.46 The most common complaint is that a certain amount of free riding on existing competitors' reputations is inevitable to encourage new market entry and free competition.

Griffiths believes that interpreting unfair advantage as free-riding imposes: "costs not only on other traders, but also on consumers since it would restrict the scope for using a familiar trade mark or its imagery as a tool for communication."47

Furthermore, although the judgment in Adidas-Salomon48 requiring a link to be made between the earlier and later marks (see section 1.6.2.1 above) apparently applied to all three infringing uses in article 5(2) TMD, in light of this judgment in L'Oreal, which seems to focus exclusively on the proprietor-competitor relationship and to ignore whether any harm occurs from the point of view of the consumer, one has to question whether the proprietor has to prove this consumer link anymore for "unfair advantage".

Jacob LJ was particularly vocal about the CJEU's judgment in L'Oreal when the case returned to the UK Court of Appeal, saying that the CJEU's judgment moved too far towards protecting the trade mark owner's interests and failed to consider the consumer's interest in free competition. In particular Jacob LJ said:

"I regret that the ECJ in this case has not addressed the competition aspects of what it calls "riding on the coattails". The trouble with deprecatory metaphorical expressions such as this ("free-riding" is another), containing as they do clear disapproval of the defendants' trade as such, is that they do not provide clear rules by which a trader can know clearly what he can and cannot do.49"

Although it might be difficult to appreciate how the use made by Bellure and the other defendants in their comparative advertising lists took "unfair advantage", there are certainly circumstances where a second user is seeking to wink at the earlier brand and obtain a commercial advantage in the process. For example, AG Jacobs in Adidas-Salomon said that Rolls Royce should be able to prevent a whisky manufacturer from using its mark to exploit the reputation of luxury and prestige built up in the mark.50 Once again, it seems that the CJEU could benefit from a greater analysis of exactly what article 5(2) TMD is seeking to protect.

1.7. Conclusion

Although Schechter's dilution doctrine is now well established in both European and US trade mark law, the Courts in both jurisdictions have struggled to determine the extent to which it protects the brand equity/image of certain trade marks. In particular, commentators have raised concerns over the CJEU's broad interpretation of "unfair advantage" and the fact that the CJEU seems to be granting this strong protection to a large number of marks by introducing a low benchmark for what counts as "reputation" under article 5(2) TMD. What is striking is that, when the CJEU decided the meaning of "unfair advantage" and the tests for blurring/tarnishment, it did not perform an analysis of the consequences of expanding protection in this way.

Part II of this paper will look at another example of the CJEU increasing trade mark protection by developing the concept of marks having advertising/communication/ investment functions. This concept is entirely judge-made and has therefore led to a certain degree of confusion amongst legal commentators.

Parts III and IV will then consider exactly what is behind the increased brand value of trade marks. We shall see, that until Courts and commentators have an appreciation of what lies behind the new "selling power"51 of trade marks, they cannot determine the justifications for protecting it and in turn the extent of protection which should be granted.

APPENDIX 1

Article 5 TMD

  1. "The registered trade mark shall confer on the proprietor the exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade
    1. Any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
    2. Any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark.

  2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark." (emphasis added)

Footnotes

1. Frankfurter J, in Mishawaka Rubber & Woolen Mfg Co. v S.S. Kresge Co. 316 US 203, 205 (1942)

2. F. Schechter, 'The Rational Basis of Trademark Protection' (1926-277) 40 Harv. L. Rev. 813, 831

3. N. Klein, No Space, No Choice, No Jobs, No Logo (Flamingo, 2001), p.3

4. Ibid, p 5

5. Ibid, p.6

6. Ibid, p. 28

7. Ibid, p.7

8. According to Interbrand's Best Global Brands Report 2011 (http://www.interbrand.com/en/best-global-brands/best-global-brands-2008/best-global-brands-2011.aspx)

9. Schechter, 'Rational Basis' n.2 above, p.814

10. Ibid., p.816

11. Ibid., p.819

12. Ibid, p.825

13. Ibid, p.831

14. Hearing Before the House Comm. On Patents, 72d Cong. 15 (1932) as quoted in Schechter, 'Rational Basis' n.2 above

15. Schechter, 'Rational Basis' n.2 above, p.825-828

16. R. Bone, 'Schechter's Ideas in Historical Context and Dilution's Rocky Road' (2008) 24 Santa Clara Computer & High Technology Law Journal 469 as quoted in Simon Fhima, 'Dilution by blurring' (2010) I.P.Q. 44, 45

17. R. Klieger, 'Trademark Dilution: The Whittling Away of the Rational Basis for Trademark Protection', 58 U. Pitt L. Rev. 789

18. S. Casparie-Kerdel, 'Dilution disguised: has the concept of trade mark dilution made its way into the laws of Europe?' (2001) E.I.P.R. 185, 186

19. The legislation in the US that contains federal trade mark law

20. 15 USC §1125

21. 15 USC §1127

22. S. Casparie-Kerdel, 'Dilution disguised', n. 18 above, p.186

23. Ibid., p.187

24. I. Simon Fhima, 'The Fame Standard in the United States and European Union Compared', 17 TRANSNAT'L L. & CONTEMP. PROBS. 631 (2008)

25. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 65 U.S.P.Q.2d (BNA) 1801 (2003)

26. Ibid, p.433

27. Ibid, p.419

28. Ibid, p.432

29. 15 USC §1125

30. Directive 2008/95/EC of 22 October 2008 to approximate the law of the Member States relating to trade marks

31. S. Casparie-Kerdel, 'Dilution disguised', n.18 above, p.190

32. Recital 11, First Council Directive 2008/95/EC, n.30 above

33. Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd, [2003] E.T.M.R. 91, para. 36

34. Ibid.

35. Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd, Case C-292/00 [2003] ECR I-389

36. General Motors Corporation v Yplon SA, Case C-375/97 [1999] ECR I-5421

37. Sabel v Puma Case C-251/95 [1998] E.T.M.R. 1, para. 20; Adidas-Salomon AG, n.33 above

38. Adidas-Salomon AG, n.33 above, para. 2

39. Intel Corp Ltd v CPM United Kingdom Ltd [2007] RPC 35, para. 29

40. Ibid., para. 30

41. Intel Corp. Inc. v CPM UK Limited, Case C-252/07, 27 November 2008. para. 32

42. Ibid, para. 77

43. Middlemiss and Warner, 'The Protection of Marks with a Reputation: Intel v CPM' [2009] EIPR 326, 328 as quoted in I. Simon Fhima, 'The Court of Justice's protection of the advertising function of trade marks: an (almost) sceptical analysis', (2011) 6 (5): 325, 328

44. L'Oreal SA V Bellure NV, Case C-487/07 [2009] E.T.M.R. 55

45. Ibid, para. 50

46. T. Aplin & J. Davis, Intellectual Property Law – Text, Cases & Materials (Oxford University Press, 2009) p.291

47. A. Griffiths, 'A Law-and-Economics perspective on trade marks' in Bently, Davis & Ginsburg (ed.), Trade Marks and Brands – An Interdisciplinary Critique (Cambridge University Press, 2008), p.263

48. See n.33 above

49. L'Oreal SA and others v Bellure NV and others [2010] EWCA Civ 535, para. 17

50. Adidas-Salomon, n.33 above, para. 39

51. Schechter, 'Rational Basis' n.2 above, p.814

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