Civil Liability Resulting from Damage to the Distinctiveness of a Trademark: a Comparative Study in the US and Iranian Trademark Law

Abstract

The term dilution refers to the reduction in the ability of a famous mark to identify and distinguish the goods and services of that mark, even when the consumer does not think that the prior and new marks are related. Delayed use of a famous mark is usually accomplished by weakening, i.e., gradually reducing or dispersing the mark's "distinctiveness" and affecting the mental association of the general public with the mark through its use on non-competing goods. Therefore, the distinctive character of the famous marks is subject to damage through derogatory actions.<br />The use of the reputation of the trademark by a third party, even for a different product, causes a decrease in the distinctiveness of the famous mark or, so to speak, blurs it. By accepting the dilution as a violation of the trademark, the United States acknowledged the possibility of a lawsuit of blurring as an independent cause. Although the European Union has prohibited discrimination, it is reluctant to accept of doctrine of dilution as an independent cause. In the countries where the dilution doctrine has not been recognized, the owners of famous marks, in the assumption of damage to distinctiveness, are forced to refer to the general rules of civil liability to recover damages.<br />Countries have shown different reactions to the violation of the rights of the owners of famous trademarks and the granting of double rights to the owners of these types of marks and some of them finally, after much hesitation, openly accepted the doctrine of dilution.<br />In Iranian law, considering the non-acceptance of the dilution doctrine, the owner of a famous mark affected by another use has no choice but to appeal to the generality of civil liability, while the purpose of the legal regime governing marks, especially famous marks, is to grant double protection to the owners and maintain the legitimate monopoly. It is they who cannot achieve civil responsibility by resorting to public institutions.<br />Studying the legislative process and the judicial procedure of the countries that, after much delay, recognized the impairment as an independent reason for filing a lawsuit (especially the United States), clarifying the examination of the prohibition of free riding, unfair advantages, abuse, etc., none of them can cover all There are no blurring cases and it is not possible to demand damages and even prove the loss of the plaintiff by sticking to them.<br />The authors believe that if through the general rules of civil liability, competition rights, free riding, and similar titles, it is possible to prove the responsibility of the detractor and compel him to compensate for the damage, there should be no doubt in its application. However, some blurring cases cannot be matched with any of the mentioned titles.<br />In this research, key concepts such as the definition of differentiation and blurring will be explained by emphasizing the American judicial procedure.<br />One of the challenging questions in the recognition of the blurring is the intention of the defendant in the blurring. A review of the United States judicial procedure indicates that the defendant's intention is considered a significant factor, but neither sufficient nor necessarily a proof of dilution.<br />Another issue in proving the claim of blurring is the sufficiency of the likelihood of blurring or the necessity of the real blurring.<br />In this research, we will enumerate the justifications for civil liability, such as the abuse of the reputation of a famous mark, unfair advantage, unfair competition, and anti-free ridding, and we will analyze the inefficiency of each of the mentioned titles in full covering the claims of blurring the famous mark. .<br />The research method in this thesis is the library method and after collecting the materials, description and analysis have been done. The legal texts of the countries of Iran, England, and the United States of America, international documents, especially the guidelines of the European Union and its directives, the doctrine and judicial procedure of the countries, especially the courts of the United States of America and the courts of the European Union, have been considered by the authors.<br /> <br />