What might have happened if there had not been Article 16(3) of TRIPS?

This Kat, being a bit of a history buff, recently read with great relish a review in The New Yorker, written by Louis Menand (himself a distinguished social/intellectual historian), of the new book by W. Joseph Campbell, 1995: The Year the Future Began. What was of particular interest was Menand's discussion of the different ways that historians choose what he calls their "basic unit of explanation." There are top-down histories, bottom-up histories, sideways histories, history of the longue durée, and even the history of the present (how will historians look at our present in another one hundred years) .My favorite leap of historical imagination, however, is counter-factual history, which asks what would the world be like today if "X" had not happened (say, if William the Conqueror had been stopped at Hastings or George Washington saw his troops melt away at Valley Forge).

This Kat thought about counter-history in doing some research on famous marks and dilution. Still being mystified a bit about what dilution is all about, he asked himself: what would have happened if the TRIPS Agreement had not embraced dilution in Article 16(3)? For those Kat readers who have not committed TRIPS to heart, we remind you that Article 16(3) provides as follows:

"Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use."

Voilà—dilution in its later various national forms had been given international imprimatur. But this imprimatur was not pre-ordained. Indeed, in his classic 1975 work, Patents, Trademarks, and Related Rights: National and International Protection, Stephen Ladas describes the history of Article 6bis of the Paris Convention, which gave international recognition to the notion of a well-known mark. He describes how a proposal for a new paragraph to be added to Article to 6bis, to provide for dilution-like protection, was rejected at the Lisbon Conference of 1963. This was also the time that there was still substantial skepticism how far to allow trade mark protection to go beyond the classic conceptualization of the trade mark right.

If the more broad pro-trade mark position had not taken root, perhaps the anti-dilution forces would have fond it more difficult, if not possible, to amend Article 6bis via the enactment of Article 16(3) of TRIPS. Perhaps the position would have remained that dilution, in all its various forms, was not an appropriate expansion of the trade mark right. This not to say that dilution should been condoned; only that trade mark law was not the way to do it. In such a counter-history world, what would anti-dilution have looked like? This Kat can imagine three possibilities.

First, anti-dilution laws at the national level as part of national trade mark laws may have continued. For instance, there was already such legislation in place in the US. While having the right to so sue in Wyoming or pre-oil boom North Dakota to enjoin infringing activity in those states might not be commercially attractive for a prospective plaintiff, filing suit in New York, California or Texas would be a different story.

Secondly, provided that the infringing party is a competitor and one could point to deleterious market effect, a claim of unfair competition might have been possible. In a similar vein, anti-dilution legislation could have been part of national unfair trade practice law.

Plasticity comes more easily
to some of us than others ...

Thirdly, the prohibition against bad faith could have been applied to acts of dilution. The advantages of a claim of bad faith in comparison with unfair competition are that it is not limited to competitors and it is a flexible remedy, very much tied to the facts before it. For Kat readers who might argue that this judicial plasticity is too great price to pay, keep in mind that bad faith is already a part of trade mark practice, especially in connection with prosecution. As well, in this Kat's humble opinion, the test for likelihood of dilution under US law fares no better from the vantage of consistency or ease of application.

A full counter-history to the enactment of anti-dilution legislation could no doubt raise additional causes of action, other infringements of trade mark, at the national level. But counter-history as an act of imagination also means resigning oneself to the present. Anti-dilution as part of trade mark law is here to stay as part of the trademark laws—or is it?