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Dilution of Trademarks in Jordan – An Eighth Legal Wonder!

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Abstract

To agree or disagree with the doctrine of dilution is one thing, but admitting the straightforwardness of this doctrine is another. Dilution was integrated within the Jordanian Trademarks Law in the late 1990s, yet in a version that bears no significance to the foundations of dilution as articulated by the American scholar Frank Schechter, nor to other comparative systems such as the Lanham Act, the EU Directive and the UK Trade Marks Act. This article argues that dilution in Jordan is a rather awkward notion which lacks proper justification and could be described as a legal wonder.

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Notes

  1. See, for example, Naser (2010a), pp. 332–334. See also Naser (2009a), pp. 369–370. See also Naser (2009b), pp. 196–197.

  2. Cass and Hylton (2013), p. 141.

  3. Banerjee (2012), p. 561, considering that “[t]he concept of dilution was first proposed by the American scholar Frank Schechter, notably in an article for the Harvard Law Review”. See also Wadlow (2011), p. 148, stating that “the doctrine of trade mark dilution … was first advanced by Frank Schechter in an article of 1927”.

  4. Schechter (1926–1927), p. 832. See also Garde (2003), p. 616, stating that “Schechter borrowed the term from the German courts”.

  5. Schechter, supra note 4, at p. 831. It should be noted that the Odol case is not reported.

  6. Fhima (2012), pp. 28–29.

  7. Schechter, supra note 4, at p. 831.

  8. Ibid., at pp. 831–832 (citing Landgericht Elberfeld, Juristische Wochenschrift 25 (1924), p. 502).

  9. In this context, McCarthy considers that “the concept of dilution as a separate basis for the protection of trademarks originated in the German courts”. See McCarthy (1996), § 24:67.

  10. Welkowitz (2002), pp. 6–7, arguing that “[c]ases employing the language of dilution can be found as far back as the beginning of the twentieth century, and even earlier in Great Britain”. However, credit for bringing trademark dilution into the consciousness of courts and legislators usually is given to Frank I. Schechter and his 1927 article, “The Rational Basis of Trademark Protection”.

  11. Shaeffer (2010), p. 817.

  12. Schechter, supra note 4, at p. 825.

  13. Bently and Sherman (2009), p. 714 (emphasis added).

  14. “[T]he consumer now projects his shopping far from home and comes to rely more and more upon trademarks and trade names as symbols of quality and guaranties of satisfaction”. See Schechter, supra note 4, p. 824. Against the quality function of trademarks, see Naser (2008), pp. 107–108.

  15. “Four hundred years ago a trademark indicated either the origin or ownership of the goods to which it was affixed. To what extent does the trademark of today really function as either? Actually, not in the least!” See Schechter, supra note 4, at p. 814.

  16. Shaeffer, supra note 11, at p. 836, arguing that: “If you accept that dilution is predicated on consumers knowing that the junior user’s product or service emanates from a source different from that of the famous mark, then no dilution occurs with respect to any consumer who wrongly believes that the products or services emanate from the same source”.

  17. “McCarthy on Trademarks and Unfair Competition”, supra note 9, at § 24:72.

  18. See, for example, Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks, OJ L 299 (8 November 2008), recital 11, hereinafter referred to as: “Directive 2008/95/EC”.

  19. Naser (2010b), pp. 85–86.

  20. Younes (2012), p. 848.

  21. Directive 2008/95/EC, which will be repealed with effect from 15 January 2019, and replaced by Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, OJ L 336 (2015), hereinafter: “Directive (EU) 2015/2436”.

  22. Adams (2002), pp. 158–159, stating that “[i]n 1947, however, just one year after the federal legislature’s choice to expand the consumer confusion test, Massachusetts adopted the first antidilution statute. In its original form, the Massachusetts’ proposal followed Schechter’s idea of extending dilution protection to only the most arbitrary or fanciful of marks. Soon thereafter, other state legislatures followed the lead of Massachusetts. In 1953, Illinois enacted an antidilution statute and in 1955 New York and Georgia both enacted their own antidilution statutes. In 1963, following a delay of eight years, Connecticut was the next state to enact its antidilution statute”.

  23. Boned (2007–2008), p. 474.

  24. David S. Welkowitz, “Trademark Dilution Federal, State, and International Law”, supra note 10, pp. 153–155.

  25. Derenberg (1956), p. 449 (citing “Hearings Before the House Committee on Patents”, 72d Cong., 1st Sess. § 15 (1932)).

  26. Garcia (1995), p. 491.

  27. Trademarks Act 1946 – Lanham Act (US) 15 U.S.C., hereinafter: “Lanham Act”.

  28. Federal Trademark Dilution Act 1995 (USA).

  29. Trademark Dilution Revision Act 2005 (USA).

  30. Lanham Act, Sec. 43(c)(2/a). See also Naser and Hammouri (2014), pp. 314–317. See also Senftleben (2009), pp. 50–54.

  31. Lanham Act, Sec. 43(c)(1).

  32. Ibid., Sec. 43(c)(2/b).

  33. Ibid., Sec. 43(c)(2/c).

  34. Senftleben, supra note 30, at p. 55.

  35. Trade Marks Act 1994 (UK), Ch. 26.

  36. First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trademarks, OJ L 40/1 (1989), Corrigendum OJ L 159/60 (1989), hereinafter: “Council Directive 89/104/EEC”.

  37. Directive 2008/95/EC.

  38. Directive (EU) 2015/2436.

  39. Council Directive 89/104/EEC, Art. 5(2); Directive 2008/95/EC, Art. 5(2), emphasis added.

  40. Directive (EU) 2015/2436, Art. 10(2)(c).

  41. Maniatis (2001), p. 41-6.

  42. Trade Marks Act (UK), Ch. 26, hereinafter: “UK TMA”.

  43. Simon (2006), p. 411, arguing that “Member States had the option of not adopting anti-dilution protection when implementing the Directive, but all chose to do so”.

  44. UK TMA, Sec. 5(3).

  45. Repealed by United Kingdom Statutory Instrument 2004/946, Reg. 7.

  46. Cornish and Llewelyn (2007), p. 722.

  47. Naser, “Revisiting the Philosophical Foundations of Trademarks in the US and UK”, supra note 19, at p. 174.

  48. William Cornish and David Llewelyn, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights” supra note 46, at p. 754, stating that “[i]n the United Kingdom, … the detriment required by … section [10(3)] can occur through either ‘blurring’ or ‘tarnishment”.

  49. See supra note 1. It is noteworthy that some scholars do not entirely agree with this approach, for instance Maniatis argues that “the modern concept of dilution, adopted on the basis of Schechter’s rationale for protection, does not follow [his] definition of dilution”. See Maniatis, supra note 41, at 43-2.

  50. Naser (2016).

  51. Trademarks Law (Jordan) No. 33 of 1952, published at p. 243 of the Official Gazette, ed. 1110 (1 June 1952) and amendments.

  52. Ratification of the Hashemite Kingdom of Jordan’s accession to the World Trade Organization Law (Jordan) No. 4 of 2000, published at p. 710 of the Official Gazette, ed. 4415 (24 February 2000). See also Malkawi (2007), p. 119.

  53. See Trademarks Law (Jordan) No. 34 of 1999, published at p. 4299 of the Official Gazette, ed. 4389 (1 November 1999).

  54. For more on the notion of well-known trademarks in Jordan, see Naser and Hammouri, supra note 30, at pp. 318–320.

  55. Trademarks Law (Jordan), Art. 8/12.

  56. Ibid.

  57. Naser (2007), pp. 1–49. See also Wilf (1999), pp. 1–46.

  58. Pattishall (1951–1952), p. 978.

  59. Naser, “Revisiting the Philosophical Foundations of Trademarks in the US and UK, supra note 19, at p. 58, considering that “the public shall enjoy the right of having their state of mind (confusion) as the sole test for trademark infringement”.

  60. Trademarks Law (Jordan), Art. 25/1/b, authors’ translation of this Article since no official translation is available.

  61. Ibid., Art. 25/1/b (emphasis added).

  62. See supra, at 3.1.

  63. The FTA was signed on 24 October 2000 and was ratified in 2001. See Ratification of the Agreement between Jordan and the United States of America on the Establishment of a Free Trade Area Law (Jordan) No. 24 of 2001, published at p. 2704 of the Official Gazette, ed. 4496 (16 July 2001).

  64. Paris Convention for the Protection of Industrial Property (adopted 20 March 1883).

  65. FTA, Art. 4/8.

  66. Paris Convention, Art. 6bis(1) (emphasis added).

  67. See supra, at 2.2.

  68. Trademarks Law (Jordan), Art. 25/1/b.

  69. The case of Art. 25 of the Jordanian Trademarks Law in this respect is indeed peculiar; the said Article specifies that the goods or services should be identical or non-identical; whether similar goods or services are included in the text is therefore a sound concern. This reminds one of other comparative texts, such as in Council Directive 89/104/EEC, for instance, which in Art. 5(2) mentions “goods or services which are not similar”. Council Regulation (EC) No. 207/2009 in Art. 9 likewise refers to “goods or services which are not similar”. Nevertheless, the European Court of Justice considered that “Art. 5(2) of the Directive must not be interpreted solely on the basis of its wording, but also in the light of the overall scheme and objectives of the system of which it is a part”. Thus, the Court concluded that: “Having regard to the latter aspects, that article cannot be given an interpretation which would lead to well-known marks having less protection where a sign is used for identical or similar goods or services than where a sign is used for non-similar goods or services.” See Case C-292/00, Davidoff & Cie SA and Zino Davidoff SA v. Gofkid Ltd [2003] E.T.M.R. 42, paras. 24, 25. However, it will be shown that the overall scheme and objectives of the Jordanian Trademarks Law are not clear and rather awkward. See infra note 73 and the accompanying text.

  70. Manzur (1994), p. 611.

  71. Trademarks Law (Jordan), Art. 25/1/b.

  72. For example, UK TMA, Sec. 10(1), providing that: “A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered”. See also William Cornish and David Llewelyn, “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights”, supra note 46, at p. 740, stating that “[b]ecause Type 1 [where the marks and the goods or services are identical] exempts a claimant from the need to prove likelihood of confusion, there is good reason to require that the twin identities are strictly proved: thus words ought to be the same both in spelling and sound”.

  73. See, for example, Trademarks Law (Jordan), Arts. 8/12 and 25/1/a.

  74. Ibid., Art. 25/1/b.

  75. FTA, Art. 4/8.

  76. See supra, at 3.1.

  77. Trademarks Law (Jordan), Art. 25/1/b.

  78. It is noteworthy that the UK TMA, for instance in its Sec. 10(3), dealing with anti-dilution measures, does not require confusion. Cornish and Llewelyn consider that “it is now clear that there is no need to show confusion under s. 10(3)”. See “Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights”, supra note 46, at p. 754.

  79. Incorporating the confusion test within the dilution action has been contested by scholars, see, for example, Davison and Di Giantomasso (2009), p. 447, arguing that “trade mark use could be part of the requirements of a dilution action without introducing a likelihood of confusion test”. See also Garde, supra note 4, at pp. 615–616, arguing that “[t]raditional dilution analysis typically focuses on two forms of dilution: tarnishment and blurring. Specifically, it is a type of trademark infringement in which the defendant’s use, while not causing a likelihood of confusion, tarnishes the image or blurs the distinctiveness of the plaintiff’s mark”. See also Baloch (2001), p. 431, considering that Schechter’s argument relates to “trade mark uses on non-competing goods [which] did not trigger confusion but nevertheless constituted a wrong against the trade mark owner”.

  80. On the consequences of such mirroring in general, see Lionel Bently and Brad Sherman, “Intellectual Property Law”, supra note 13, at p. 917.

  81. See supra, at 3.1.

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Authors and Affiliations

  1. Associate Professor of Commercial Law and Intellectual Property at the Faculty of Law, University of Jordan, Amman, Jordan

    Mohammad Amin Naser (PhD (Leicester, UK) & Qais Ali Mahafzah (PhD (Durham, UK)

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  1. Mohammad Amin Naser
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  2. Qais Ali Mahafzah
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Correspondence to Mohammad Amin Naser.

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Naser, M.A., Mahafzah, Q.A. Dilution of Trademarks in Jordan – An Eighth Legal Wonder!. IIC 48, 134–150 (2017). https://doi.org/10.1007/s40319-016-0547-9

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