Anti-Dilution: The Theory and the Reality of Extended Trademark Protection in the US and EU

Engelberg Center on Innovation Law and Policy

New York University Law School

December 8, 2006


In recent years, a major shift has occurred in the theory and practice of trademark law. The classical trademark right is concerned with the signaling dimension of trademarks. It encourages proprietors to create and maintain goodwill by protecting their marks from the likelihood of consumer confusion. In contrast, there is a newly emergent right that protects famous marks against dilution. This right recognizes other—more property-like—values in marks and gives their proprietors the right to prevent others from using these marks even in ways that do not create a possibility of confusion. Because the benchmark of confusion no longer determines the scope of this new right, its recognition has been controversial at both the national and international level.

This one-day, invitation-only workshop will explore the case for expanding trademark protection beyond its traditional realm, examine its implementation in practice, and consider countervailing considerations.

A conference is particularly timely in the United States because Congress has just revised the federal provision in response to the Supreme Court's decision in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418 (2003). In Europe, the theories underlying the relevant provisions were neither homogeneous nor fully developed at the time of harmonization. As a result, a number of critical and unclear issues have arisen, several resulting in decisions by the European Court of Justice. Given these developments at the national level, it is not surprising that the scope of the international obligation to protect famous marks is unsettled, and remains so despite Art. 16 TRIPS, see, e.g. WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted in September 1999 by the A ssemblies of the Member States of the World Intellectual Property Organization,

Debating the theoretical foundations as well as the practical implementation of extended trademark protection from a comparative perspective is a crucial step towards a better understanding of the law and the development of a wise and consistent global policy.

Attendance is open. Space is limited. If you are interested in attending, please contact Nicole Arzt,






8:30 Breakfast
9:00-10:45 Beyond confusion. The evolution and establishment of a recognised right to protection

Principal US speaker: Robert Bone, Boston University School of Law

Principal EU speaker: Alexander v. Mühlendahl, Vice-President (retired) of the Office for Harmonization in the Internal Market (OHIM); Bardehle, Pagenberg, Munich, Germany

Comment: Graeme Dinwoodie, Chicago-Kent School of Law

General Discussion

10:45-11:15 Coffee break
11:15-1:00 Protection in practice. Legal and evidentiary tools for defining the scope of dilution law

Principal US speaker: Clarisa Long, Columbia University School of Law

Principal EU speaker: Geoffrey Hobbs, QC, The Inner Temple, and Appointed Person, UK Patent Office (hearing appeals from the Registrar of Trade Marks)

Comment: Jacob Jacoby, NYU Stern Business School

General Discussion

1:00-2:30 Brown Bag Lunch
2:30-4:00 Countervailing considerations. Due cause, free speech and effective competition

Principal US speaker: Diane Zimmerman, NYU School of Law

Principal EU speaker: Annette Kur, Max Planck Institute, Germany

Comment: Rochelle Dreyfuss, NYU School of Law

General Discussion

4:00-5:00 Summation and Round Table Discussion
  James Whitman, Yale University: The comparativist's perspective