상표희석법(Trademark Dilution Revision Act of 2006)

반희석(Anti-Dilution)법이 제정되었다. 이름은 상표희석법(Trademark Dilution Revision Act)인데, 내용은 반희석(Anti-Dilution)에 대한 것이다. 읽어볼 필요가 있을 듯.

내용을 읽어보면 이걸로 Dilution을 법적으로 금지하겠다는 내용은 아니다. 논리적으로 생각해 보아도, 법적으로 Dilution은 안 된다라고 못 박아도 현실적으로 Dilution이 발생하면 그걸 법으로 되돌려놓을 수는 없지 않을까?

예를 들어, 콘돔을 살펴보자. 콘돔은 원래는 상표였는데, 이게 고추에 끼는 고무장갑을 지칭하는 일반적인 명사가 되면서 상표의 지위를 잃어버렸다. 이게 Dilution이다. 이런 일이 발생한 이유는 고추에 끼는 고무장갑을 생산하는 업체들이 콘돔을 보통명사처럼 널리 사용하면서 그 단어가 보통명사가 되어버린 것이다.

아래의 상표희석법은 상표권자가 Dilution by blurring이나 dilution by tarnishment를 하는 침해자에게 가처분(injunction)을 할 수 있는 권리를 폭넓게 부여하는 내용이다. 그러니까 injunction 권리를 부여하는 것이지 본질적으로 dilution을 법적으로 금지하는 것은 아니다. Dilution을 법적으로 금지한다는 개념 자체가 성립이 안 될 것 같다.

Trademark Dilution Revision Act of 2006 (Enrolled as Agreed to or Passed by Both House and Senate)

–H.R.683–

H.R.683

One Hundred Ninth Congress of the United States of America

AT THE SECOND SESSION

Begun and held at the City of Washington on Tuesday, the third day of January, two thousand and six

An Act

To amend the Trademark Act of 1946 with respect to dilution by blurring or tarnishment.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.

(a) Short Title- This Act may be cited as the `Trademark Dilution Revision Act of 2006‘.

(b) References- Any reference in this Act to the Trademark Act of 1946 shall be a reference to the Act entitled `An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes’, approved July 5, 1946 (15 U.S.C. 1051 et seq.).

SEC. 2. DILUTION BY BLURRING; DILUTION BY TARNISHMENT.

Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended–

(1) by striking subsection (c) and inserting the following:

`(c) Dilution by Blurring; Dilution by Tarnishment-

`(1) INJUNCTIVE RELIEF- Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.

`(2) DEFINITIONS- (A) For purposes of paragraph (1), a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following:

`(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties.
`(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
`(iii) The extent of actual recognition of the mark.
`(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.

`(B) For purposes of paragraph (1), `dilution by blurring’ is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. In determining whether a mark or trade name is likely to cause dilution by blurring, the court may consider all relevant factors, including the following:
`(i) The degree of similarity between the mark or trade name and the famous mark.
`(ii) The degree of inherent or acquired distinctiveness of the famous mark.
`(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
`(iv) The degree of recognition of the famous mark.
`(v) Whether the user of the mark or trade name intended to create an association with the famous mark.
`(vi) Any actual association between the mark or trade name and the famous mark.

`(C) For purposes of paragraph (1), `dilution by tarnishment’ is association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.

`(3) EXCLUSIONS– The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

`(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with–
`(i) advertising or promotion that permits consumers to compare goods or services; or
`(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

`(B) All forms of news reporting and news commentary.

`(C) Any noncommercial use of a mark.

`(4) BURDEN OF PROOF– In a civil action for trade dress dilution under this Act for trade dress not registered on the principal register, the person who asserts trade dress protection has the burden of proving that–

`(A) the claimed trade dress, taken as a whole, is not functional and is famous; and

`(B) if the claimed trade dress includes any mark or marks registered on the principal register, the unregistered matter, taken as a whole, is famous separate and apart from any fame of such registered marks.

`(5) ADDITIONAL REMEDIES- In an action brought under this subsection, the owner of the famous mark shall be entitled to injunctive relief as set forth in section 34. The owner of the famous mark shall also be entitled to the remedies set forth in sections 35(a) and 36, subject to the discretion of the court and the principles of equity if–

`(A) the mark or trade name that is likely to cause dilution by blurring or dilution by tarnishment was first used in commerce by the person against whom the injunction is sought after the date of enactment of the Trademark Dilution Revision Act of 2006; and

`(B) in a claim arising under this subsection–
`(i) by reason of dilution by blurring, the person against whom the injunction is sought willfully intended to trade on the recognition of the famous mark; or
`(ii) by reason of dilution by tarnishment, the person against whom the injunction is sought willfully intended to harm the reputation of the famous mark.

`(6) OWNERSHIP OF VALID REGISTRATION A COMPLETE BAR TO ACTION- The ownership by a person of a valid registration under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register under this Act shall be a complete bar to an action against that person, with respect to that mark, that–

`(A)(i) is brought by another person under the common law or a statute of a State; and
`(ii) seeks to prevent dilution by blurring or dilution by tarnishment; or

`(B) asserts any claim of actual or likely damage or harm to the distinctiveness or reputation of a mark, label, or form of advertisement.

`(7) SAVINGS CLAUSE- Nothing in this subsection shall be construed to impair, modify, or supersede the applicability of the patent laws of the United States.’; and

(2) in subsection (d)(1)(B)(i)(IX), by striking `(c)(1) of section 43′ and inserting `(c)’.

SEC. 3. CONFORMING AMENDMENTS.

(a) Marks Registrable on the Principal Register- Section 2(f) of the Trademark Act of 1946 (15 U.S.C. 1052(f)) is amended–

(1) by striking the last two sentences; and
(2) by adding at the end the following: `A mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be refused registration only pursuant to a proceeding brought under section 13. A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c), may be canceled pursuant to a proceeding brought under either section 14 or section 24.’.

(b) Opposition- Section 13(a) of the Trademark Act of 1946 (15 U.S.C. 1063(a)) is amended in the first sentence by striking `as a result of dilution’ and inserting `the registration of any mark which would be likely to cause dilution by blurring or dilution by tarnishment’.

(c) Cancellation- Section 14 of the Trademark Act of 1946 (15 U.S.C. 1064) is amended, in the matter preceding paragraph (1) by striking `, including as a result of dilution under section 43(c),’ and inserting `, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 43(c),’.

(d) Marks for the Supplemental Register- The second sentence of section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) is amended to read as follows:
`Whenever any person believes that such person is or will be damaged by the registration of a mark on the supplemental register–
`(1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 43(c); or
`(2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.’.

(e) Definitions- Section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) is amended by striking the definition relating to the term `dilution’.

Speaker of the House of Representatives.

Vice President of the United States and

President of the Senate.

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One thought on “상표희석법(Trademark Dilution Revision Act of 2006)

  1. […] Trademark Dilution in Korea Posted on March 25, 2008 by iplawyer Dilution in the U.S. is regulated by the Trademark Act (as revised by the Trademark Dilution Revision Act of 2006). […]

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