There are two types of dilution codified in American law: blurring of distinctiveness and tarnishment. In this post I will deal only with the former. This type of dilution occurs when there is “a blurring of the mental associations evoked by the mark, such that the ability of the mark to uniquely evoke the cognitive network originally associated with that mark has been whittled away or diluted”.[FN2] To illustrate, a mark such as COCA-COLA is indicative to consumers of a single producer of a certain product. In contrast, DIJON is not. DIJON is indicative to consumers of a type of mustard generally. In fact, DIJON might bring to mind other famous brand names associated with mustard, such as French’s. Thus, while the mark COCA-COLA is quite distinctive, the distinctiveness of DIJON has been blurred by the use of this mark by those other than the authentic producers of this specific mustard in Dijon, France.

Blurring can occur even when the second user of the mark is engaged in a completely different business than the original trade-mark owner. The reasoning for this type of protection is that even though a consumer may be unlikely to be confused by the use of DIJON for mustard and the concurrent use of DIJON for lampshades, there is a “weakening of associations, whittling away or lessening of the capacity of the famous mark to identify goods and services”.[FN3]

Where there is competition between the original trade-mark owner and the second party, however, blurring becomes “a step along the path to mere descriptiveness and possibly genericism”.[FN4] GIs have arguably succumbed to genericism in many countries due to dilution through use of the mark by both authentic producers and competitors.

Dilution is not simply an added trade-mark right, it is a concept that enables owners of famous marks to protect the distinctiveness of their trade-marks. Trade-mark law is premised on the notion of distinctiveness. Inherent or acquired distinctiveness is an essential requirement for registration under the Trade-marks Act.[FN5] If trade-mark owners, however, are unable to protect the distinctiveness of their mark against dilution, it seems paradoxical to protect only distinctive marks, since, once registered, distinctiveness can subsequently be lost along with statutory trade-mark protection.

The tale of GIs is illustrative of the need for statutory safeguards against trade-mark dilution by demonstrating the susceptibility of strong marks to competing use ultimately resulting in genericism. Once distinctive of high-quality products emanating from certain regions that resulted (in a number of cases) in the unique characteristics of the final product, GIs now merely serve to identify a broad class of products of varying quality, made by dozens of different producers. Thus, many GIs have been diluted to the point of genericism.

If legislatures are serious about protecting trade-marks then there is arguably the need for some sort of protection against dilution, as dilution wears away at the essential qualification for trade-mark registration. While it is likely too late to save “generic” marks, statutory protection against dilution would enable existing trade-mark owners to protect the distinctiveness of their marks on a going-forward basis. As trade-mark and brand equity continue to increase, so do the financial and business reasons for protecting the distinctiveness, and thus the trade-mark rights, of famous marks. Something akin to the prohibition against blurring found in American legislation might be a useful place to start.[FN6]

[FN1] Lanham Act, 15 U.S.C. § 1127 (1946).
[FN2] Jacob Jacoby, "The Psychological Foundations of Trademark Law: Secondary Meaning, Genericism Fame, Confusion and Dilution" (2001) 91 Trademark Rep. 1013.
[FN3] Ibid.
[FN4] Ibid.
[FN5] Trade-marks Act, R.S.C. 1985, c. T-13 s. 12.
[FN6] The Federal Trademark Dilution Act, 15 U.S.C.S. § 1125 (2002).

The post Protecting Trade-mark Distinctiveness: The Risk of Dilution as Illustrated by the Genericism of Geographical Indicators appeared first on IPOsgoode.

In the past, this type of advertising has targeting consumers by adjusting the timing, style and venue of advertisements to reflect trends in consumer demographics. For example, advertisements aired on television during children’s programming are by and large advertising goods and services used by children, such as toys, games and theme parks to name a few. During live coverage of a sporting event such as NHL hockey (which may air at a later time, but on the same channel as children’s programming), different television advertisements are aired, promoting beer, credit cards and new cars, which reflect the perceived interests of this viewer demographic.

The internet and related innovations in online social networking have expanded the different venues available to advertisers in recent years, while also providing marketers with a means of targeting advertisements to specific individuals. Instead of targeting an overarching demographic, such as males aged 20-29, marketers can now use these new technologies to target,

Joe Consumer
Age: 26
Hobbies/Interest: Hockey, Traveling and Rap Music
Student at Osgoode Hall Law School, Class of 2009
…

Using information that Joe voluntarily posts on his Facebook profile for instance, marketers (who pay Facebook to have access to Joe’s information), can target advertisements to Joe with unprecedented specificity. The moment Joe updates his profile to reflect his new found interest in rock climbing, advertisers of rock climbing equipment are able to display their advertisements in the side panel of Joe’s computer screen.

While many, if not most, consumers do not object from a privacy standpoint to having advertising targeted at them as a member of a larger demographic group, advertising targeted at specific individuals may be a cause for alarm. The fact that advertisers have acquired a profile of information on individual consumers, ranging from information on age and sex, to favourite televisions shows, movies and music artists, can be frightening. More frightening still is that most users of social networking sites appear unaware that the information they post on their profile page is being used by advertisers for this purpose. Lengthy, complex and often confusing privacy policies and terms and conditions documents (which users are required to agree to before opening a account on a social networking website) may be one reason for apparent consumer unawareness. The fact that the facilitating technologies of individually targeted advertising are relatively new is yet another.

From a pragmatic standpoint, one could argue that anything posted on a website is technically out of the control of the person posting it once it has been made available to the public. Thus, one should not consider anything posted on a webpage as “private”. While this may be practically true, there still remains the possibility that laws may be drafted which set out guidelines and limit the use of what is considered “private” information posted by users on social networking websites.

A lack of public awareness on this issue arguably should not be taken as implied consent by members of social networking sites to have their personal information used by advertisers. From a public policy perspective, users of social networking sites should not only be made aware of how their information is used, they should have a voice in any subsequent legal debates respecting privacy legislation in this area.

As a member of an online social networking website, one might begin to foray into the potential privacy issues posed by individually targeted advertising by reviewing the information posted on one’s personal profile page. That information is a part of what comprises one’s individual consumer profile in the databases of an unknown number of advertising and marketing firms. Do you feel like your personal privacy has been compromised?

The post Targeting Individuals: Targeted Advertising on Online Social Networks appeared first on IPOsgoode.