Using a “famous” mark by a third party causes the dilution of the “distinctive quality” of the mark. Apart from trademark infringement, there is no need to prove a likelihood of confusion to protect a mark in case of dilution.

Determining what constitutes a famous mark will involve a great deal of litigation courts may look at the following factors in determining whether an effect is well-known.

The duration and advertisement for the trademark

The time and extent of use

The geographic area of the usage of the mark

The degree of distinctiveness

Recognition of the mark

Dilution causes of action when the defendant’s use of the mark causes either

Blurring:- this is the connection in consumers’ minds between the plaintiff’s mark and the goods or services is weakened; or

Tarnishment:-  the defendant’s use is unsavoury or unwholesome, or the effect is used in connection with inferior products.

Remedies

An injunction against further dilution is usually the only remedy available. However, if the plaintiff can show that the defendant wilfully sought to trade on the owner’s reputation or to cause dilution of the mark, attorneys fees, monetary damages, and even treble damages would be available.