Tobacco, Sex, and Herbicides: Revisiting Anti-Tarnishment Protection for Trademarks in the Age of Sustainability

Abstract This article deals with the issue of tarnishment under anti-dilution protection for reputed trademarks in European Union (EU) law. While tarnishment may be interpreted broadly, many administrative and court cases focus on the abstract nature of the goods and services for which later parties file their trademark applications or use their signs, and which earlier right holders consider detrimental to their reputed brands (product-based tarnishment). This occurs with such products as cigarettes, sex toys, and agrochemicals. To understand what justifies the claim that the abstract nature of certain products may degrade the image of reputed marks like L’Oréal, Puma, and Sky, I undertook an empirical study of tarnishment-related cases at the European Union Intellectual Property Office (EUIPO). The aim was to identify patterns in selected registration and cancellation cases, analyze them, and develop ideas on how the frequently criticized notion of tarnishment – and EU trademark law more broadly – can be improved. In short, product-based tarnishment and the EUIPO's reasoning when establishing it do not merit strong support. In conducting the study, I could not avoid addressing the well-being of smaller actors in this context, including their entrepreneurial autonomy. Indeed, small and medium-sized enterprises often become the later users facing tarnishment-based oppositions or cancellations by reputed brand owners. However, these entities and individuals are widely recognized as key drivers behind economic growth and sustainability. A discussion of tarnishment and other trademark issues must take these considerations into account to promote more responsible judgments and legislation.