International framework of well-known trademarks protection

1.1.              Paris Convention

The need to protect well-known trademarks was discussed internationally by  the  member  states  of  the  Paris  Convention in  the  1920’s,  whereby the provision of Article 6bis was first incorporated in the  Hague  text  of  the  Paris Convention   in   1925. Thus, the term “well-known trademark” in the Paris Convention has been interpreted as including famous trademarks as well. The heart of the protection for well-known trademarks if found in Article 6bis of the Paris Convention.

The provision of Article 6bis reads as follows: “ARTICLE 6bis (Protection of well-known trademarks)

(1)   The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to  cancel the registration, and to prohibit the use of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits  of  this  Convention and  used  for  identical  or  similar  goods.  These provisions shall also apply when the essential part of the mark constitutes a reproduction of  any such  well-known mark  or  an  imitation liable  to  create confusion therewith.

(2)    A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3)    No  time  limit  shall  be  fixed  for  requesting  the  cancellation  or  the prohibition of the use of marks registered or used in bad faith.”

The main content of Article 6bis of the Paris Convention is summarized as follows:

(i)      There is no requirement for registration with respect to well-known trademarks in the country where protection is sought under Article 6bis;

(ii)      In order to be protected as well-known under Article 6bis, a trademark must be recognized as well-known in that particular country;

(iii)     Any trademark identical or similar to a well-known mark and liable to cause confusion in that it constitutes a reproduction, imitation or a translation shall  be  refused,  have  its  registration  cancelled,  or  shall  have  use  by unauthorized third parties prohibited (hereinafter referred to as a third party’s mark);

(iv)     The ambit of well-known trademark protection is limited to preventing from the use or registration of a third party’s trademark for similar or identical goods, in other words, the scope of goods which a trademark is to be used must be identical or similar to that of a well-known trademark.

(v)      Article 6bis does not cover trademark use for services;

(vi)         Article 6bis also applies to similar marks that derive their essential parts from a well-known trademark or are “an imitation liable to create confusion”. (vii)   Interested  parties  have  at  least  five  years  from  the  third  party’s registration date to request cancellation. In the case that such trademark has been registered in bad faith, no statute of limitations is fixed; a request for invalidation trial can be accepted at any time.

It has been emphasized that Article 6bis provides a limited scope of protection  for  well-known trademarks,  yet  this  still  remains  insufficient for meeting current needs regarding the protection of well-known trademarks from confusion, free-rides and dilution, the insufficient issues may be mentioned as: trademark use or registration for services is not covered in this article, limitation of Well-known trademark protection is within similar or identical goods and the convention does not  specify how the mark came to be well known in  that country.

However, the Paris Convention is positioned much like a constitution within intellectual property legislation and insufficiencies in Article 6bis have now been supplemented with Article 16(2) and (3) of the TRIPS Agreement as well as the Joint Recommendation concerning Protection of Well-known Marks as prepared by WIPO and adopted by the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property Organization  (WIPO)  at     the     Thirty-Fourth  Series  of  Meetings  of  the Assemblies of the member states of WIPO, September 20 to 29, 1999.

1.2.              TRIPs Agreement

The Agreement on Trade-Related Aspects of Intellectual Property rights of 15 April 1994 (TRIPs Agreement) provides additional legal standards for recognition and protection of well-known trademarks. As is shown by its name, the TRIPs Agreement was born based on an awareness of occurrence of various serious  problems  involving  trade  and  commerce,  such  as  problems  with counterfeit goods, due to a lack of harmony and shortcomings in system for protection of Intellectual Property rights implemented in numerous countries. In order to make enhanced protection of well-known marks on an international level, the TRIPs Agreement in Article 16(2) and (3) broadens the scope of Article 6bis of the Paris Convention as follows:

“Article 16 (Rights Conferred)

(2)  Article  6bis  of  the  Paris  Convention (1967)  shall  apply,  mutatis mutandis, to services. In determining whether a trademark is well- known, account shall be taken of the knowledge of the trademark in the relevant sector of the public, including knowledge in that Member obtained as a result of the promotion of the trademark.

(3)  Article  6bis  of  the  Paris  Convention (1967)  shall  apply,  mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

This provision, Article 16, is characterized by its supplementary role to

Article 6bis of the Paris Convention in three ways:

(i)        Extending  the  scope  of  well-known  trademark  protection  to services while Article 6bis explicitly only covers goods;

(ii)    Making more flexible in determining a well-known trademark, or, in  other  words,  taking  knowledge  of  a  trademark  in  relevant sectors of the public into consideration so that the criteria for determination of well-known trademarks can more closely correspond to actual market conditions and be reflected in a viable environment.

(iii)    Expanding the scope of protection in which article 6bis of the Paris Convention  is  applied,  even  in  cases  of  dissimilar  goods  or services, provided that use of that mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the well-known mark and the interests of the owner of the well-known mark are likely to be damaged by such use. In other words, this provision is applied to the cases when the use of an identical or similar trademark causes the risk of confusion even in respect of dissimilar goods or services as well as impairs the goodwill and reputation established by the owner of well-known   trademark   resulting   from   use   by   third   party (including, for example, so-call free rides or dilution).

It should be noted that since Article 2 of the TRIPS Agreement requires respective provisions of the Paris Convention be automatically applied to WTO member countries as well, broad national protection can be expected in WTO member countries (a substantial number of countries are member to both the Paris Convention and WTO) in respect to Article 16(2) and (3) of the TRIPS Agreement.

Article 16(3) of the Trips Agreement makes a legal basis available for the protection of well-known trademarks on non-competing goods or services provided that the trademark concerned has been registered. This also has its limitation because of fact that it requires registration of a well-known trademark while the protection of a well-known trademark against unauthorized use on non- competing goods or services may be required without the presence of registration. It establishes where to seek evidence of such status but still leaves the question open as which sector of the public is relevant, how specific the relevant sector should be, to what factors are to be considered in the determination of when a mark qualifies as well known.12

1.3.   WIPO Joint  Recommendations concerning provisions on Protection of Well-known Marks

A great number of countries had no provisions concerning the protection of well-known trademarks in domestic law at the time the establishment of the TRIPS   Agreement   was   discussed   internationally,   but,   after   the   TRIPS Agreement went into effect, all member countries of WTO as well as the Paris Convention had an obligation to protect all well-known and famous trademark sufficiently.

Under these circumstances, WIPO prepared the above mentioned Joint Recommendation concerning provisions on the protection of well-known marks. It was adopted at the joint assemblies of the Paris Convention Union and WTO, and became effective for countries member to not only the Paris Convention but also the WTO Treaty.

The Joint Recommendations provides guideline for determination of whether a mark is a well-known mark in a member state, of factors which shall not be required in determining, of which a mark shall be deemed to be in conflict with a well-known mark.

The Joint Recommendations makes all the criteria optional, so it adds little predictability for future well known trademark cases. It does, however, provide a ready reference for countries that have not yet clearly their law related with well known trademark protection.

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