Criteria for recognition as well-known trademark
The Paris Convention has made a significant change in acknowledging the importance of extending protection to well known marks, but fails to provide any guidance on how to determine the well-knowness. Article 16(2) of the TRIPS Agreement merely states “WTO members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the member concerned which has been obtained as a result of the promotion of the trademark.” However, it is also not clear what is meant by “relevant public”. Therefore, different countries apply different and even conflicting criteria in determining what constitutes a well- known mark. For this reason, WIPO continued extremely useful efforts through its Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications and obtained an outline of provisions for protecting well-known trademarks, in which the criteria for determining a well-known trademark are included. This document was adopted officially at Joint Assembly held from September 20 to 29, 1999. Accordingly, the criteria stipulated in the joint recommendation can be recognized as a guideline for all member countries of the Paris Convention and WIPO as well as all member countries of WTO. However, this guideline is optional; each country based on its own situations is
free to stipulate the criteria in domestic law.