Recognition as well-known trademarks

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.

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