Industrial property right over well-known trademark is established on the basis of widely use without any registration procedures. Thus, the acts which are deemed as act of infringement of trademark right in general would be also regarded as infringe well-known trademark rights.
Where a well-known trademark is allegedly being infringed, the owners must submit the evidence to prove their ownership as well as to prove that their trademarks satisfy the conditions for being considered as well-known.
Act of infringement stipulated in Article 129 of IP Law regarding to well- known trademark reads as follows:
“1. The following acts, if performed without the permission of mark owners, shall be deemed to be infringements of the right to a mark:
(d) Using signs identical with, or similar to, well known marks, or signs in the form of translations or transcriptions of well known marks for any goods or services, including those not identical with, dissimilar or unrelated to goods or services on the lists of those bearing well known marks, if such use is likely to cause confusion as to the origin of the goods or services or misleading impressions as to the relationship between users of such signs and well known mark owners.”
According to the above-mention paragraph, using a sign may cause act of infringement if
- A sign is identical with or similar to well known mark or in the form of translations or transcriptions of well-known marks and
- Such use is liable to create confusion of goods or services or misleading impressions as to the relationship between users of such sign and well-known trademark owners.
In order to determine whether a suspected sign is an infringing element of a well-known mark, it is required to compare such sign to the mark. The comparison between goods or services is not much important because the scope of protection of well-known trademark is not limited to identical or similar goods/services but extended to dissimilar one.
An infringing element can only be confirmed if the following two conditions are fully met:
- The suspected sign is identical or confusingly similar to the trademark
Where a sign is regarded as identical to a protected mark if it has the same composition and method of presentation (including the colors); a sign is regarded as confusingly similar to a protected mark if it has several features identical or similar to those of the protected mark to such an extent that it is not easy to distinguish between them in terms of composition, the way of pronunciation, the way of phonetic transcription of signs, letters, meaning, the method of presentation and colors, thereby causing confusion to consumers in selecting goods or services bearing the mark;
- Goods or services bearing the suspected sign that is identical or similar in substance to, have a relationship in terms of functions and utility with, and have the same distribution channel with, the protected goods or services or goods or services are not identical, similar or related to the goods or services bearing the well-known mark but are capable of misleading customers as to the origin of services or goods or create wrong impressions about the relationship between the producer or trader of such goods or services and the owner of the well-known mark.
The protection from infringement for well-known trademark is similar to those for ordinary trademark. That means it protect consumer from confusion. Moreover, well-known trademark right is extended to protect fairness trade environment. The acts other than that cause confusion also constitute infringement if it misinform about the source of goods or services or associate the well-known trademark owner and others who in fact have no relationship.
This article seems compatible with the requirements set forth by Article 6bis of Paris Convention and Article 16(2), (3) of Trips Agreement.
However, this article does not cover the dilution cases in which the consumers do not be confused about the source of goods or services or be misled about the relationship between suspected trademark owners and well-known trademark holders but the uniqueness of well-known trademark is weaken because while a consumer may not believe that Kodak bicycles are made by the same company that produces Kodak camera equipment, but the use of the Kodak trademark arguably decreases the ability of the Kodak mark to create a connection between it and the camera company for the consuming public.