Protection of trademarks
Characteristics of the international regime for the protection of well known trademarks. Protection of trademarks under Paris Convention, TRIPS and WIPO joint recommendation. Comparative analysis of famous brands in Italy, Pakistan and Uzbekistan.
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Table of Contents
Chapter 1. International Regime for the Protection of well known Trademarks
1.1 Protection of well known trade marks under Paris Convention
1.2 Protection of well known trademarks under TRIPS
1.3 WIPO Joint Recommendation for well known trademarks
Chapter 2. Protection of well known trademarks in Italy
Chapter 3. Protection of well known trademarks in Pakistan
Chapter 4. Protection of well known trademarks in Uzbekistan
Chapter 5. A comparative analysis
protection trademark brand
Well-known international trademarks such as Coca-Cola, Microsoft, IBM and Google surpass the boundary of marks known only in single countries. It is now generally accepted that these well-known marks should be given protection against later registration by third parties -- although laws to offer this protection are still being developed. The definition and protection of well-known trademarks is still a grey area internationally. Despite general recognition that protection should be given to well-known marks, the national laws implementing the Paris Convention Art 6 Bis at present give variable protection depending upon jurisdiction.
Well-known trademarks have been a legal concept that requires interpretation by the authorities of the country in which protection is sought. Its protective scope depends on the authorities' objective of protection of well-known trademarks. Mass media, telecommunications, travels and advertising promotion make people become familiar with the trademarks in other countries. Especially the extensive, skillful and modern advertising promotion can bring the high reputation to the owners. The effects of well-known trademarks extend to unrelated field in comparison with the original goods or services the trademarks are used. However, the trademark piracy and unfair use affect the owner of well-known trademark to expand their business activities under those marks in other jurisdiction. For the sake of the protection of consumers' interests and trademark owner's reputation, the enhanced protection of well-known trademarks has become the international trend.
Some trade marks are so well known that their fame transcends the bounds of normal trademark law. A "strong" and famous brand may give unrelated firms incentives to choose a free riding strategy to exploit the full potential of the brand: a small producer of skis might, for example, be interested in using the FERRARI brand for the launch of a new product line. Free riding may, in turn, generate negative spillover effects that may derive from a free riding strategy on a famous trademark. In reality, the defense of the extended protection of "strong" trademarks may be to a great extent based on the likelihood that free riding practices dilute the promotional value of a trademark. The rationale behind the extension of protection to include principles of antidilution and prohibitions against free riding has been clear to both courts and commentators from the very beginning. When a trademark may be perceived as "strong" because it possesses a distinctive character or is "famous," then its value is endangered by unauthorized uses by a non-related third party; this is true even though consumers may not be misled. Rather than aim merely to protect against confusion as to the origin of goods, these extended protections are intended to avoid dilution of the promotional value of trademarks and the misappropriation of the capital of publicity invested in trademarks. As a result, protections are now afforded to trademarks where they formerly might not have been. The trademark ROLLS-ROYCE can now be protected, for example, in most jurisdictions against its use as sign for a pub even if no consumer would be misled into believing that the trademark owner had branched off into pub franchises or that there is an association with or sponsorship of the pub by the luxury car manufacturer. For a finding of infringement, confusion as to the origin of goods is no longer required. It is sufficient that consumers establish some sort of link between the junior sign and the senior one, and such a link may be established even if the goods are comparatively remote.
However, even though a trademark has acquired the position of a globally well known trademark it cannot be said that their goods or services are actually supplied to the market in every country and in addition, this also does not mean that these trademarks are registered in every country throughout the world. Therefore, in the case such a trademark happens to be imitated or pirated in a country in which it is not registered or used yet, namely when a trademark identical or similar to such a well-known or famous trademark is applied for registration or begun to be used by an unrelated third party, the Trademark Office or Court of that country is confronted with complex legal issues in order to deal with this situation. Moreover in the case a third party applies for registration of this type of bothersome trademark under his own name or commences to use that trademark in respect of the goods or services that are quite remote from the goods or services on which the well-known or famous trademark is used, the Trademark Office or Court of that country encounters even more complex legal issues.
Chapter 1. International Regime for the Protection of Well-known Trademarks
1.1 Protection of Well-known Trademarks under Paris Convention
The universal body of law on well-known marks finds its roots in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property (hereinafter "Paris Convention"). Article 6bis states that partecipating countries agree to prohibit use of with the mark of someone esle and used on identical or similar goods.
This Article was introduced into the Convention by the Revision Conference of The Hague in 1925. It was somewhat modified at two subsequent Revision Conferences, held in London in 1934 and in Lisbon in 1958, but it still retains its original number. At the latter Conference, the Article was very thoroughly discussed and its application, which formerly concerned only the refusal or cancellation of the registration of a mark conflicting with a mark which is well known in the country concerned, was then extended to a prohibition of the use of the mark first mentioned.
For many years international trade mark law (as opposed to national law) concentrated on the protection that was granted to trade marks through registration. A frequent theme in the discussion of international trade mark law in the first part of the twentieth century was the extent to which rights should be granted, first, to unregistered marks and, secondly, to marks used on dissimilar goods or services. Hence, Article 6bis was originally designed to address the concept that owners of marks which were widely known in the marketplace but not registered needed some measures of protection against later registrations of the same mark by oythers. This was deemed to be particularly important in jurisdictions where the rights to a trade mark flow principally from registration rather than from mere use. However, the concentration on registration is no longer paramount ad in some legislations the distinction between the rights which derive from registration and those from mere use is blurred, most notably in the Regulation on the European Community Trade Mark, in which registration and user rights are both recognised.
As conceived in 1925, Article 6bis protected well-known marks only against the registration of identical or similar marks for identical or similar goods by an unauthorised third party. In 1958, at the Lisbon Revision Conference, when the subject of well-known marks was again very thoroughly discussed, it was agreed that the Article should be extended to protect well-known marks also against the unauthorised use of identical or similar marks. But, unfortunately, there was no agreement on two other proposals that were put forward, namely that the Article should be extended to include a provision for the well-known mark not to have actually been used in the country where the identical or similar mark had been applied for; and that the Article should be extended both to services as well as to dissimilar goods.
As will be seen from the text above, the Article permits the owner of a mark, either in person or through the relevant authority to resist, for a period of five years, the deposit, the registration, or the use, by a third party, for the same or similar goods, of a mark which reproduces, translates, or is an imitation liable to create confusion with his mark if it is well known but not registered.
At the 1958 Lisbon Conference, an attempt at clarification was made by including in Article 6bis the statement in sub-paragraph (1) that responsibility for deciding the well-known status of a mark lay with the competent authorities in any country applying its effects. Perhaps our predecessors thought that the meening of "well-known" was beyond argument, but I cannot think there would be all this discussion, and all that litigation, if the matter was not open to question. But with so many countries now having a provision relating to Article 6bis in their laws, understandably there has been a tendency for the Article to be given different interpretations by the national offices and the courts in different countries.
Since 1925 many of the over 150 countries that are members of the Paris Union have sought to introduce Article 6bis into their trade mark laws, but without explaining precisely what is meant by the phrase "well-known". A typical approach towards Article 6bis is that of the European Community Trade Mark Regulation which provides, in Article 8(2)(c), that one of the earlier rights which may prevent the registration of a Community trademark is any mark which is well-known in one of the Member States of the E.U. "in the sense in which the words well known are used in Article 6bis". Interestingly, the Regulation creates another sort of mark, one which has a reputation, and this can be utilised by its owner to prevent the registration of a later mark also for dissimilar goods or services. Most commentators are agreed that this mark referred to Article 8, and this has now been confirmed by the European Court of Justice in Luxembourg in a case involving the trade mark CHEVY (Case C-375/97 General Motors Corporation v. Yplon S.A.).
Article 6bis of the Paris Convention reads as follows:
(1) The countries of the Union undertake (a), 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 (b) which constitutes a reproduction, an imitation, or a translation, liable to create confusion (c), of a mark (d) considered by the competent authority of the country of registration or use to be well known (e) in that country as being already the mark of a person entitled to the benefits of this Convention (f) and used for identical or similar goods (g). 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 (h). The countries of the Union may provide for a period within which the prohibition of use must be requested (i).
(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 (j).
(a) One of the questions which arises with respect to this Article is whether it may be considered "self-executing" - in countries which admit such possibility - with the result that interested parties may directly claim its application by the administrative or judicial authorities of the country concerned. This question gives rise to the following observations.
On the one hand, in stipulating that "the countries of the Union undertake...", the Article is drafted differently from many other Articles of the Convention, which direcly refer to rights or obligations of interested parties (for example, Articles 2, 3, 4, 4ter, 5bis, 5ter, 5quater, 6, 6septies, 8), or directly regulate a situation at issue (for example, Articles 4bis, 5 A(1), (3) to (5), B, C, D, 6quater, 6quinquies, 7). Nor, on the other hand, does Article 6bis refer only to an undertaking by the countries of the Union to legislate on a particolar matter, as in the case, for example, with Article 10ter and 11. Therefore, and although the Article leaves certain liberties to national legislations (paragraph (1): "if their legislation so permits"; paragraph (2): "a period of at least five years... shall be allowed..."; "The countries of the Union may provide for a period..."), it cannot be deemed only to oblige the Member States to legislate on the subject concerned, but may be considered to contain an undertaking also on behalf of the administrative and judicial authorities of these States, which - if compatible with their constitutional systems - must then give effect to the provisions of the Article at the request of interested parties.
(b) The provision under consideration refers only to trademarks and not to service marks. The Member States are therefore not obliged to apply it to service marks, but are free to do so in analogous sutiations.
(c) The purpose of the provision under consideration is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter well-known mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark. This exceptional protection of a well-known mark has been deemed to be justified because the registration or use of a confusingly similar mark will in most cases amount to an act of unfair competition, and may also be considered prejudicial to the interests of those who will be misled. Whether a trademark will be liable to create confusion with a well-known mark will be determined by the competent authority of the country concerned, and in so doing the said authority will have to consider the question from the viewpoint of the consumers of the goods to which the marks are applied. The provision specifies that such confusion may occur in cases of reproduction, imitation or translation of the well-known mark, or even if only an essential part of a mark constitutes a reproduction or confusing imitation of the well-known mark.
(d) The word "mark" in itself would not exclude the extension of the envisaged protection also to well-known service marks, but the words "used for identical or similar goods" make it clear that only well-known trademarks are covered by the provision. The Member States are, however, free to apply the same rules also to service marks in analogous circumstances.
(e) A trademark may be well known in a country before its registration there and, in view of the possible repercussions of publicity in other countries, even before it is used in such country. Whether a trademark is well known in a country will be determined by its competent administrative or judicial authorities. The Revision Conference of Lisbon in 1958 rejected a proposal according to which use of a well-known mark in the country in which its protection is claimed would not be necessary for such protection. This means that a Member State is not obliged to protect well-known trademarks which have not beeb used on its territory, but it will be free to do so. In view of the vote taken at the Lisbon Conference, the great majority of the Member States will probably adopt this attitude.
(f) A well-known trademark will, naturally, only be protected by the Article under consideration if it belongs to a person entitled to the benefits of the Convention, that is, to a natural or legal person who may claim the application of the Convention according to Articles 2 or 3. The provision under examination, however, goes further than that when it states that, in order to be protected, the mark must be considered well known in the country concerned "as being already the mark of" such person. The history of the provision shows, however, that it will be sufficient if the mark concerned is well known in commerce in the country concerned as a mark belonging to a certain enterprice, without its being necessary that it also be known that such enterprice is entitled to the benefits of the Convention. Nor is it necessary - and it is therefore not necessary to prove - that the person who has applied for or obtained a conflicting registration or who uses a conflicting mark possessed such knowledge.
(g) The protection of well-known marks, according to the provisions under examination, applies only with respect to other marks filed, registered or used for identical or similar goods. Whether this condition is fulfilled will be determined by the administrative or judicial authorities of the country in which protection is claimed.
(h) In order to give the owner of a well-known trademark sufficient time to react to the registration of a conflicting mark, this provision specifies that he must have a period of at least five years during which he may request the cancellation of such registration. This minimum period was three years until the Revision Conference of Lisbon in 1958. The words "at least" indicate that the fixation of the period is left, on condition thai it may not be shorter that five yaers, to the national legislation or to decisions of the administrative or judicial authorities of the Member States.
(i) The Member States are free also to provide for a period within which the prohibition of use of the conflicting mark must be requested, but no minimum is indicated for this period.
(j) The administrative or judicial authorities of the country in which the protection of a well-known mark is requested will determine whether the conflicting mark is registered or used in bad faith, in which case no time limit for action will prevail. Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used.
Thus, many features of the protection provided for and many situations not expressly contemplated in Article 6bis may be noted:
1. Nothing is said in the Convention regarding the protection of service marks, nor about the possibility of relying upon Article 6bis to take action against an unauthorized third party that adopts the well-known trademark in relation to different goods.
The protection in Article 6bis extends only to trademarks (marks in respect of goods), and does not extend to service marks (used in respect of services). By virue of Article 16 of Trademark Law Traty (TLT, 1994, 25 States), however, the provisions of the Paris Convention relating to trademarks were extended to service marks.
2. The protection extends to registration or use in respect of identical or similar goods (in accordance with the principle, known as the "principle of speciality", under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark);
It may be said that the provision in Article 6bis addressing the protection of well-known trademarks is a provision of exception to the general rule that conditions trademarks protection for use or registration. The owner of a trademark which is not used or registered in the country where protection is sought by a third party may still obtain protection for the mark, provided the requirements of Article 6bis (1) are met, namely that the mark is well-known in the country where protection is sought.
Practice shows that trademark owners who have failed to register a trademark in a country where protection is granted only by local registration - as is the case in most countries of the world - often try to rely on Article 6bis in an attempt to remedy their failure to registrer. Clearly this was not the intention of the drafters of the Article. Whether as a provision of exception or as a different source of rights, the fact is that only those well-known but unregistered trademarks in the country where protection is sought have access to the privileged protection afforded by Article 6bis.
Again, whether as a provision of exception or a different source of rights, the party that may benefit from the privileged protection afforded to well-known trademarks by Article 6bis may not benefit from all the rights given to registrants under national laws, but only those specifically contemplated in the Convention, namely:
· the right to have local authorities refuse registration to an unauthorized third party;
· the right to move for the cancellation of then mark registered by an unauthorized third party;
· the right to move for the prohibition of use of the mark by an unauthorized third party.
This is provided, in all cases, that the legal proceedings instituded by the owner of the well-known trademark attack the unauthorized use or registration by a third party in relation to identical or similar goods.
The term "well-known trademark" as used in Article 6bis extends to situations involing:
· a reproduction of the mark liable to create confusion;
· an imitation of the mark liable to create confusaion;
· a translation of the mark liable to create confusion.
The text of Article 6bis makes it clear that the protection afforded by its first paragraph extends to:
· situations where the essential part of the mark constututes an unauthorized reproductuion "of any such well-known mark" liable to create confusion;
· situations where the essential part of the mark constitutes an unauthorized imitation "of any such well-known mark" liable to create confusion.
Acknowledging that there are reasons favouring the notion that Article 6bis is a provision of exception that should be interpreted in a restrictive way, practise, cases, law and the contributions of legal commentators have consistently shown that there is substantial room for argument, discussion, interpretation and speculation in the text of this provision.
3. Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well-known is left to the "competent authority of the country where the illegitimate registration or use occurs".
Article 6bis does not define a well-known mark, it only enjoins the Member States of the Paris Union for the Protection of Industrial Property not to grant protection to any mark which the relevant authorities consider to be in conflict with a well-known mark belonging to someone else. Unfortunately, the Article fails to define what exactly one should understand by the term "well-known"; it does not extend this protection to services or to goods that are not similar, and it is silent on the question of whether the well-known marks should have been used in the country where protection is being sought.
Although the first recognition of the concept of a well-known mark is embodied in Article 6bis, the Paris Convention does not provide any definitions or criteria for establishing which trademarks qualify as well-known marks.
The better view seems to be one that focuses on the universal term provided in Article 6bis of the Paris Convention of a well-known mark: "mark notoirement connue", "notorisch bekannte Marke", "marchio notoriamente conosciuto" o "marca notoriamente conocida".
4. Article 6bis is of major importance for cases where a trademark in a given country does not - or does not yet - enjoy protection on the basis of a registration in that country or on the basis of an international or regional registration having effect in that country.
This does not mean that the application of Article 6bis is excluded if the trademark is registered in the country where the protection is sought. However, protection according to Article 6bis does not go beyond what normally is conferred by registration of a trademark, namely, protection against the registration or use of the same or a similar sign for the same or similar goods. Thus, if the trademark is normally registered in the country, there is no need to invoke Article 6bis.
5. As to the activities that may be attacked by the owner of a well-known trademark, the Conventon is not explicit with respect to situations where an unauthorized third party adopts the well-known mark as a part of a corporate name.
In all these situations, case law shows different ways to construe Article 6bis. In some caees, local authorities have interpreted it in strict terms, whilst others have been more flexible, affording protection to owners in circumstances not expressly contemplated in Article 6bis. Case law also provides examples of owners obtaining protection under a combination of Article 6bis and Article 10bis, governing unfair competition, or under the provisions of Article 10bis alone. Finally, Article 6bis does not address the issue of the criteria that should be used in the determination of whether or not a trademark is well-known.
It appears that in drafting provisions of new international treaties, legislators did not merely reproduce Article 6bis but have indeed incorporated these situations. It is arguable, therefore, that the text of Article 6bis is due for an update.
6. Article 6bis of the Paris Convention provides protection for marks which are well-known in the country in which protection is sought. Article 6bis is therefore of particolar importance in cases where a well-known mark is not registered in a given country, so that protection must be predicated on the fact that the mark is well-known.
According to the weight of authority, a mark must be well-known in the country in which protection is sought in order for it to enjoy the benefit of Article 6bis of the Paris Convention. It is not sufficient that the mark be well-known only in the country of origin or elsewhere; it must in fact also be well-known in the country where the protection is sought.
Once a mark has been recognised as being well-known by applying the relevant criteria and parameters, Article 6bis of the Paris Convention provides for protection as follows. The owner of a well-known mark is entitled to request that with respect to a mark which is "liable to create confusion" with the well-known mark, an application be refused or a registraton be canceled (at the registry) or the use be prohibited (by injunctive relief in court). Protection is granted against the "reproduction" or "imitation" of the well-known mark with respect to "identical or similar goods".
Many countries have incorporated these protection standards into national law. Accordingly, where applicable, the likelihood-of-confusion-standard will be aplicable within the framework of local law in order to determine whether an infringement of a well-known mark is present.
7. Although "famous" is not a word employed in the Paris Convention, it is a term which recurs in discussions relating to the extent of protection which the law should accord to trade marks which are merely known, well known or truly famous.
The terminology of "famous" and "well-known" marks is unhelpfully imprecise.
Article 6bis of the Paris Convention sought to protect "well-known"marks against the use by others of those marks on identical or similar goods. In contrast, the original dilution doctrine propounded by Frank Schechter sought to protect trade marks against the use by others of those marks on non-related goods.
How do the two major pieces of European trade mark law implement Article 6bis of the Paris Convention? Although the final recital to the Preamble of Directive 89/104 confirms that the Directive's provisions are "entirely consistent" with the Paris Convention, its English text contains scarcely a mention of the words "well known" in relation to trade marks. The registration of another's "well-known" mark is a ground upon which a trade mark application can be refused, or registration invalidated, but the rights conferred against infringers are egalitarian in their nature and treat all used trade marks in a similar manner, protecting them by virtue of their reputation even if they are not well known.
The approach taken by the CTM Regulation corresponds to that adopted by Directive 89/104. The registration of another's "well-known" mark is a ground of refusal of a trade mark application, or registration invalidated. Once again, the rights conferred against infringers treat all used trade marks in a similar manner, regardless of whether they are well known. This relatively straightforward analysis has been thrown into small uncertainty by the ECJ in Davidoff v. Gofkid when it chose, in the English version of its decision, to refer to the protection granted under Directive 89/104 to trade marks which have "a reputation in the Member State" as being the protection of "well-known marks". Does this mean that "marks with a reputation" and "well-known marks" are now synonymous? The ECJ itself in General Motors v. Yplon noted that the marks "having a reputation" in the English were "well-known" marks in the French, German, Italian and Spanish versions of Directive 89/104 and considered this no more than a "nuance which does not entail any great contradiction". Regardless of the terminology employed, a trade mark must be known to a particular extent before it is entitled to receive the protection accorded to such a mark. This extent is reached where the mark is known by a significant part of the public concerned with the goods sold under that trade mark.
One final point should be mentioned. Directive 89/104 states that, for the purpose of refusing a national trade mark application or invaliditing a subsequent grant, the words "well known" mean well known in a Member State, in the sense in which the words "well-known" are used in Article 6bis of the Paris Convention.
In theory, this qualification, which is not found in those provisions in Directive 89/104 that refer to marks being (in English) marks with a reputation and (in French, German, Italian and Spanish) well-known marks, suggest that it is somehow for the Paris Union rather than the ECJ to deternmine what "well known" means for Article 6bis purposes. In practice, the Paris Union countries have so far failed to come up with a consensus or undestanding as to what "well known" means, though they may one day do so, and not all European jurisdictions however take their lead from the Directive.
1.2 Well Known Trademarks under Trips Agreement
Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), entered into force on January 1, 1995, an annex to the Marrakesh Agreement that established the World Trade Organization, perhaps is the most important international agreement promoting the harmonization of Intellectual Property Rights in member countries. TRIPS Agreement establishes the basic principles and minimum standards concerning the availability, scope, and use of trade-related international property rights; civil and criminal enforcement obligations including border measures; procedural requirements regarding governing the administrative acquisition and maintenance of intellectual property rights; dispute settlement for the resolution of any disputes between WTO member countries over the implementation of the TRIPS Agreement.
The TRIPS Agreement requires its member countries to provide protection to well-Known trademarks. Article 2(1) of the TRIPS Agreement, which enunciates as follows,
"In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)"
requires member countries to provide protection to well-known trademarks as per Article 6bis of the Paris Convention under which member countries are required, ex officio or on the request of an interested party, to refuse/cancel registration and prohibit use of a trademark which is a reproduction/imitation/translation of a trademark considered well- known by competent authorities of the country if used for identical/similar goods and is liable to cause confusion.
TRIPS Agreement not only incorporates Article 6bis of the Paris Convention but also has extended the scope of protection of well-known trademarks in the member countries. Article 16 of the TRIPS Agreement enunciates as follows:
"2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, 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.
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".
Article 16(2) of the TRIPS Agreement requires member countries that Article 6bis of the Paris Convention-related to well-known trademarks should apply to services as well in addition to the goods.
TRIPS Agreement does not provide any definition of well-known trademark. Also, only a competent authority of a member country can determine whether a trademark is well known or not in the country. However, Article 16(2) of the TRIPS Agreement requires member countries to take knowledge of the trademark in the relevant sector of the public, even if the knowledge is obtained as a result of the promotion of the trademark, as an important factor in determining whether a trademark is well known or not in the country.
Article 16(3) of the TRIPS Agreement extends protection of the well-known trademark for dissimilar goods/services in certain conditions which are as follows:
1. well-known trademark is registered in the member country;
2. use of the trademark may cause likelihood of association with the well-known trademark;
3. interest of the owner of the registered well known trademark is likely to be damaged by such use.
Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), to some extent, generalized anti-dilution prohibitions. The concept of trademark dilution is inherently complex. Because [dilution] is largely a theoretical and almost ephemeral concept, the legal theory of "dilution" is exceedingly difficult to explain and understand. Misunderstanding is rampant.
As one of the most controversial and perhaps most elusive topics in intellectual property law, trademark dilution law has undergone a significant transformation over the past decade. For nearly all of the 20th century, to the extent that trademark dilution was even recognized as a cause of action, it was only recognized as such under state statutory law, and dilution law was seen as protecting the commercial value or "selling power" of a mark by prohibiting uses of a mark that were deemed to dilute the distinctiveness of the mark or to tarnish the associations it evoked. A cause of action for dilution was first recognized under US statutory law in the FTDA which was later fine tuned with the adoption of the TDRA.
For dilution to occur, the relevant public must make some connection or association between the mark and both parties. But that connection or association is not the kind of mental link between the parties that triggers the classic likelihood of confusion test . Rather, the assumption is that the relevant public sees the junior user's use, and intuitively knows, because of the context of the junior user's use, that there is no connection between the owners of the respective marks. According to the doctrine of trademark dilution, famous trademarks should be granted protection even in the absence of direct competition between the senior and the junior users and in the absence of a risk of confusion as to the origin of the marked goods. A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services . Tarnishment involves a newcomer's use of a mark in acontext that risks consumer aversion to the famous brand. A classic example of tarnishment under FDTA case law involved the use of CANDYLAND.COM for a sexually explicit website, which understandably evoked negative associations with the famous CNDYLAND brand of children's board games. "Blurring" involves a risk of "clutter" in the minds of consumer on account of the newcomer's use of a mark that is similar to a famous brand. Dilution by blurring consists of a single mark identified by consumers with two different sources. One mark: two sources. One example of blurring under the FTDA case law involved the use of HERBROZAC as a mark for a natural alternative to the PROZAC brand pharmaceutical.
Though the TRIPS Agreement provides minimum standards for the protection of well-known trademarks which each member country is required to provide in its relevant national legislation, however, member countries are free to provide higher standards of protection in their legislation if they wish. TRIPS Agreement neither provides any definition of a well-known trademark nor any criteria for determining whether a trademark is well-known or not in a member country and it has been left for the member states to determine.
1.3 WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
Despite the fact that the TRIPS agreement has introduced some new elements as well as clarity into the notion and regime of protection of well-known trademarks, there still have been a lot of unanswered questions left as to the criteria of recognition and scope of protection of well-known marks. As a reply to this demand in 1995 World Intellectual Property Organization (WIPO) started working on what is now known as Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks .
The Preface to this document clearly states that the "Recommendation is the first implementation of WIPO's policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles". Joint Recommendation is not legally binding, and therefore is a flexible instrument of international harmonization in the field of trademark law. It has a profound significance for countries, which seek to comply with their international obligations and are on the stage of development of their national legislation concerning protection of well-known marks. But for the countries that already have an elaborated legislation and judicial practice in this field, the Joint Recommendation may at times be seen as controversial.
The Joint Recommendation addresses the issues that have stayed unclear since the introduction of the Article 6bis of the Paris Convention, namely i) the determination of a well-known mark in a Member State, by offering guidelines for assessment of a mark for being well-known; ii) the scope of protection of well-known marks, by defining marks, business identifiers and domain names conflicting with a mark deemed well-known.
Article 2(1)(b) of the Joint Recommendation proposes the following non-exhaustive list of types of information that must be taken into account by competent authority when determining whether a mark is well-known in a Member State:
(1) the degree of knowledge or recognition of the mark in a relevant sector of the public;
(2) the duration, extent and geographical area of any use of the mark;
(3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(4) the duration and the geographical area of any registrations, and/ or any applications of the mark, to the extent that they reflect use or recognition of the mark;
(5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;
(6) the value associated with the mark.
The approach of true flexibility in application of Joint Recommendation is reflected in Art. 2(1)(c), which states that
"the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in subparagraph (b)".
Art. 2(3) also provides for the list of "non-requirements" for well-known marks. It is not required:
(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State;
(ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or
(iii) that the mark is well known by the public at large in the Member State.
Thus, according to this article, the mark only needs to have a reputation in "the relevant sector of the public" and not the public at large. Also, use and/or registration cannot be a requirement for protection.
As to the question of the scope of protection for a well-known mark against conflicting marks, business identifiers and domain names, the Joint Recommendation establishes that it shall be at least from the time when the mark becomes well known in the Member State, and that bad faith should be considered in balancing the interests of the parties involved when assessing possible infringement of well-known marks.
It also stipulates the conditions under which a mark is deemed to be in conflict with a well-known mark in respect of identical or similar goods and/or services. The provisions also cover conflicts with regard to dissimilar goods and services. However, in these cases, knowledge of the public at large can be required.
In conclusion, it must be said that although the Joint Recommendation is a "soft" law document, and has some controversial provisions, it is a document reflecting a very high level of international consensus on harmonization of the national substantive law on protection of well-known marks, and is widely recognized and supported as one of the basic documents in this field.
Chapter 2. Protection of well known trademarks in Italy
Article 12(1)(b) and (g) of the Italian Industrial Property Code (D.Lgs. February 10, 2005, n. 30) incorporate Article 6bis of the Paris Convention, as interpreted and expanded in its scope of application by Articles 16(2) and (3) of the TRIPS Agreement.
Under Article 12(1)(b) and (f), a mark is not new and, therefore, inelegible for registration, if it is identical with or similar to a mark that is "well-known within the meaning of Article 6bis of the Paris Convention" (in accordance with Article 16(2) of the TRIPS Agreement), in the following cases:
(i) when the later mark is registered for identical or similar goods or services, if "by virtue of the identity or similarity of the signs and the identity or similarity of the goods or services, a risk of confusion may arise on the part of the public, which may also consist of a risk of association of the two signs"; and
(ii) when the later mark is registered for dissimilar goods or services, irrespective of whether a risk of confusion or association may arise on the part of the public, on condition that use of the later mark "without due cause" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known mark.
To qualify as "well-known wihthin the meaning of Article 6bis" a mark needs to be well-known in Italy where its reputation will come as a result of its use or promotion in international trade.
Similarly, under Article 17(1)(f), a registered mark that "enjoys a reputation" in Italy constitutes a bar to the valid registration of identical or similar marks when use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark.
The only provision of the Italian Industrial Property Code that deals with the protection of marks enjoying a reputation is Article 20(1)(c), under which the owner of a registered mark that enjoys a reputation is entitled to prevent unauthorized third parties from using identical or similar signs with respect to dissimilar goods or services, provided that use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distintive character or the repute of the mark.
It is noteworthy that the Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services. In other words, the Italian Industrial Property Code does not contain any provision that expressly affords protection to unregistered well-known marks within the meaning of Article 6bis of the Paris Convention against the unauthorized use of conflicting signs by third parties as provided by Articles 16(2) and 16(3) of the TRIPS Agreement.
This is simply because, when dealing with the issue of protection, the Italian Industrial Property Code applies only to registered marks. In practical terms, to prevent the unauthorized use of the conflicting mark, the owner of a well-known mark within the meaning of Article 6bis of the Paris Convention will have only the very light burden of filing an application in Italy before taking action.
Hypothetically speaking, if the owner of a well-known mark within the meaning of Article 6bis does not intend to file an application, protection against the unauthorized use of a conflicting mark could be alternatively sought under Article 21(3) of the Italian Industrial Property Code. Under this provision, no one may use a registered trademark after its registration has been declared invalid, when the reason for invalidity involves the unlawfulness of the use of the trademark. According to the most convincing scholarly interpretation of this provision, the above prohibition not only applies with respect to absolute grounds of invalidity, but also when there is a violation of Article 14(1)(c) of the Italian Industrial Property Code (in relation with Article 21(2) of the Italian Industrial Property Code), which prohibits the registration as trademarks of signs when their use would infringe someone else's copyright, industrial property right, or any other exclusive right.
In any event, it should be remembered that Article 6bis of the Paris Convention and, consequently, Articles 16(2) and 16(3) of he TRIPS Agreement, are automatically applicable in countries that are signatories to these agreements absent a specific, more favourable national provision.
Two additional provisions of interest for the protection of famous trademarks are Articles 8(3) and 19(2) of the Italian Industrial Property Code.
Article 8(3) prescribes that, if well-known, personal names, signs used in artistic, literary, scientific, political or sports fields, denominations and acronyms of exhibitions and events, and non-profit bodies and associations, as well as the characteristic emblems thereof, may be registered as trademarks only by those entitled to them, or with their consent. This provision aims at preserving the possibility of exploiting the evocative power of famous names or signs that have not yet been used or registered as trademarks to those who have established their fame.
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