"What's in a name? That which we call a rose by any other name would smell as sweet"- Shakespeare
In many countries, getting trademark registered is the only apparatus to obtain statutory rights. As an essential element to registration, some countries requires the owner of the trademark to use or make evident its intent to use their trademark within their borders.
To provide guidelines concerning well-known marks, WIPO in consultation with the Assembly of the Paris Union proposed certain recommendations to achieve better protection for well-known marks for their member states.The rationale for the Joint recommendation can be traced in its preface.1
The provisions relating to the protection of well-known marks are discussed in the TRIPS agreement (was adopted in 1995 with 134 member states2) and in the Paris Convention (around 100 years old document with 154 member states).
The Joint Recommendation is an effort taken by WIPO to bridge the gaps of Article 6b is of the Paris Convention and Articles 16(2) and 16(3) of TRIPS.
Article 6b is of the Paris Convention: The Well-Known Marks
(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.
Article 16(2) and 16(3) of the Trips Agreement: Rights Conferred
2. Article 6b is 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 6b is 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.
The Joint Recommendation like the Paris Convention and the TRIPS Agreement does not provide any definition for a well-known mark, but it, however, sets out elaborate guidelines for determining the status of a mark to be well-known. Under the Paris Convention, the interpretation is up to the discretion of its member states of well-known marks, the TRIPS Agreement provides for nominal knowledge for ascertaining a trademark as well-known whereas the Joint Recommendation lays down uniform criteria for its member statesfor determining whether a trademark in their territories a well-known one.
The joint recommendation basically responses timely to the rapid changes that take place in the field of the Intellectual Property Rights.Since under the Paris Convention the interpretation of well-known was left at the discretion of its members and the TRIPS Agreement provided only a nominal factor of knowledge for ascertaining a trade mark as well-known, the Joint Recommendation sought to lay down a uniform criteria for its members to determine whether a trade mark was well known in their respective territories.The WIPO Joint Recommendation provides the Provisions for protection of well-known marks which supplements the provisions of Paris Convention and TRIPS. Following are the major ingredients of the WIPO Joint Recommendation:
- It set a non-exhaustive list if factors that an authority has to take into consideration which deciding whether a mark is to be considered well-known or not.
- A mark must be considered as well-known only if its well-known in one of the relevant sectors of the Member States (Art. 2 (2)(b))
- Member states are not required to see whether the mark is being registers or whether it is being used or whether there is an application is filed for getting the same to be registered to conclude the mark to be a well-known mark. (Art. 2(3)(i))
- It is required that in case a well-known mark is not registered in country where its protection has been sought, it must be protected against use of an identical or similar mark against dissimilar goods or services. (Art. 4(1)(b))
- A member state however, in certain cases requires that a well-known mark must be considered as well-known by public at a large. (Art. 4 (1)(c))
- The recommendation also provides for the remedies to be given if any conflicts arise between the business identifiers and well-known marks (Art.5) or between the well-known marks and domain name. (Art. 6)
The pirate flies the flag of the one he would loot. The free and honourable non-pirate flies the colors of his own distinctive ensign.3
1 Preface (Para 3): 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.
2 Countries who are the signatory to a particular treaty.
3 Quaker Oats Corp. v. General Mills, Inc., 134 F.2d 429, 432 (7th Cir. 1943).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.