Protection of Well-Known Marks: WIPO Joint Recommendation

“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 states[2]) 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]

Author:   Oorja Jain, student of -5th year- Banasthali Vidhyapith, Rajasthan, intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at niharika@khuranaandkhurana.com.

References:

[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).

Leave a Reply

Categories

Archives

  • March 2024
  • February 2024
  • January 2024
  • December 2023
  • November 2023
  • October 2023
  • September 2023
  • August 2023
  • July 2023
  • June 2023
  • May 2023
  • April 2023
  • March 2023
  • February 2023
  • January 2023
  • December 2022
  • November 2022
  • October 2022
  • September 2022
  • August 2022
  • July 2022
  • June 2022
  • May 2022
  • April 2022
  • March 2022
  • February 2022
  • January 2022
  • December 2021
  • November 2021
  • October 2021
  • September 2021
  • August 2021
  • July 2021
  • June 2021
  • May 2021
  • April 2021
  • March 2021
  • February 2021
  • January 2021
  • December 2020
  • November 2020
  • October 2020
  • September 2020
  • August 2020
  • July 2020
  • June 2020
  • May 2020
  • April 2020
  • March 2020
  • February 2020
  • January 2020
  • December 2019
  • November 2019
  • October 2019
  • September 2019
  • August 2019
  • July 2019
  • June 2019
  • May 2019
  • April 2019
  • March 2019
  • February 2019
  • January 2019
  • December 2018
  • November 2018
  • October 2018
  • September 2018
  • August 2018
  • July 2018
  • June 2018
  • May 2018
  • April 2018
  • March 2018
  • February 2018
  • January 2018
  • December 2017
  • November 2017
  • September 2017
  • August 2017
  • July 2017
  • June 2017
  • May 2017
  • April 2017
  • March 2017
  • February 2017
  • January 2017
  • December 2016
  • November 2016
  • October 2016
  • September 2016
  • August 2016
  • July 2016
  • June 2016
  • May 2016
  • April 2016
  • March 2016
  • February 2016
  • January 2016
  • December 2015
  • November 2015
  • October 2015
  • September 2015
  • August 2015
  • July 2015
  • June 2015
  • May 2015
  • April 2015
  • March 2015
  • February 2015
  • January 2015
  • December 2014
  • November 2014
  • October 2014
  • September 2014
  • August 2014
  • July 2014
  • June 2014
  • May 2014
  • April 2014
  • March 2014
  • February 2014
  • January 2014
  • December 2013
  • November 2013
  • October 2013
  • September 2013
  • August 2013
  • July 2013
  • June 2013
  • May 2013
  • April 2013
  • March 2013
  • February 2013
  • January 2013
  • December 2012
  • November 2012
  • September 2012
  • August 2012
  • July 2012
  • June 2012
  • May 2012
  • April 2012
  • March 2012
  • February 2012
  • January 2012
  • December 2011
  • November 2011
  • October 2011
  • September 2011
  • August 2011
  • July 2011
  • June 2011
  • May 2011
  • April 2011
  • March 2011
  • February 2011
  • January 2011
  • December 2010
  • September 2010
  • July 2010
  • June 2010
  • May 2010
  • April 2010