WELL-KNOWN AND REPUTED TRADEMARK (OR FAMOUS TRADEMARKS)

Abstract

According to the degree of awareness by the relevant public of the goods and/or services which they identify and whose commercial origin they guarantee, trademarks fall into two broad categories: (i) trademarks whose degree of awareness by the relevant public of the goods and/or services they cover is limited and which, without naming them as such, we consider as common trademarks, although their importance in trade cannot be minimised by this qualification and (ii) trademarks with a broad degree of awareness by consumers. The latter in turn fall into two sub-categories; (a) well-known marks and (b) reputed marks, but the difference between them is not clear, is not taken into account and does not become important to the public until they realise that they are the victims of infringers, this being relevant only to applicants for registration of signs as marks and to proprietors of marks whether they are common or well-known. Whether they are well-known, when by registration they infringe the rights of others and/or when their rights are infringed, they are usurped by trademark usurpers of any kind. But is there a difference between them? At first sight, no! And in any case, not for consumers. From a legal perspective, however, these are trademarks with legal regimes between which the differences are greater than the similarities. But while the first founding Convention of industrial property law grants a special regime to well-known marks, even if it recognises a certain (limited) power of notoriety, this one, like the Agreement on Trade-Related Intellectual Property Rights (TRIPS), says nothing about well-known marks. Trademarks with an initial protection regime under common law and which, when they become well-known because of the quality of the goods or services they identify and the widespread awareness of the public concerned, enjoy a different protection regime from well-known trademarks and a much higher level of protection than common trademarks. This is why we are now trying to clarify the notions.

Keywords

• common marks
• well-known marks
• marks with reputation or reputed marks
• famous marks
• similarities and differences between well-known and reputed marks
• well-known marks regime
• reputed marks regime
• protection not conditional on registration
• initial protection acquired by registration
• extended protection acquired as a result of reputation