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Current Anti-Dilution of Well-Known Marks under International Treaties
(A) Well-Known Mark’s Definition
There has been no articulate definition for “well-known mark” or “famous mark” under international treaties. A well-known mark is sometimes called a famous mark. Although some claim that the latter has a higher degree of reputation than the former and deserves broader protection, there is no clear difference between them. What is clear is the higher the degree of reputation, the broader its scope of protection. The courts are generally more willing to assume the injury to a highly reputable mark.
According to Art 6bis of the Paris Convention, it is called a ‘well-known mark’ which is known to a substantial segment of the relevant public in the sense of being associated with the particular goods or services.
However, a series of factors are considered in the 1999 Paris Union and WIPO Joint Recommendation on Well-Known Marks, to determine whether a mark is well-known. They are: the degree of knowledge or recognition of the mark in the relevant sectors of the public; the duration, extent and geographical area of any use of the mark; the duration ,extent and geographical area of any promotion of the market including any advertising or publicity and the presentation at fairs or the exhibition of the goods to which the marks apply; the duration and geographical area of any registrations or applications to the extent that they reflect use; the record of successful enforcement of rights in the mark, in particular the extent to which it was recognized as well-known by the competent authorities; and the value associated with the mark.
TRIPS also sets a series of standard criteria for determining whether a trademark is well-known, considering the following principal factors: (a) the knowledge of the trademark in the relevant sector of the public, as a result of the use of the mark, and (b) the knowledge acquired by other means, including the promotion of the trademark.
(B) The Special Protection of Well-Known Marks
At the level of international treaties, well-known marks are given additional special protection compared with other non-well known marks. Pertaining to Article 6bis of the Paris Convention,
it addresses the cases where well-known marks are not registered in a given country, but protection is still available on the condition that the marks are well-known marks. In other words, the owners of “well-known marks” that are widely known in the marketplace but not registered, are provided a measure of protection against later registrations of the same trademark by others.
Moreover, TRIPS has made more progress than the Paris Convention through the expansion of protection to include well-known service marks, stipulating “Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services.” More importantly, Article 16-3 of TRIPS addresses: “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.” This provision provides a much broader legal protection for registered well-known marks in terms of the protection scope extended to dissimilar goods or services. However, in order to qualify for the extended protection of Article 16(3), the well-known mark must be registered. As a matter of fact, Article 16(3) provides potential grounds for anti-dilution protection for well-known marks. It can be interpreted as follows: the trademark dilution occurs, when the use of the registered mark on dissimilar goods or services has an association between the goods or services, and the interests of the trademark owner are likely to be damaged because of the use. Lastly, to some extent, it also reflects an exception to the “principle of specialty” that hampers the extension of protection to non-competing goods and services in some countries.
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