Well Known marks and to what extent they should be protected

Richard Heath 
International Symposium on Intellectual Property 
Alexandria – Egypt 
25-27 Sept, 1996 

The subject of well-known marks is, at present, being hotly debated and therefore, the opportunity to present this paper at the moment is quite timely and I hope to be able to summarizer for you the point to which the debate has reached and give you some indication as to where it is likely to go in the future. 

In the 1994-95 programme of WIPO, it was decided that the International Bureau should prepare, convene and service meetings of consultants to consider the criteria that should be applied to define what a well-known mark is, which you will be aware is to be protected as provided in Article 6(bis) of the Paris Convention, and what measures could be taken to make the protection of well-known marks more effective in the world. In 1996-97.

The programme of WIPO has been revised on this subject and it has been decided that the International Bureau will study, with the help of a Committee of Experts meeting once each year, all questions of relevance to the correct application of Article 6(bis) of the Paris Convention and it should also study the conditions and scope of protection, in particular in respect of famous marks against dilution and / or undue exploitation of the goodwill acquired by such marks. Moreover, it should study the feasibility of setting up under the aegis of WIPO, a voluntary international information network for the exchange of information among countries concerning marks that one or more of them considers to be well-known or famous. The results of the study and any proposal for actions are intended to be put before the General Assembly of WIPO and adopted at some stage in the future. 

The first meeting of the Committee of Experts was held in November last year and the next meeting is due to be held around now. Therefore, the best I can do is to summarize the outcome of the last meeting. 

The Definition of a Well-known Mark

Well-known marks, as I have already said, are referred to in Article 6(bis) of the Paris Convention and also in Article 16 of the TRIPS Agreement but both are more concerned with the rights of well-known marks and in neither or them, can one find a full definition of what constitute "Well-known". Jurisdiction that need or want to incorporate Article 6(bis) into their law accordingly need some guidance on how this is to be interpreted. The two basic approaches are either quantitative ( based upon percentages of the relevant sector of the public ) or quantitative ( based on evaluating value for the mark ) but neither of these have been accepted as a possible basis for definition. The quantitative approach is probably more realistic and in that, two parameters musty be defined. First, the relevant sector of the public and second, the portion of that sector to which the mark must be well-known. For the first parameter, account must be taken of the nature of the goods or services to which the mark applies. For the second parameter, a criteria must be established concerning the required percentage of the relevant sector. In addition to those parameters, a method of evidence has to be established. Typically, market surveys would serve this purpose. It was agreed by the Committee of Experts that a better approach would be produce a non-exhaustive list of criteria which should be taken into account by Offices and Courts when determining whether a mark is well-known. Some of the possible criteria which were mentioned in the discussions are as follows but they are not necessarily exhaustive :- 

• Market share

• Inherent registrability

• Acquired distinctiveness

• The nature of the goods or services

• The nature of the channels of trade.

• The duration and extent of use

• The duration and the extent of publicity.

• Use by third parties of the same or similar marks.

• Geographical spread.

• The quality of the goods and services (although this point was hotly disputed).

• Bad faith.

• The extent to which the mark is registered and the extent and success of the efforts made by the mark's proprietor to protect it.

• It is no coincidence that many of the above items are included in the Federal Anti-Dilution Bill which is currently being progressed in the United States Congress because dilution is a concept well recognized in US Law and Practice.

Is use in the country relevant ? 

Article 6(bis) of the Paris Convention does not mention any use requirement with respect to well-known marks.

According to the principles governing protection against unfair competition, marks to be protected against confusion ( passing off ) on the basis of their use and the goodwill established through use. Article 10(bis) of the Paris Convention establishes the basis for such protection. In order to make Article 6(bis) meaningful, it should be interpreted to the effect that it does not allow Paris Convention member states to require that the mark be actually used in the country in which its protection as a well-known mark is evoked. Otherwise, Article 6(bis) would simply repeat Article 10(bis).Certainly, for those in industry, it is felt that use of the mark should not be required in order to establish that a mark is well-known.

Protection against use for dissimilar goods or services:

Use of a mark in relation to dissimilar goods or services is something with which we are all familiar and something which is extremely difficult to deal with. In the recent experience of my own company, Unilever, we have had a problem particularly in this region with our LIPTON trade mark. As many of the delegate at this conference will be aware, particularly those from the Middle East, LIPTON is very much a household name in this region and is undoubtedly the leading tea brand. I have here some slides, all from the UAE, which show just how ubiquitous the Lipton name is and how much we promote it in the region. We have recently been made aware of a third party using the name LIPTON in relation to talcum powder. Clearly, it is not possible or economically feasible to register the word in every class in every country of the world, as the cost of such an exercise would be entirely prohibitive. Furthermore, we would have no bona fide intention to use the mark in relation to all goods and the mark would soon become invalid through non-use. Certainly, a harmonized approach is desired and in my view, the extended protection should be available for marks which have a reputation, in addition to those which are famous. We can see no objection to registration of the mark being required as a condition for extended protection and we believe that extended protection should be available in all cases not just where the use takes unfair advantage of the reputation of the mark. It is very difficult to p\rove in the case of LIPTON, mentioned above, that the use is detrimental to the distinctive character of the mark or even that it takes unfair advantage of the mark but why would the mark have been selected otherwise? . Article 16.3 of TRIPS which sets out the conditions for protection is probably too strict: it should be sufficient to request damage to the interests of the owner. In that context, one could also envisage to propose the better drafted conditions for protection provided by European Union for marks having a reputation. Furthermore, the Committee of Experts also submitted that well-known marks should, of course, be protected against dilution but also against confusion, association and taking unfair advantage of their repute. We would obviously support that.

Internationally well-known marks:

Up till now. I have spoken about the protection of well-known marks in countries or regions where they are used but what of the situation which can srise whether a mark can be protected in a country where it is not yet well-known, provided the owner can establish that the matrk is well-known internationally. Such protection is already provided in some countries, for example, Japan and it is very important in such cases to address and apply the doctrine of bad faith.

International "Register " or list of well-known marks :

National trade mark offices are often confronted with the problem that so called trade mark pirates apply for registration of marks ahead in time of the true owners. This is a typical case of the practical application of Article 6(bis) of the Paris Convention; the mark is well-known but the identity of its owner is not sufficiently well-known. When determining whether an application for a given mark originates from the true owner or is an act of piracy, the relevant administrations often lack the necessary information to make the right judgment. Some countries have endeavored to overcome this problem through the establishment of lists of marks which are considered to be well-known. Important questions here are whether the right criteria have been applied in determining whether a mark is well-known or not . This brings me back to the point I made at the beginning of the talk as to whether a sensible definition can ever be arrived at . There has been a proposal that WIPO set up a so-called Register of well-known marks in Geneva. It seems that representatives from industrial and developed countries in the main are opposed to such a Register but not so those from developed or less developed countries. I have to say that my own Company would support the creation of such a list or Register, provided it was properly maintained and that appropriate criteria were established for entry onto the list. I am sure we all have experience of countries who maintain lists of well-known marks and in some cases, it is extremely difficult to get one on the list at all. For example, in Brazil, the volume of evidence which is required is huge whereas in other countries, such as Korea, all one needs to do is fill a form. 

In my view therefore, the international list, if it is to be created, should not be compiled from the lists supplied by the individual countries since these lists themselves are of limited value in some cases. If there is to be an international list, it should be possible to get on it only by application by the proprietor of the mark and hopefully, this list will supersede all the national lists which are currently maintained. I would support the idea of inclusion on the list being subject to the payment of a fee and that the level of this fee should be set sufficiently high to dissuade the inclusion of unfounded claims. The list should be updated at least on an annual basis, in order to keep it relevant. I believe such a system, if it is to be created, would be of great interest if the notion of a mark being internationally well-known was recognized as the basis for protection. In such cases, the list could serve one or more of the following purposes :-

1. It could be evidence of the mark being well-known thus reversing the burden of proof that the mark is not well-known to an infringer or potential infringer.

2. It could serve to inform owners of well-known marks about infringing applications, and

3. It could serve as a basis for information of a local potential applicant or infringer who would prima facie act in bad faith if he applied for the mark as listed.

It seems the list must indicate the class of goods and services for which the mark is well-known and indicate the time since when the mark is well-known. 
The disadvantage of such a Register or list are that it can only be a snap shot of a particular situation at any given moment in time. The circumstances of a mark that was once well-known and included on the Register could subsequently change and it could have lost its well-known status without the authorities in a country or WIPO being aware of it . Alternatively, a mark could achieve well-known status after the list was drawn up. 
A further question that would need to be addressed is that of who would decide whether a mark goes on the list or not. Here, there are three possibilities :-National Trade Mark Office 

1. National Trade Mark Offices. It seems clear that such Offices are unlikely to be either qualified or able to do this.

2. Trade Mark Owners. The opinion of trade mark owners is unlikely to be objective and it should always be remembered that the owner of a mark will always have an inflated idea of the importance of that mark to him rather than to anybody else, or 

3. The Courts. Not everybody goes to Court and certainly not uniformly in every country so the number of marks being declared by the Courts to be well-known will be patchy and will never accurately reflect the situation.

It seems therefore that, on balance, there probably are sufficient justifications for having a list or a Register drawn up by WIPO but only if the considerable obstacles mentioned above can be overcome. WIPO is now working on :

1. Establishing what lists already exist in which countries and who draws them up.

2. The information that should be included on the list, and

3. How frequently the list should be published.

As I stated at the beginning of this talk, the Committee of Experts has only met once and is due to meet imminently for their second meeting. As I hope I have been able to point out, there is a considerable amount of work to be done on the subject of well-known marks and one very important point which is yet to be considered is what will happen to the eventual conclusions of the Committee of Experts. They will obviously be great importance both for members of the Paris Convention and for signatories to the TRIPS Agreement. Two possibilities are presently being considered:-

1. A recommendation either by the WIPO General Assembly or the Assembly of the Paris Convention, or 

2. And this is probably the more likely in my view, a protocol to the Trade Mark Law Treaty. 

Whatever the eventual conclusions are, I am sure that this subject will continue to be hotly debated and for major trade mark owners such as my company and others like it, the debate will be closely monitored and the conclusions cannot come too soon.