September 15, 1999
External Affairs Committee
WHEREAS, despite international convention and multilateral treaty provisions, many countries do not extend sufficient protection to well-known marks; and
WHEREAS, many countries apply different and conflicting criteria for determining what constitutes a well-known mark; and
WHEREAS, after four years of deliberations, the World Intellectual Property Organization's (WIPO) Standing Committee on the Law of Trademarks (SCT) reached consensus on a set of new measures to improve the scope of protection for well-known marks;
BE IT RESOLVED, that the International Trademark Association endorses the Provisions for the Protection of Well-Known Marks that were adopted by the SCT on June 8, 1999.
BE IT FURTHER RESOLVED, that the International Trademark Association encourages the Assembly of the Paris Union for the Protection of Industrial Property and the General Assembly of WIPO to approve a joint resolution recommending that Member States protect well-known marks in accordance with the SCT provisions.
Since the first WIPO meeting in November, 1995 to discuss the need to clarify, consolidate and supplement the existing international standards of protection for well-known marks under the Paris Convention and the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS), INTA has played an important role in the development of the model provisions. To emphasize the importance of the protection of well-known marks and to provide guidance to the WIPO deliberations, INTA's Board of Directors adopted a resolution on September 18, 1996 endorsing: (1) protection of well-known marks whether or not a mark is used or registered in a jurisdiction if such mark has sufficient local reputation; and (2) a list of factors as criteria for establishing a well-known mark. The WIPO draft provisions which were agreed to by the SCT on June 8, 1999 are an attempt to provide a worldwide standard on how to implement the requirements under Article 6 bis of the Paris Convention and Article 16 of TRIPs. Basically, the draft provisions do the following:
- Set out the factors to determine what is a well-known mark. These are non-exhaustive and are to serve only as guidelines, not requirements. A number of INTA's suggested criteria are included. The mark only needs to have a reputation in the relevant sector of the public and not the public at large. Also, use and/or registration cannot be a requirement for protection.
- Establish that the scope of protection for a well-known mark against conflicting marks, business identifiers and domain names shall be at least from the time when the mark becomes well known in the country, and that bad faith should be considered in balancing the interests of the parties involved when assessing possible infringement of well-known marks.
- Stipulate the conditions under which a mark is deemed to be in conflict with a well-known mark in respect of identical or similar goods and/or services. The provisions also cover conflicts with regard to dissimilar goods and services. However, in these cases, knowledge of the public at large can be required (i.e., a truly famous mark).
The SCT also has proposed a joint resolution to be adopted by the Paris Union and WIPO General Assembly recommending that the Member States implement these provisions and if the country is a member of an intergovernmental organization (e.g. European Union), to urge that organization to adopt the provisions. However, the proposed joint resolution is not legally binding on the Member States. According to WIPO, the rapid pace of change in the field of industrial property requires that new options are needed to accelerate the development of international harmonized common principles and rules rather than taking the more traditional and lengthy treaty-based approach.
Given that the WIPO provisions are consistent with current INTA policy and provide specific direction to countries needing to improve protection for well-known marks, the External Affairs Committee recommends that the Board adopt a resolution supporting the proposed WIPO resolution and provisions.