September 18, 1996
Sponsoring Committee: Issues and Policy Committee
WHEREAS, lack of consistency in protection of “well-known” marks, including imposition of use requirements within a particular jurisdiction, fosters public deception and commercial dishonesty, as well as poses an untoward risk that a company will be precluded from doing business under its own mark in a jurisdiction precisely because the strength of its reputation has led to a pirating of its mark; and
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;
BE IT RESOLVED, that the International Trademark Association endorses protection of well-known marks without requiring registration and/or actual use in the form of sales of goods or services bearing the mark in the jurisdiction in question if such mark has sufficient local reputation to be considered “well known.”
BE IT FURTHER RESOLVED, that the International Trademark Association endorses consideration of the following factors as criteria for establishing a “well-known” mark:
a) The amount of local or worldwide recognition of the mark
b) The degree of inherent or acquired distinctiveness of the mark
c) The local or worldwide duration of use and advertising of the mark
d) The local or worldwide commercial value attributed to the mark
e) The local or worldwide geographical scope of the use and advertising of the mark
f) The local or worldwide quality image that the mark has acquired
g) The local or worldwide exclusivity of use and registration attained by the mark, and the presence or absence of identical or similar third party marks validly registered for or used on identical or similar goods and services
The Famous Marks Subcommittee of the Issues and Policy Committee has considered two issues concerning rights in well-known trademarks, namely, protection of reputation alone and factors which define a “well-known” mark.
In reviewing the issue of protection of reputation alone, the Subcommittee has determined that actual sales in a particular country are unnecessary since it is a well-known mark’s reputation that should be protected. The following statement from the preparatory memorandum for the 1995 WIPO Committee of Experts meeting on well-known marks clearly describes the “reputation alone” issue:
(bb) Use of the Well-known Mark in the Country in which Protection is Sought
26. The discussion of the question whether or not use of the mark in the country of protection may be required for the protection provided by Article 6 bis is as old as the provision itself. Article 6 bis does not contain an expressed condition to the effect that the use of a mark is not a prerequisite to the application of this provision. Therefore, it has been argued that the countries party to the Paris Convention were free not to protect well- known marks which had not been used on their territory. For this reason, the Lisbon Revision Conference of 1958 attempted to add a sentence to paragraph (1) of Article 6 bis in order to clarify that the application of the said provision was independent of the actual use of the mark in a country. However, this proposal did not obtain the then-required unanimity for its adoption.
27. Article 6 bis, in contrast to Article 5C(1) of the Paris Convention with regard to registered marks, does not mention any user requirement with respect to well-known marks. According to the principles governing protection against unfair competition, marks are 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 meaningful, it should be interpreted to the effect that it does not allow Paris Union member states to require that the mark be actually used in the country in which its protection as a well-known mark is invoked. Otherwise Article 6 bis would only repeat an obligation already existing under Article 10 bis.
28. Moreover, it would seem to be illogical to require use in the country of protection for well-known marks, whereas registered marks during an initial period (which must be “reasonable” according to Article 5C(1) of the Paris Convention) in a great number of countries enjoy protection without use. A certain parallelism may be seen in the fact that, on one hand, a registered mark may lose its protection after a certain period of time because of time limits which national laws may fix according to Article 6 bis of the Paris Convention (see paragraph 8, above). The said time limits are the only limitation provided for in Article 6 bis. If use could be required as a condition of protection, this would have had to be expressly mentioned in the said Article. (WIPO Committee of Experts on Well-known Marks, Memorandum Dated July 18, 1995, Document WKM/CE/I/2, page 9.)
As a result of the Subcommittee’s review of the issue, it has concluded that reputation alone should be sufficient to create protection for well-known marks.
Moreover, the Subcommittee considered various factors for establishing the status of a mark as “well known.” The Subcommittee reviewed both multilateral treaties as well as national legislation in many countries and produced the seven factors listed in the Resolution.
The Subcommittee also considered “bad faith” as it pertains to well-known marks. The Subcommittee is of the opinion that while it is important to consider bad faith in conjunction with remedies concerning infringement of well-known marks, it would be unduly restrictive to include bad faith in the definition or criteria for determining what is a well-known mark.
Accordingly, protection for well-known marks should be strengthened and harmonized simultaneously by protecting well-known marks based on reputation alone and by promoting factors (a) through (g) as worldwide guidelines for evaluation of whether a mark is “well known.”