Famous and Well-Known Marks
Updated, June 2015
1. What is a famous mark?
Famous marks are those that enjoy a high degree of consumer recognition in a particular jurisdiction or in a specific field of commerce or industry. However, few trademarks enjoy the status of “fame.” Examples of marks held to be famous in certain jurisdictions are COCA-COLA, KODAK, WIMBLEDON and VIAGRA.
2. How is fame determined?
Fame is determined differently from jurisdiction to jurisdiction. Some jurisdictions allow a mark owner to apply for certification that its mark is famous. Most jurisdictions, however, require fame to be determined on a case-by-case basis within the context of a trademark infringement proceeding or administrative challenge. Evidence relevant to the fame of a trademark may include sales, advertising and revenue figures; geographical scope of use; channels of trade; registrations in home and other countries; past enforcement efforts; and the results of consumer recognition surveys (provided the survey methods are approved by the courts in that jurisdiction). Findings of fame in other jurisdictions can also be persuasive.
3. Are famous marks accorded different protection than non-famous marks?
In an infringement action, famous marks are generally accorded a broader scope of protection, which means that infringement may be easier to establish. Also, in many jurisdictions famous marks are protected against even non-competing, unrelated uses, on the basis that such use will dilute the distinctiveness of the famous mark or prejudice the interests of the brand owner.
For example, the United States recognizes a federal cause of action for dilution of a famous mark. In this context, dilution by blurring means the lessening of the capacity of a mark to identify and distinguish the goods or services of the mark owner. Dilution by tarnishment, on the other hand, refers to the use of a famous trademark in connection with goods or services of poor quality or of an unwholesome or unsavory nature. Dilution is applicable regardless of whether the parties are competitors or whether there is any likelihood of confusion. In contrast, dilution is not available for non-famous marks. Thus, while it takes additional effort to prove that a mark is famous, such designation can afford a famous mark a broader scope of protection than a non-famous mark and provide additional causes of action.
4. How is a mark shown to be well known?
Similar to fame, the determination of whether a mark is well-known is conducted on a jurisdiction-by-jurisdiction basis, and the factors reviewed are similar to those for famous marks. The World Intellectual Property Organization’s (WIPO’s) report Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks (Geneva: WIPO, 2000) recommends that the following factors be used to determine whether a mark is well known: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use or promotion of the mark; the value of the mark; and the record of successful enforcement of the mark.
5. What is the difference between a famous mark and a well-known mark?
Some jurisdictions treat famous and well-known marks as synonymous. Most jurisdictions, however, distinguish between famous marks and well-known marks. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. Often a famous mark needs to be registered in at least its home country for protection, whereas well-known marks usually are protected without the need for any registration. On the other hand, well-known marks often are protected only for goods and services related to those with which they are already associated, whereas famous marks may be protected from unauthorized use on non-competing goods and services.
6. What is the difference between protection of famous marks versus well-known marks?
Well-known marks are protected by various international treaties. For example, the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) require member countries to protect a well-known mark even if the mark is not registered or used in that country. Protection for well-known, unregistered marks under the Paris Convention is usually limited to goods and services that are identical or similar to those goods or services with which the trademark is associated and in situations where use is likely to cause confusion. Under the TRIPS Agreement, protection may be extended to different goods or services if the use suggests a connection to the owner of a well-known registered mark and the owner is likely to be damaged by such use. However, enforcement under these treaties may not be uniform in all jurisdictions. Thus, if a mark is not used in a particular jurisdiction but its owner can establish that the mark is famous or well known elsewhere in the world, the owner often can prevent a third party from using or registering the mark in that particular jurisdiction.
Additional INTA Resources
Topic Portal: Famous Marks/Well-Known Marks
Famous and Well-Known Marks: An International Analysis
Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks