Famous and Well-Known Marks
1. What is a famous mark?
Famous marks are those that enjoy a high degree of consumer recognition. However, few trademarks enjoy the status of “fame.” Examples of marks held to be famous in certain jurisdictions include 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 an infringement proceeding or administrative challenge. Evidence relevant to the fame of a trademark may include sales and revenue figures, geographical scope of use, channels of trade, distinctiveness, registrations in home and other countries, past enforcement efforts, consumer recognition and the existence of similar marks owned by third parties.
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 of a confusingly similar mark will dilute the distinctiveness of the famous mark.
For example, the United States recognizes a federal cause of action for dilution of a famous mark. In this context, dilution means the lessening of the capacity of a mark to identify and distinguish goods or services, or a tarnishing of the mark. Dilution is applicable regardless of whether the parties are competitors or whether there is any likelihood of confusion. In contrast, protection for a non-famous mark requires a finding of likelihood of confusion. Thus, while it takes additional effort to prove that a mark is famous, such designation can afford a famous mark with a broader scope of protection than a non-famous mark.
4. What is the difference between a famous and a well-known mark?
Some jurisdictions treat famous and well-known marks as synonymous. Most jurisdictions, however, distinguish between famous and well-known marks. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. A famous mark often needs to be registered in at least its home country for protection, whereas well-known marks are usually protected without the need for any registration. On the other hand, well-known marks are often protected only for goods and services related to those with which it is already associated, whereas famous marks may be protected from unauthorized use on non-competing goods and services. Thus, it is generally more difficult to prove that a mark is famous as opposed to well-known.
5. Is there any international protection for 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
(the “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 for which the trademark is known 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, if the owner is likely to be damaged by such use. However, the implementation of protection 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 can often prevent a third party from using or registering the mark in the particular jurisdiction. Generally, evidence such as certificates of registration, sales and advertising figures, third-party recognition or awards, and advertising materials are needed to prove fame. Findings of fame in other jurisdictions can also be persuasive.
6. 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 report entitled Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks
recommends the following factors 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.
Additional INTA Resources
Topic Portal: Famous Marks/Well-known Marks
Famous and Well-Known Marks - An International Analysis