Survey Finds Outdated Protection of Well-Known Marks

Published: January 19, 2022

Article prepared by the Article 6bis Task Force led by Karla Hughes (Allen & Overy, United Kingdom)

Since it was incorporated into the Paris Convention in 1925, Article 6bis has reflected the need to prevent the registration and/or use of a trademark confusingly similar to one already well known in a jurisdiction, even where that mark is not yet protected through registration. Thus began the protection of well-known marks (WKMs). This elevated level of protection was necessary in an ever-expanding global world to (1) protect consumers against confusion likely to arise from use of a conflicting mark; and (2) protect trademark owners against unfair commercial practices.

But does Article 6bis still meet its objectives? Has it stood the test of time? To find out, INTA’s Famous and Well-Known Marks Committee surveyed practitioners from 77 jurisdictions between 2018 and 2021. Its findings are bleak: WKM protection has fallen far behind and lacks harmonization, putting brand owners and consumers at risk.

Today’s systems of global commerce and information exchange have evolved far beyond what was imagined when WKM protection was first introduced and subsequently amended in 1934 and 1958. Businesses are, for example, finding new ways to advertise at little to no cost, selling products without a physical local market presence, and utilizing other channels to reach consumers both locally and globally.

Consumers in one market can easily learn of, and even purchase, a foreign brand well before its trademark is registered or “used” in that market, but lack of registration or use may prevent WKM recognition. What constitutes a WKM, and the evidence that can prove this status, varies significantly across legal systems, creating obstacles to protecting a mark from one jurisdiction to the next. Limitations to cross-class protection of WKMs open the door for confusingly similar registrations, including those made in bad faith. Consumers are being taken advantage of by criminals and other bad-faith actors, and brands, large and small, are left struggling to protect themselves.

In nearly every jurisdiction surveyed, a WKM can be protected against a confusingly similar trademark (hereinafter referred to as a “conflicting mark”), although the manner of protection is inconsistent. Most jurisdictions allow a trademark owner to challenge a conflicting mark, either through an opposition or an invalidation/cancellation. However, only 30 of the 77 jurisdictions, or less than 40 percent, grant their trademark offices authority to reject, ex officio, an application for a conflicting mark. This puts a significant burden on legitimate trademark owners and gives criminals the advantage.

Most jurisdictions surveyed—54 of 77—can grant WKM status based solely on a mark’s reputation in the domestic market (that is, without consideration of global notoriety). However, according to survey respondents, only 19 jurisdictions will grant a WKM designation based on foreign reputation, meaning that in 58 jurisdictions, a mark must achieve notoriety within that local jurisdiction before it can be recognized as a WKM. This significantly limits the effectiveness of WKM protection in today’s fast-paced, globally connected marketplace.

Furthermore, when considered in combination with the often-imposed requirement that a mark be used domestically to qualify for WKM status (a requirement in at least 30 jurisdictions), one can easily understand the complication and weakness introduced by this lack of comprehensive and consistent coverage. This is a particularly troubling result in light of the near consensus at the Lisbon Conference in 1958 that domestic use should not be required to enjoy WKM protection (25 of 27 countries supported a proposal that would have clarified domestic use was not necessary for WKM protection).

Respondents further reported that 50 jurisdictions clearly provide cross-class protection to WKMs, leaving WKMs exposed in the remaining 27 surveyed jurisdictions. Some of these 27 jurisdictions do extend cross-class protection to “famous marks,” an elevated designation often more difficult to obtain.

Finally, many jurisdictions have yet to adopt the analytical framework outlined in the World Intellectual Property Organization’s “Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks.” The Joint Recommendation, adopted in 1999, provides an illustrative set of factors for competent authorities in member states of the Paris Union to consider whether a mark is well known. Of particular importance, however, is the explicit recognition within the Joint Recommendation that the enumerated factors are illustrative and should not serve as “pre-conditions” for concluding a mark is well known; indeed, as stated, in some “cases none of the factors may be relevant [to determining whether a mark is well known], and the decision may be based on additional factors that are not listed … above.”

Survey respondents in 20 jurisdictions reported that the authorities do not take into consideration the factors in the Joint Recommendation when determining whether a mark is well known. It is unclear whether the 57 jurisdictions that do take into account these factors have likewise incorporated, either in law or in practice, the explicit flexibility enshrined in the Joint Recommendation or apply that framework rigidly.

Considering each of the above areas in isolation, one could see that the legal framework for protecting WKMs lacks harmonization and is outdated, posing challenges for brand owners. To be blunt, the WKM system has fallen behind. Stepping back and considering the above collectively, a concerning picture emerges of how vulnerable trademark owners and consumers have become.

In the 2022‒2023 Committee Term, the Famous and Well-Known Marks Committee will build upon the efforts undertaken over the last terms and work within INTA to position the Association as an effective advocate for change on this issue.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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