Protection of trademarks

Table of Contents


Chapter 1. International Regime for the Protection of well known Trademarks

1.1 Protection of well known trade marks under Paris Convention

.2 Protection of well known trademarks under TRIPS

.3 WIPO Joint Recommendation for well known trademarks

Chapter 2. Protection of well known trademarks in Italy3. Protection of well known trademarks in Pakistan4. Protection of well known trademarks in Uzbekistan5. A comparative analysis

protection trademark brand

Introduction

known international trademarks such as Coca-Cola, Microsoft, IBM and Google surpass the boundary of marks known only in single countries. It is now generally accepted that these well-known marks should be given protection against later registration by third parties - although laws to offer this protection are still being developed. The definition and protection of well-known trademarks is still a grey area internationally. Despite general recognition that protection should be given to well-known marks, the national laws implementing the Paris Convention Art 6 Bis at present give variable protection depending upon jurisdiction.known trademarks have been a legal concept that requires interpretation by the authorities of the country in which protection is sought. Its protective scope depends on the authorities objective of protection of well-known trademarks. Mass media, telecommunications, travels and advertising promotion make people become familiar with the trademarks in other countries. Especially the extensive, skillful and modern advertising promotion can bring the high reputation to the owners. The effects of well-known trademarks extend to unrelated field in comparison with the original goods or services the trademarks are used. However, the trademark piracy and unfair use affect the owner of well-known trademark to expand their business activities under those marks in other jurisdiction. For the sake of the protection of consumers interests and trademark owners reputation, the enhanced protection of well-known trademarks has become the international trend.

Some trade marks are so well known that their fame transcends the bounds of normal trademark law. A "strong" and famous brand may give unrelated firms incentives to choose a free riding strategy to exploit the full potential of the brand: a small producer of skis might, for example, be interested in using the FERRARI brand for the launch of a new product line. Free riding may, in turn, generate negative spillover effects that may derive from a free riding strategy on a famous trademark. In reality, the defense of the extended protection of "strong" trademarks may be to a great extent based on the likelihood that free riding practices dilute the promotional value of a trademark. The rationale behind the extension of protection to include principles of antidilution and prohibitions against free riding has been clear to both courts and commentators from the very beginning. When a trademark may be perceived as "strong" because it possesses a distinctive character or is "famous," then its value is endangered by unauthorized uses by a non-related third party; this is true even though consumers may not be misled. Rather than aim merely to protect against confusion as to the origin of goods, these extended protections are intended to avoid dilution of the promotional value of trademarks and the misappropriation of the capital of publicity invested in trademarks. As a result, protections are now afforded to trademarks where they formerly might not have been. The trademark ROLLS-ROYCE can now be protected, for example, in most jurisdictions against its use as sign for a pub even if no consumer would be misled into believing that the trademark owner had branched off into pub franchises or that there is an association with or sponsorship of the pub by the luxury car manufacturer. For a finding of infringement, confusion as to the origin of goods is no longer required. It is sufficient that consumers establish some sort of link between the junior sign and the senior one, and such a link may be established even if the goods are comparatively remote., even though a trademark has acquired the position of a globally well known trademark it cannot be said that their goods or services are actually supplied to the market in every country and in addition, this also does not mean that these trademarks are registered in every country throughout the world. Therefore, in the case such a trademark happens to be imitated or pirated in a country in which it is not registered or used yet, namely when a trademark identical or similar to such a well-known or famous trademark is applied for registration or begun to be used by an unrelated third party, the Trademark Office or Court of that country is confronted with complex legal issues in order to deal with this situation. Moreover in the case a third party applies for registration of this type of bothersome trademark under his own name or commences to use that trademark in respect of the goods or services that are quite remote from the goods or services on which the well-known or famous trademark is used, the Trademark Office or Court of that country encounters even more complex legal issues.


Chapter 1. International Regime for the Protection of Well-known Trademarks


.1 Protection of Well-known Trademarks under Paris Convention

universal body of law on well-known marks finds its roots in the 1925 addition of Article 6bis to the Paris Convention for the Protection of Industrial Property (hereinafter "Paris Convention"). Article 6bis states that partecipating countries agree to prohibit use of with the mark of someone esle and used on identical or similar goods.Article was introduced into the Convention by the Revision Conference of The Hague in 1925. It was somewhat modified at two subsequent Revision Conferences, held in London in 1934 and in Lisbon in 1958, but it still retains its original number. At the latter Conference, the Article was very thoroughly discussed and its application, which formerly concerned only the refusal or cancellation of the registration of a mark conflicting with a mark which is well known in the country concerned, was then extended to a prohibition of the use of the mark first mentioned.many years international trade mark law (as opposed to national law) concentrated on the protection that was granted to trade marks through registration. A frequent theme in the discussion of international trade mark law in the first part of the twentieth century was the extent to which rights should be granted, first, to unregistered marks and, secondly, to marks used on dissimilar goods or services. Hence, Article 6bis was originally designed to address the concept that owners of marks which were widely known in the marketplace but not registered needed some measures of protection against later registrations of the same mark by oythers. This was deemed to be particularly important in jurisdictions where the rights to a trade mark flow principally from registration rather than from mere use. However, the concentration on registration is no longer paramount ad in some legislations the distinction between the rights which derive from registration and those from mere use is blurred, most notably in the Regulation on the European Community Trade Mark, in which registration and user rights are both recognised.conceived in 1925, Article 6bis protected well-known marks only against the registration of identical or similar marks for identical or similar goods by an unauthorised third party. In 1958, at the Lisbon Revision Conference, when the subject of well-known marks was again very thoroughly discussed, it was agreed that the Article should be extended to protect well-known marks also against the unauthorised use of identical or similar marks. But, unfortunately, there was no agreement on two other proposals that were put forward, namely that the Article should be extended to include a provision for the well-known mark not to have actually been used in the country where the identical or similar mark had been applied for; and that the Article should be extended both to services as well as to dissimilar goods.will be seen from the text above, the Article permits the owner of a mark, either in person or through the relevant authority to resist, for a period of five years, the deposit, the registration, or the use, by a third party, for the same or similar goods, of a mark which reproduces, translates, or is an imitation liable to create confusion with his mark if it is well known but not registered.the 1958 Lisbon Conference, an attempt at clarification was made by including in Article 6bis the statement in sub-paragraph (1) that responsibility for deciding the well-known status of a mark lay with the competent authorities in any country applying its effects. Perhaps our predecessors thought that the meening of "well-known" was beyond argument, but I cannot think there would be all this discussion, and all that litigation, if the matter was not open to question. But with so many countries now having a provision relating to Article 6bis in their laws, understandably there has been a tendency for the Article to be given different interpretations by the national offices and the courts in different countries.1925 many of the over 150 countries that are members of the Paris Union have sought to introduce Article 6bis into their trade mark laws, but without explaining precisely what is meant by the phrase "well-known". A typical approach towards Article 6bis is that of the European Community Trade Mark Regulation which provides, in Article 8(2)(c), that one of the earlier rights which may prevent the registration of a Community trademark is any mark which is well-known in one of the Member States of the E.U. "in the sense in which the words well known are used in Article 6bis". Interestingly, the Regulation creates another sort of mark, one which has a reputation, and this can be utilised by its owner to prevent the registration of a later mark also for dissimilar goods or services. Most commentators are agreed that this mark referred to Article 8, and this has now been confirmed by the European Court of Justice in Luxembourg in a case involving the trade mark CHEVY (Case C-375/97 General Motors Corporation v. Yplon S.A.).6bis of the Paris Convention reads as follows:

(1) The countries of the Union undertake (a), ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark (b) which constitutes a reproduction, an imitation, or a translation, liable to create confusion (c), of a mark (d) considered by the competent authority of the country of registration or use to be well known (e) in that country as being already the mark of a person entitled to the benefits of this Convention (f) and used for identical or similar goods (g). These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark (h). The countries of the Union may provide for a period within which the prohibition of use must be requested (i).

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith (j).

(a) One of the questions which arises with respect to this Article is whether it may be considered "self-executing" - in countries which admit such possibility - with the result that interested parties may directly claim its application by the administrative or judicial authorities of the country concerned. This question gives rise to the following observations.

On the one hand, in stipulating that "the countries of the Union undertake...", the Article is drafted differently from many other Articles of the Convention, which direcly refer to rights or obligations of interested parties (for example, Articles 2, 3, 4, 4ter, 5bis, 5ter, 5quater, 6, 6septies, 8), or directly regulate a situation at issue (for example, Articles 4bis, 5 A(1), (3) to (5), B, C, D, 6quater, 6quinquies, 7). Nor, on the other hand, does Article 6bis refer only to an undertaking by the countries of the Union to legislate on a particolar matter, as in the case, for example, with Article 10ter and 11. Therefore, and although the Article leaves certain liberties to national legislations (paragraph (1): "if their legislation so permits"; paragraph (2): "a period of at least five years... shall be allowed..."; "The countries of the Union may provide for a period..."), it cannot be deemed only to oblige the Member States to legislate on the subject concerned, but may be considered to contain an undertaking also on behalf of the administrative and judicial authorities of these States, which - if compatible with their constitutional systems - must then give effect to the provisions of the Article at the request of interested parties.

(b) The provision under consideration refers only to trademarks and not to service marks. The Member States are therefore not obliged to apply it to service marks, but are free to do so in analogous sutiations.

(c) The purpose of the provision under consideration is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter well-known mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark. This exceptional protection of a well-known mark has been deemed to be justified because the registration or use of a confusingly similar mark will in most cases amount to an act of unfair competition, and may also be considered prejudicial to the interests of those who will be misled. Whether a trademark will be liable to create confusion with a well-known mark will be determined by the competent authority of the country concerned, and in so doing the said authority will have to consider the question from the viewpoint of the consumers of the goods to which the marks are applied. The provision specifies that such confusion may occur in cases of reproduction, imitation or translation of the well-known mark, or even if only an essential part of a mark constitutes a reproduction or confusing imitation of the well-known mark.

(d) The word "mark" in itself would not exclude the extension of the envisaged protection also to well-known service marks, but the words "used for identical or similar goods" make it clear that only well-known trademarks are covered by the provision. The Member States are, however, free to apply the same rules also to service marks in analogous circumstances.

(e) A trademark may be well known in a country before its registration there and, in view of the possible repercussions of publicity in other countries, even before it is used in such country. Whether a trademark is well known in a country will be determined by its competent administrative or judicial authorities. The Revision Conference of Lisbon in 1958 rejected a proposal according to which use of a well-known mark in the country in which its protection is claimed would not be necessary for such protection. This means that a Member State is not obliged to protect well-known trademarks which have not beeb used on its territory, but it will be free to do so. In view of the vote taken at the Lisbon Conference, the great majority of the Member States will probably adopt this attitude.

(f) A well-known trademark will, naturally, only be protected by the Article under consideration if it belongs to a person entitled to the benefits of the Convention, that is, to a natural or legal person who may claim the application of the Convention according to Articles 2 or 3. The provision under examination, however, goes further than that when it states that, in order to be protected, the mark must be considered well known in the country concerned "as being already the mark of" such person. The history of the provision shows, however, that it will be sufficient if the mark concerned is well known in commerce in the country concerned as a mark belonging to a certain enterprice, without its being necessary that it also be known that such enterprice is entitled to the benefits of the Convention. Nor is it necessary - and it is therefore not necessary to prove - that the person who has applied for or obtained a conflicting registration or who uses a conflicting mark possessed such knowledge.

(g) The protection of well-known marks, according to the provisions under examination, applies only with respect to other marks filed, registered or used for identical or similar goods. Whether this condition is fulfilled will be determined by the administrative or judicial authorities of the country in which protection is claimed.

(h) In order to give the owner of a well-known trademark sufficient time to react to the registration of a conflicting mark, this provision specifies that he must have a period of at least five years during which he may request the cancellation of such registration. This minimum period was three years until the Revision Conference of Lisbon in 1958. The words "at least" indicate that the fixation of the period is left, on condition thai it may not be shorter that five yaers, to the national legislation or to decisions of the administrative or judicial authorities of the Member States.

(i)The Member States are free also to provide for a period within which the prohibition of use of the conflicting mark must be requested, but no minimum is indicated for this period.

(j) The administrative or judicial authorities of the country in which the protection of a well-known mark is requested will determine whether the conflicting mark is registered or used in bad faith, in which case no time limit for action will prevail. Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used.

Thus, many features of the protection provided for and many situations not expressly contemplated in Article 6bis may be noted:

1. Nothing is said in the Convention regarding the protection of service marks, nor about the possibility of relying upon Article 6bis to take action against an unauthorized third party that adopts the well-known trademark in relation to different goods.protection in Article 6bis extends only to trademarks (marks in respect of goods), and does not extend to service marks (used in respect of services). By virue of Article 16 of Trademark Law Traty (TLT, 1994, 25 States), however, the provisions of the Paris Convention relating to trademarks were extended to service marks.

2. The protection extends to registration or use in respect of identical or similar goods (in accordance with the principle, known as the "principle of speciality", under which protection for a trademark extends only to the same or similar goods as are covered by the registration or use of the trademark);may be said that the provision in Article 6bis addressing the protection of well-known trademarks is a provision of exception to the general rule that conditions trademarks protection for use or registration. The owner of a trademark which is not used or registered in the country where protection is sought by a third party may still obtain protection for the mark, provided the requirements of Article 6bis (1) are met, namely that the mark is well-known in the country where protection is sought.shows that trademark owners who have failed to register a trademark in a country where protection is granted only by local registration - as is the case in most countries of the world - often try to rely on Article 6bis in an attempt to remedy their failure to registrer. Clearly this was not the intention of the drafters of the Article. Whether as a provision of exception or as a different source of rights, the fact is that only those well-known but unregistered trademarks in the country where protection is sought have access to the privileged protection afforded by Article 6bis., whether as a provision of exception or a different source of rights, the party that may benefit from the privileged protection afforded to well-known trademarks by Article 6bis may not benefit from all the rights given to registrants under national laws, but only those specifically contemplated in the Convention, namely:

·the right to have local authorities refuse registration to an unauthorized third party;

·the right to move for the cancellation of then mark registered by an unauthorized third party;

·the right to move for the prohibition of use of the mark by an unauthorized third party.is provided, in all cases, that the legal proceedings instituded by the owner of the well-known trademark attack the unauthorized use or registration by a third party in relation to identical or similar goods.term "well-known trademark" as used in Article 6bis extends to situations involing:

·a reproduction of the mark liable to create confusion;

·an imitation of the mark liable to create confusaion;

·a translation of the mark liable to create confusion.text of Article 6bis makes it clear that the protection afforded by its first paragraph extends to:

·situations where the essential part of the mark constututes an unauthorized reproductuion "of any such well-known mark" liable to create confusion;

·situations where the essential part of the mark constitutes an unauthorized imitation "of any such well-known mark" liable to create confusion.that there are reasons favouring the notion that Article 6bis is a provision of exception that should be interpreted in a restrictive way, practise, cases, law and the contributions of legal commentators have consistently shown that there is substantial room for argument, discussion, interpretation and speculation in the text of this provision.

3. Article 6bis is silent on what constitutes a well-known mark. The appreciation of whether a mark is well-known is left to the "competent authority of the country where the illegitimate registration or use occurs".6bis does not define a well-known mark, it only enjoins the Member States of the Paris Union for the Protection of Industrial Property not to grant protection to any mark which the relevant authorities consider to be in conflict with a well-known mark belonging to someone else. Unfortunately, the Article fails to define what exactly one should understand by the term "well-known"; it does not extend this protection to services or to goods that are not similar, and it is silent on the question of whether the well-known marks should have been used in the country where protection is being sought.the first recognition of the concept of a well-known mark is embodied in Article 6bis, the Paris Convention does not provide any definitions or criteria for establishing which trademarks qualify as well-known marks.better view seems to be one that focuses on the universal term provided in Article 6bis of the Paris Convention of a well-known mark: "mark notoirement connue", "notorisch bekannte Marke", "marchio notoriamente conosciuto" o "marca notoriamente conocida".

4. Article 6bis is of major importance for cases where a trademark in a given country does not - or does not yet - enjoy protection on the basis of a registration in that country or on the basis of an international or regional registration having effect in that country.does not mean that the application of Article 6bis is excluded if the trademark is registered in the country where the protection is sought. However, protection according to Article 6bis does not go beyond what normally is conferred by registration of a trademark, namely, protection against the registration or use of the same or a similar sign for the same or similar goods. Thus, if the trademark is normally registered in the country, there is no need to invoke Article 6bis.

5. As to the activities that may be attacked by the owner of a well-known trademark, the Conventon is not explicit with respect to situations where an unauthorized third party adopts the well-known mark as a part of a corporate name.all these situations, case law shows different ways to construe Article 6bis. In some caees, local authorities have interpreted it in strict terms, whilst others have been more flexible, affording protection to owners in circumstances not expressly contemplated in Article 6bis. Case law also provides examples of owners obtaining protection under a combination of Article 6bis and Article 10bis, governing unfair competition, or under the provisions of Article 10bis alone. Finally, Article 6bis does not address the issue of the criteria that should be used in the determination of whether or not a trademark is well-known.appears that in drafting provisions of new international treaties, legislators did not merely reproduce Article 6bis but have indeed incorporated these situations. It is arguable, therefore, that the text of Article 6bis is due for an update.

6. Article 6bis of the Paris Convention provides protection for marks which are well-known in the country in which protection is sought. Article 6bis is therefore of particolar importance in cases where a well-known mark is not registered in a given country, so that protection must be predicated on the fact that the mark is well-known.to the weight of authority, a mark must be well-known in the country in which protection is sought in order for it to enjoy the benefit of Article 6bis of the Paris Convention. It is not sufficient that the mark be well-known only in the country of origin or elsewhere; it must in fact also be well-known in the country where the protection is sought.a mark has been recognised as being well-known by applying the relevant criteria and parameters, Article 6bis of the Paris Convention provides for protection as follows. The owner of a well-known mark is entitled to request that with respect to a mark which is "liable to create confusion" with the well-known mark, an application be refused or a registraton be canceled (at the registry) or the use be prohibited (by injunctive relief in court). Protection is granted against the "reproduction" or "imitation" of the well-known mark with respect to "identical or similar goods".countries have incorporated these protection standards into national law. Accordingly, where applicable, the likelihood-of-confusion-standard will be aplicable within the framework of local law in order to determine whether an infringement of a well-known mark is present.

7. Although "famous" is not a word employed in the Paris Convention, it is a term which recurs in discussions relating to the extent of protection which the law should accord to trade marks which are merely known, well known or truly famous.terminology of "famous" and "well-known" marks is unhelpfully imprecise.6bis of the Paris Convention sought to protect "well-known"marks against the use by others of those marks on identical or similar goods. In contrast, the original dilution doctrine propounded by Frank Schechter sought to protect trade marks against the use by others of those marks on non-related goods.do the two major pieces of European trade mark law implement Article 6bis of the Paris Convention? Although the final recital to the Preamble of Directive 89/104 confirms that the Directives provisions are "entirely consistent" with the Paris Convention, its English text contains scarcely a mention of the words "well known" in relation to trade marks. The registration of anothers "well-known" mark is a ground upon which a trade mark application can be refused, or registration invalidated, but the rights conferred against infringers are egalitarian in their nature and treat all used trade marks in a similar manner, protecting them by virtue of their reputation even if they are not well known.approach taken by the CTM Regulation corresponds to that adopted by Directive 89/104. The registration of anothers "well-known" mark is a ground of refusal of a trade mark application, or registration invalidated. Once again, the rights conferred against infringers treat all used trade marks in a similar manner, regardless of whether they are well known. This relatively straightforward analysis has been thrown into small uncertainty by the ECJ in Davidoff v. Gofkid when it chose, in the English version of its decision, to refer to the protection granted under Directive 89/104 to trade marks which have "a reputation in the Member State" as being the protection of "well-known marks". Does this mean that "marks with a reputation" and "well-known marks" are now synonymous? The ECJ itself in General Motors v. Yplon noted that the marks "having a reputation" in the English were "well-known" marks in the French, German, Italian and Spanish versions of Directive 89/104 and considered this no more than a "nuance which does not entail any great contradiction". Regardless of the terminology employed, a trade mark must be known to a particular extent before it is entitled to receive the protection accorded to such a mark. This extent is reached where the mark is known by a significant part of the public concerned with the goods sold under that trade mark.final point should be mentioned. Directive 89/104 states that, for the purpose of refusing a national trade mark application or invaliditing a subsequent grant, the words "well known" mean well known in a Member State, in the sense in which the words "well-known" are used in Article 6bis of the Paris Convention.theory, this qualification, which is not found in those provisions in Directive 89/104 that refer to marks being (in English) marks with a reputation and (in French, German, Italian and Spanish) well-known marks, suggest that it is somehow for the Paris Union rather than the ECJ to deternmine what "well known" means for Article 6bis purposes. In practice, the Paris Union countries have so far failed to come up with a consensus or undestanding as to what "well known" means, though they may one day do so, and not all European jurisdictions however take their lead from the Directive.


1.2 Well Known Trademarks under Trips Agreement

on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), entered into force on January 1, 1995, an annex to the Marrakesh Agreement that established the World Trade Organization, perhaps is the most important international agreement promoting the harmonization of Intellectual Property Rights in member countries. TRIPS Agreement establishes the basic principles and minimum standards concerning the availability, scope, and use of trade-related international property rights; civil and criminal enforcement obligations including border measures; procedural requirements regarding governing the administrative acquisition and maintenance of intellectual property rights; dispute settlement for the resolution of any disputes between WTO member countries over the implementation of the TRIPS Agreement.TRIPS Agreement requires its member countries to provide protection to well-Known trademarks. Article 2(1) of the TRIPS Agreement, which enunciates as follows,

"In respect of Parts II, III and IV of this Agreement, Members shall comply with Articles 1 through 12, and Article 19, of the Paris Convention (1967)"member countries to provide protection to well-known trademarks as per Article 6bis of the Paris Convention under which member countries are required, ex officio or on the request of an interested party, to refuse/cancel registration and prohibit use of a trademark which is a reproduction/imitation/translation of a trademark considered well- known by competent authorities of the country if used for identical/similar goods and is liable to cause confusion.Agreement not only incorporates Article 6bis of the Paris Convention but also has extended the scope of protection of well-known trademarks in the member countries. Article 16 of the TRIPS Agreement enunciates as follows:

"2. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use".16(2) of the TRIPS Agreement requires member countries that Article 6bis of the Paris Convention-related to well-known trademarks should apply to services as well in addition to the goods.Agreement does not provide any definition of well-known trademark. Also, only a competent authority of a member country can determine whether a trademark is well known or not in the country. However, Article 16(2) of the TRIPS Agreement requires member countries to take knowledge of the trademark in the relevant sector of the public, even if the knowledge is obtained as a result of the promotion of the trademark, as an important factor in determining whether a trademark is well known or not in the country.16(3) of the TRIPS Agreement extends protection of the well-known trademark for dissimilar goods/services in certain conditions which are as follows:

1.well-known trademark is registered in the member country;

2.use of the trademark may cause likelihood of association with the well-known trademark;

.interest of the owner of the registered well known trademark is likely to be damaged by such use.16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs Agreement), to some extent, generalized anti-dilution prohibitions. The concept of trademark dilution is inherently complex. Because [dilution] is largely a theoretical and almost ephemeral concept, the legal theory of "dilution" is exceedingly difficult to explain and understand. Misunderstanding is rampant. one of the most controversial and perhaps most elusive topics in intellectual property law, trademark dilution law has undergone a significant transformation over the past decade. For nearly all of the 20th century, to the extent that trademark dilution was even recognized as a cause of action, it was only recognized as such under state statutory law, and dilution law was seen as protecting the commercial value or "selling power" of a mark by prohibiting uses of a mark that were deemed to dilute the distinctiveness of the mark or to tarnish the associations it evoked. A cause of action for dilution was first recognized under US statutory law in the FTDA which was later fine tuned with the adoption of the TDRA.dilution to occur, the relevant public must make some connection or association between the mark and both parties. But that connection or association is not the kind of mental link between the parties that triggers the classic likelihood of confusion test . Rather, the assumption is that the relevant public sees the junior users use, and intuitively knows, because of the context of the junior users use, that there is no connection between the owners of the respective marks. According to the doctrine of trademark dilution, famous trademarks should be granted protection even in the absence of direct competition between the senior and the junior users and in the absence of a risk of confusion as to the origin of the marked goods. A mark may be diluted either by "tarnishment" or "blurring." Tarnishment occurs when someone uses a mark on inferior or unwholesome goods or services . Tarnishment involves a newcomers use of a mark in acontext that risks consumer aversion to the famous brand. A classic example of tarnishment under FDTA case law involved the use of CANDYLAND.COM for a sexually explicit website, which understandably evoked negative associations with the famous CNDYLAND brand of childrens board games. "Blurring" involves a risk of "clutter" in the minds of consumer on account of the newcomers use of a mark that is similar to a famous brand. Dilution by blurring consists of a single mark identified by consumers with two different sources. One mark: two sources. One example of blurring under the FTDA case law involved the use of HERBROZAC as a mark for a natural alternative to the PROZAC brand pharmaceutical.the TRIPS Agreement provides minimum standards for the protection of well-known trademarks which each member country is required to provide in its relevant national legislation, however, member countries are free to provide higher standards of protection in their legislation if they wish. TRIPS Agreement neither provides any definition of a well-known trademark nor any criteria for determining whether a trademark is well-known or not in a member country and it has been left for the member states to determine.


.3 WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks

the fact that the TRIPS agreement has introduced some new elements as well as clarity into the notion and regime of protection of well-known trademarks, there still have been a lot of unanswered questions left as to the criteria of recognition and scope of protection of well-known marks. As a reply to this demand in 1995 World Intellectual Property Organization (WIPO) started working on what is now known as Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks .Preface to this document clearly states that the "Recommendation is the first implementation of WIPOs policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles". Joint Recommendation is not legally binding, and therefore is a flexible instrument of international harmonization in the field of trademark law. It has a profound significance for countries, which seek to comply with their international obligations and are on the stage of development of their national legislation concerning protection of well-known marks. But for the countries that already have an elaborated legislation and judicial practice in this field, the Joint Recommendation may at times be seen as controversial.Joint Recommendation addresses the issues that have stayed unclear since the introduction of the Article 6bis of the Paris Convention, namely i) the determination of a well-known mark in a Member State, by offering guidelines for assessment of a mark for being well-known; ii) the scope of protection of well-known marks, by defining marks, business identifiers and domain names conflicting with a mark deemed well-known.2(1)(b) of the Joint Recommendation proposes the following non-exhaustive list of types of information that must be taken into account by competent authority when determining whether a mark is well-known in a Member State:

(1) the degree of knowledge or recognition of the mark in a relevant sector of the public;

(2) the duration, extent and geographical area of any use of the mark;

(3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(4) the duration and the geographical area of any registrations, and/ or any applications of the mark, to the extent that they reflect use or recognition of the mark;

(5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;

(6) the value associated with the mark.

The approach of true flexibility in application of Joint Recommendation is reflected in Art. 2(1)(c), which states that

"the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in subparagraph (b)".. 2(3) also provides for the list of "non-requirements" for well-known marks. It is not required:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State;

(ii) that the mark is well known in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State.

Thus, according to this article, 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.to the question of the scope of protection for a well-known mark against conflicting marks, business identifiers and domain names, the Joint Recommendation establishes that it shall be at least from the time when the mark becomes well known in the Member State, and that bad faith should be considered in balancing the interests of the parties involved when assessing possible infringement of well-known marks.also stipulates 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.conclusion, it must be said that although the Joint Recommendation is a "soft" law document, and has some controversial provisions, it is a document reflecting a very high level of international consensus on harmonization of the national substantive law on protection of well-known marks, and is widely recognized and supported as one of the basic documents in this field.


Chapter 2. Protection of well known trademarks in Italy

12(1)(b) and (g) of the Italian Industrial Property Code (D.Lgs. February 10, 2005, n. 30) incorporate Article 6bis of the Paris Convention, as interpreted and expanded in its scope of application by Articles 16(2) and (3) of the TRIPS Agreement.Article 12(1)(b) and (f), a mark is not new and, therefore, inelegible for registration, if it is identical with or similar to a mark that is "well-known within the meaning of Article 6bis of the Paris Convention" (in accordance with Article 16(2) of the TRIPS Agreement), in the following cases:

(i) when the later mark is registered for identical or similar goods or services, if "by virtue of the identity or similarity of the signs and the identity or similarity of the goods or services, a risk of confusion may arise on the part of the public, which may also consist of a risk of association of the two signs"; and

(ii) when the later mark is registered for dissimilar goods or services, irrespective of whether a risk of confusion or association may arise on the part of the public, on condition that use of the later mark "without due cause" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known mark.qualify as "well-known wihthin the meaning of Article 6bis" a mark needs to be well-known in Italy where its reputation will come as a result of its use or promotion in international trade., under Article 17(1)(f), a registered mark that "enjoys a reputation" in Italy constitutes a bar to the valid registration of identical or similar marks when use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark.only provision of the Italian Industrial Property Code that deals with the protection of marks enjoying a reputation is Article 20(1)(c), under which the owner of a registered mark that enjoys a reputation is entitled to prevent unauthorized third parties from using identical or similar signs with respect to dissimilar goods or services, provided that use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distintive character or the repute of the mark.is noteworthy that the Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services. In other words, the Italian Industrial Property Code does not contain any provision that expressly affords protection to unregistered well-known marks within the meaning of Article 6bis of the Paris Convention against the unauthorized use of conflicting signs by third parties as provided by Articles 16(2) and 16(3) of the TRIPS Agreement.is simply because, when dealing with the issue of protection, the Italian Industrial Property Code applies only to registered marks. In practical terms, to prevent the unauthorized use of the conflicting mark, the owner of a well-known mark within the meaning of Article 6bis of the Paris Convention will have only the very light burden of filing an application in Italy before taking action.speaking, if the owner of a well-known mark within the meaning of Article 6bis does not intend to file an application, protection against the unauthorized use of a conflicting mark could be alternatively sought under Article 21(3) of the Italian Industrial Property Code. Under this provision, no one may use a registered trademark after its registration has been declared invalid, when the reason for invalidity involves the unlawfulness of the use of the trademark. According to the most convincing scholarly interpretation of this provision, the above prohibition not only applies with respect to absolute grounds of invalidity, but also when there is a violation of Article 14(1)(c) of the Italian Industrial Property Code (in relation with Article 21(2) of the Italian Industrial Property Code), which prohibits the registration as trademarks of signs when their use would infringe someone elses copyright, industrial property right, or any other exclusive right.any event, it should be remembered that Article 6bis of the Paris Convention and, consequently, Articles 16(2) and 16(3) of he TRIPS Agreement, are automatically applicable in countries that are signatories to these agreements absent a specific, more favourable national provision.additional provisions of interest for the protection of famous trademarks are Articles 8(3) and 19(2) of the Italian Industrial Property Code.8(3) prescribes that, if well-known, personal names, signs used in artistic, literary, scientific, political or sports fields, denominations and acronyms of exhibitions and events, and non-profit bodies and associations, as well as the characteristic emblems thereof, may be registered as trademarks only by those entitled to them, or with their consent. This provision aims at preserving the possibility of exploiting the evocative power of famous names or signs that have not yet been used or registered as trademarks to those who have established their fame.in the case of marks that are well known within the meaning of Article 6bis of the Paris Convention, Article 8(3) grants only the possibility of invalidating marks illegitimately registered. To prevent also the unauthorized use of a conflicting sign, those who have built the fame of these signs will have the burden of registering them as trademarks.19(2) prohibits the registration of a mark filed in bad faith. An important area in which this provision can be invoked is that of marks that are famous abroad but not yet known to Italian consumers. Under these circumstances, in which it is not possible to resort to the protection afforded to marks that are well-known within the meaning of Article 6bis of the Paris Convention, the fact that the mark was well-known in other jurisdictions could play an important role in determining whether the adoption of an identical or similar mark in Italy by a third party was in bad faith and, specifically, was done with the intent of taking unfair advantage of the reputation that would eventually reach our country. Often, the element of bad faith can be inferred by the conduct of the registrant following registration., it has been noted by commentators that European trade mark law makes very little specific provision for the protection of famous trade marks as a separate category of subject matter of legal protection.the implementation of the European Trademark Harmonization Directive a "new" trademark was born in Italy: a trademark is no longer merely an indicator of source; it is also a means of communication, a message bearer, a carrier of goodwill, functions that better reflect the role of trademarks in todays market reality. Well-known trademarks - or better yet, trademarks enjoying a reputation in the words of the Directive - are now recognized as having an intrinsic value, stretching beyond the information they provide to the public with respect to the entrepreneurial origin of the goods and services they distinguish. Although the indication of origin remains the fundamental and primary function of all trademarks, the existence of this additional function has become legally relevant. Thus, trademarks are protected also with respect to this intrinsic value and for which the concept of likelihood of confusion cannot provide appropriate protection.the former Italian Trademark Act, which, as mentioned previously, did not expressly provide for any special protection of famous marks, courts, especially from the late 1970s, tended to hold that the achievement by a mark of a general reputation enabled the broadening of its scope of protection so as to extend also to goods and services not strictly related. "Famous" or "well-known" were only those marks known to the public at large, generally identified as those that:

(i)enjoyed a high degree of recognition: survey evidence, if accurate and trustworthy, was often admissible to prove such recognition;

(ii)were associated with products that were widely distributed and enjoyed great consumer recognition: documentation attesting a significant volume of sales in Italy was generally of great assistance in proving fame;

(iii)had been on the market for a long time;

(iv)were the subject of intense and effective advertising: evidence of extensive advertising, especially on television and/or in national or foreign pubblications circulating in Italy, was always of paramount importance.determining whether a mark was famous or well-known, Italian courts generally adopted a case-by-case approach, considering the overall commercial impression emerging from the totally of the evidence produced.Italian Industrial Property Code currently in force does provide special protection for marks enjoying a reputation. However, it still does not contain any definitions or guidelines to determine when a mark is well known within the Article 6bis of the Paris Convention or enjoys a reputation. In particular, debate arose among Italian scholars as to whether the concept of marks "which enjoy a reputation" set out in Article 1(1)(c) of the last Trademark Act - now Article 20(1)(c) of the Italian Industrial Property Code - is equivalent to that of well-known marks. Some authors assumed that the two categories were coincident. Others maintained that the definition "mark which enjoys a reputation" encompasses not only famous marks, i.e., marks that are known by a very high percentage of the public at large, but also marks that are simply known in the interested circles of trade or industry. This latter interpretation is now the prevailing one as a result of the European Court of Justices decision in the General Motors Corporation v. Yplon case. According to the Courts ruling, a trademark is famous pursuant to Article 5(2) of the Directive and, therefore, is entitled to the broader protection set forth in such provision, when it "enjoys a reputation within the relevant sector of the public for which the particular goods or services it distinguishes are destined". In its decision, the Court of Justice also stated that "the higher the distinctiveness and reputation of the trademark, the easier the ability to demonstrate the existence of an injury to the interest of the owner".above decision is particularly important because it clearly indicates that the function of carriers of goodwill or message bearers is not performed only by exceptionally famous trademarks. Every trademark, as long as it has acquired some consumer recognition in the relevant field of trade or industry, is entitled to be protected against the unathorized use of an identical or similar mark, pursuant to Article 20(1)(c), even in the absence of a likelihood of confusion, when use of the later mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the prior mark.


Chapter 3. Protection of Well-Known Trademarks in Pakistan

became a member of WTO, hence signatory to the Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), in 1995. TRIPS Agreement created an obligation on Pakistan to amend its intellectual property laws and to provide in its national legislation minimum standards of intellectual property rights protection provided in the TRIPS Agreement. Therefore, in order to comply with the TRIPS Pakistan promulgated its new Trademark Law in the year 2001(hereinafter referred to as Ordinance). Article 16(2) and 16(3) of the TRIPS Agreement which deal with the protection of well known trademarks were duly incorporated into the Ordinance, 2001.86(1) of the Ordinance provides that a Trade Mark which is entitled to protection as a well known trademark shall be a mark which is so entitled under the Paris Convention and which is well known in Pakistan as being the mark of a person who:

1.is a national of a Convention Country- a country, other than Pakistan, which is a party to the Paris Convention; or

2.is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention Country.is not necessary that person carries on business, or has a good will, in Pakistan.

1. The Criteria: When is a Mark Well Known?

The Ordinance also set forth criteria for tribunal- "the Registrar or, as the case may be, the High Court or a District Court before which the proceedings concerned are pending" to distinguish well known trademarks from other marks.2 of Section 86 provides that the tribunal shall take into account the following factors as relevant criteria in deciding whether or not a Trade Mark is well known:

1.the amount of Pakistan or worldwide recognition of the Trade Mark;

2.the degree of inherent or acquired distinctiveness of the Trade Mark;

.the Pakistan or worldwide duration of the use and advertising of the Trade Mark;

.the Pakistan or worldwide commercial value attributed to the Trade Mark;

.the Pakistan or worldwide geographical scope of the use and advertising of the Trade Mark;

.the Pakistan or worldwide quality and image that the Trade Mark has acquired; and

.the Pakistan or worldwide exclusivity of use and registration attained by the Trade Mark and the presence or absence of identical or deceptively similar third party Trade Marks validly registered or used in relation to identical or similar goods and services.is more significant is that the section 86(2) of the Ordinance provides that the following should not be required by the tribunal while determining a trademark is well known:

1.registration of the trademark is in Pakistan;

2.actual use in the form of sales of goods/services under the trademark in Pakistan.

However, in addition to the list of factors mentioned above the tribunal may consider any other factor as relevant while determining a trademark is well known or not among relevant public in Pakistan.86(3) of the Ordinance provides that the owner of a well known trademark is entitled to restrain, by injunction, the use in Pakistan of a trademark which or essential part of which is identical/deceptively similar to the well known trademark:

1.in relation to identical/similar goods or services where such use is likely to cause confusion; or

2.where such use causes dilution of the distinctive quality of the well known trademark.

2. Well Known Trademarks and Non-Competing Goods

The most important aspect of well known trademarks is that the protection extends beyond the class of goods/services. The Ordinance provides for this as a special right for well known marks in Section 17 which deals with the "relative grounds of refusal" of a trademark. Section 17(3) of the Ordinance reads:

"A trade mark which- (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark".

Section 18(1)( c) of the Ordinance provides that an earlier trademark means a trademark which was entitled to protection under the Paris Convention as a well known trademark.40 (4) of the Ordinance provides that a person shall infringe a registered trade mark if the person uses in the course of trade mark which- (a) is identical with or deceptively similar to the trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

3. Protection of Unregistered Well Known Trademarks under the Law of Passing Off:

Passing off is a common law <#"justify">"A trade mark shall not be registered if, or to the extent that, its use in Pakistanliable to be prevented-

(a) by virtue of any law, in particular, the law of passing off, protecting an

unregistered trade mark or other mark used in the course of trade".

Section 46 (3) of the Ordinance provides that nothing in the Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof.

Also, Subsection 3 of Section 39 states that without prejudice to the right of the proprietor of a registered Trade Mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the Trade Mark is infringed.

4. Protection of Well Known Trademarks under Unfair Competition

The Trademarks Ordinance, 2001 also provide protection to the well known trademarks under the law of unfair competition. Section 67 of the Ordinance provides that any act of competition contrary to honest business practices in industrial or commercial matters such as fraudulently registering or applying for registration of a trade mark is an act of unfair competition. And an action against unfair competition may be brought before a District Court of competent jurisdiction.14(4) of the Ordinance, which deals with the absolute grounds for refusal of registration, provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith.

However, subsection 4 of Section 86 of the Ordinance provides that the continuation of any bona fide use of a trademark begun before the commencement of the Ordinance shall not be effected by the provisions of this Ordinance.

5. Opposition to Registration of a Trademark by Proprietor of a Well-Known Trademark

Pakistan Trademark Ordinance, 2001 provides an opportunity to the proprietor of a well known trademark to oppose an application for registration of trademark which is identical/deceptively similar to the well known trademark in Pakistan and the use of which is likely to cause dilution/confusion. Section 29 of the Ordinance provides grounds on the basis of which registration of a trademark may be opposed. Section 29(4) reads as follows:

"The registration of trade mark in respect of particular goods or services may be opposed on the grounds that- (a) it is substantially identical with, or deceptively similar to, a well known trade mark to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would cause dilution or would be likely to deceive or cause confusion".

6. Approach of the National Courts

The Pakistani courts have long acknowledged the importance of protecting the rights of IP owners and have extended protection to well-known foreign trademarks far beyond the traditional scope of such protection. Their approach when dealing with issues relating to IP rights has been forward looking.first key judgment in this area was given in 1979 by the Sindh High Court in Societé De Fabrication v Deputy Registrar of Trademarks. In protecting an international trademark the court observed: "The conduct of the respondent in appropriating trademarks of foreign owners is not proper… It is common knowledge that trade in French perfumery is of international character. With the revival of international trade and international publicity, the rights of owners of foreign trademarks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country." This trend was confirmed in Alpha Sewing Machine v Registrar of Trademarks, in which the Supreme Court of Pakistan approved the following observations of the Lahore High Court: "With the proliferation of the means of communication media the names and products of major world-renowned companies are getting the attention of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of internationally renowned companies and their products." This judicial trend was explained by the Sindh High Court in Morphy Richards Ltd v Registrar of Trademarks as follows: "An enactment on trademarks is essentially an international statute, catering to national and international sensibilities… We are living in an information age where the world has become a veritable global village." Globalisation thrives on the honesty of business practices. The judgments delivered by the Pakistani courts on IP rights (particularly in relation to the adoption and use of marks, the marketing of novel products and the use of copyrighted matter) show that the consideration of honest intentions has been pivotal to such judgments. Thus, in Coopers Incorporated v Pakistan General Stores the Supreme Court of Pakistan held that: "although the appellant has not been selling its products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellants trademark because by doing so it is deceiving the public into thinking that its products are the products of the appellant." In the same case the Supreme Court also approved the following findings by the High Court: "Clearly, if the adoption of a trademark by an appellant is proved to be dishonest, no amount of use of the trademark by it can justify registration." In Kabushiki Kaisha Toshiba v Ch Muhammad Altaf the Supreme Court, while refusing a Pakistani applicants registration of the trademark TOSHIBA, held that: "The respondent has shown no reason tenable at law to pick up an invented word of a foreign firm enjoying both inside and outside the country a reputation for electrical goods of various descriptions. It is registered in this country as such. Against this background, the adoption of the same trademark phonetically in respect of electric fans is bound to create a likelihood of confusion and deception to the consumers of such goods. Hence, it is against the public interest to register such a trademark." In another landmark judgment of the Sindh High Court in National Detergents Ltd v Nirma Chemicals Works, in which the foreign companys trademark NIRMA was not being used in Pakistan, it was held that: "The appellants have not alleged that the first respondents had abandoned any intention to use their foreign trademark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed an application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word Nirma is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating the trademark of foreign owners is not proper." In Mars Incorporated v Pakistan Mineral Water Bottling Plant (Private) Limitedthe defendants launched their beverages under the trademark MARS, which is famous worldwide for confectionery. The Sindh High Court at Karachi granted an interim injunction in favor of Mars even though the plaintiffs goods (confectionery products) were different from the defendants goods, and recognized MARS as a well known intern


Chapter 4. Protection of Well-Known Marks in Uzbekistan


Since 1991, when Uzbekistan had to jump from socialist to market economy, there has been a great amount of work done in the field of legislative reforms in all of the branches of law, including intellectual property. As a member of the Paris Union and WIPO, and a country willing to become a member of World Trade Organization (WTO), Uzbekistan nowadays needs to build a mechanism for efficient protection of intellectual property, including the protection of well-known marks.national legislation concerning protection of well-known marks in Uzbekistan at the moment consists only of three documents. They are:

1)Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin", 2001 (hereinafter "The Law");

2)Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009 (hereinafter "The Rules");

)Recommendations on the conduction of surveys among consumers on the issue of recognition of a trademark to be well-known in Uzbekistan (hereinafter "The Recommendations").

The Law

The current edition of the Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin" was adopted in 2001 and was amended twice since that time: in 2002 and 2007. The last time it was amended there were added two articles, the significance of which for the purpose of this chapter is enormous. Those two articles, namely 321 ("A Well-Known Trade Mark") and 322 ("Legal Protection of a Well-Known Trade Mark"), in strive of implementing of the Art. 6bis of the Paris Convention, directly deal with the issues of recognition of well-known marks in Uzbekistan.321 of the Law stipulates the following:

"A trademark protected in the territory of the Republic of Uzbekistan on the basis of its registration, a trademark, protected in the territory of the Republic of Uzbekistan without registration in accordance with the international treaty of the Republic of Uzbekistan, as well as a sign used as a trademark, but having no legal protection in the Republic of Uzbekistan, may be recognized as well-known in the Republic of Uzbekistan on the basis of the application of a legal or a natural person, if such trademarks or signs have on the date specified in the application become widely known among relevant consumers in respect of the goods of that person, as a result of their [trademarks and signs] intensive use.known trademark is granted the same legal protection as provided by this Act for a trademark".we can see, the article provides us with basic concept of a Well-Known Mark in Uzbekistan, namely it establishes the following requirements:

1)The mark claimed to be well-known must be one of the following 3 types of marks are eligible for protection:

a)registered trademarks;

b)unregistered trademarks protected under international treaties;)unregistered signs used as trademarks.

2)The mark is widely known among relevant consumers in respect of the goods of the claimant.

3)There must be intensive use of the mark.procedure of recognition can be started only upon the request (application) of an interested person, and not ex officio.

Article 322 of the Law deals with the bases of procedure for granting protection to well-known marks: designation of a "Competent Authority", inclusion of recognized well-known mark into the special List, publication and issuance of a certificate. According to this article, legal protection of a well-known trademark once granted is valid indefinitely.to the issue of protection from dilution the following must be stated. According to the Art. 10 of the, Law existence of a well-known trademark is an absolute ground for refusal of registration of another identical of confusingly similar trademark in respect of any types of goods [or services]. This looks like an attempt to comply with the requirements of the Art. 16.3 of the TRIPS Agreement, although rather awkward and vague, because it does not say that the well-known mark must be registered first, as well as that the requirements i) of a threat of "connection" or association with the well-known mark owner, and ii) possible damage to the interests of the latter, must be met. Therefore, this provision may, and certainly will, give birth to a lot of complications in practice.

The Rules

The document is compulsory to be followed by all legal and physical persons in Uzbekistan. The part relating to the procedure of recognition of a mark as well-known in Uzbekistan mainly deals with the following issues:

1)requirements to application on recognition of a well-known mark, and materials complementary to it;

2)procedural issues: registration of applications, duration of proceedings, rules of proceedings, and issuance of a decision by the BoA.core part of the Rules (for the purpose of this paper) is the requirements to application on recognition of a well-known mark, as it describes what type of information and supporting documents to be presented to the BoA for consideration. Article 7 of the Rules reads:

"Application […], and the accompanying materials must contain the actual data confirming that the trademark is well-known. These materials may be documents containing:about intensive use of the trademark on the territory of the Republic of Uzbekistan;of geographic locations where the goods (in respect of which the trademark is used) have been sold;about the amount of sales of these goods;about the way of use of the trademark, including advertising and presentation at fairs or exhibitions of products and/or services for which the mark is applied;about annual average number of consumers of the goods;about the countries in which the trademark has become well-known;surveys of consumers of goods, provided by specialized independent organization, in accordance with the recommendations set out by the Patent Office.duration, continuity, intensity and volume of use of a trademark may be demonstrated by presenting of: conclusions of product quality control bodies, trade organizations, and societies for the protection of consumer rights; declarations, quality certificates, and other documents.application must indicate the date from which the use of the trademark has begun, and the date from which the claimant considers his trademark as well-known in the territory of the Republic of Uzbekistan".is an obvious attempt to implement WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, but with its specific features. Although optional (as well as the Joint Recommendation itself), the list above focuses more on the criterion of intensive use of the trademark in Uzbekistan, as implying that use is a decisive factor (and it actually is according to the Article 321 of the Law) in recognition of a well-known mark, which is inconsistent with the Art.2(3) of the Joint Recommendation. In fact the Rules (as well as the Law) do not contain any "non-criteria", i.e. criteria which cannot be demanded by the BoA to be met by the claimant, which leaves a room for abuse by the BoA of its powers to grant protection to a well-known mark.

The Recommendations

The Recommendations are not obligatory provisions to be taken into account when conducting a survey on whether the mark is well-known or not in Uzbekistan. According to the Rules mentioned above, surveys or polls are not compulsory to be presented to the Board of Appeal for the latter to decide on the issue of recognition of a mark to be well-known in Uzbekistan. But it is encouraged to present them anyway (although they can turn out to be very costly) because they give a clear picture of the issue, i.e. the actual numbers and figures on how well-known a mark is in a certain relevant sector of the public, or in other words, by an "average consumer" of goods and/or services in Uzbekistan.the Recommendations contain guidelines for conducting a survey specifically designed to help specialized organizations present information necessary to identify if a trademark has or has not become well-know in Uzbekistan.


Chapter 5. A comparative analysis


No.Name of the legal element of well-known marks protection regimeItalyPakistanUzbekistanNotes1Legal SystemCivil lawCommon lawCivil law2International obligationsTRIPS, Paris ConventionTRIPS, Paris ConventionParis Convention3Who can claim protection and how it can be claimed?An interested legal or a natural person can file an application with the Competent Authority, not ex officioOwner of a well known TM can file an application with the competent Authority.An interested legal or a natural person can file an application with the Competent Authority, not ex officio4Grounds (criteria) for protectionThe Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services.Any ground competent authority consider relevant especially mentioned in Sec. 86(2) of the TM Ordinance, 2001.1. The mark is widely known among relevant consumers in respect of the goods of the claimant 2. There must be intensive use of the markUzbekistan: the criterion of intensive use of the trademark is contradicting to the Art.2(3) of the WIPO Joint Recommendation;5Competent authoritiesTribunal IP Specialized SectionsTrademark Tribunal, Court of lawBoard of Appeal of the State Patent Office of Uzbekistan6Exception from the principle of territorialityPresentPresentPresentUzbekistan: protection may be granted to unregistered signs used as trademarks and service marks;7Exception from the principle of specificityPresentPresentPresentUzbekistan: too broad - existence of a WKTM is an absolute ground for cancellation of any identical or confusingly similar existing mark or refusal to future identical or confusingly similar mark for any types of goods or services;8Protection from dilution by blurringYesYesSee notes to point 7 above9Protection from dilution by tarnishmentYesYesSee notes to point 7 above10Scope of protection if mark is registeredRegistration does not influence the scope of protectionFor protection of well-known mark registration is not mandatoryRegistration does not influence the scope of protectionUzbekistan: See notes to point 711Scope of protection if mark is unregisteredRegistration does not influence the scope of protectionProtection is provided for unregistered well known marksRegistration does not influence the scope of protectionUzbekistan: See notes to point 712Bad faith considerationArticle 19(2) prohibits the registration of a mark filed in bad faith.Usually considered especially for passing off actionsNot presentUzbekistan: This must be definitely included into legislation of Uzbekistan along with the basics of doctrine of passing off from common Law tradition13Retroactive protection of well-known mark or possibility of coexistence of two similar or identical marks (for similar or identical products in case of unregistered WKTMs)See point 4 aboveYes, Depending upon the merits of a case.See notes to point 7 above

Conclusions

/service marks are used by persons or companies to identify their goods/services. Marks exist to protect consumers from confusion as to the source of a product/service. Principle of territoriality and specificity are very important part of any trademark law. However, an exception to these principles is the well known marks doctrine. Statutory evolution and recent cases show that the protection afforded to "Well Known" trademarks is increasing. Even in the absence of any likelihood of confusion as to the origin of products, the protection of a trademark aimed at providing its owner with a return for promotional and advertising investment is clear.this paper we have reviewed the concepts of the well known and famous marks. We have examined Trademark Laws of Italy, Pakistan and Uzbekistan for approaches to well known trademarks and have found that, in general, well known and famous trademarks are well protected by trademark law in Italy, Pakistan and Uzbekistan even though the means of achieving protection is sometimes is unclear in its path or uncertain in its objectives.


BIBLIOGRAPHY


1. The international discipline and relevant literature

FREDERICK M. ABBOTT - THOMAS COTTIER - FRANCIS GURRY, International intellectual property in an integrated world economy, Aspen Publishers, 2007

BARTON BEEBE, A Defense of the New Federal Trademark Antidilution Law, in 16 Fordham Intell. Prop. Media & Ent. L.J. 2006, 1142 ff.. CORNISH- D. LLWELYN, Intellectual Property: Patents, Copyrights, Trademarks and Allied Rights, Sweet & Maxwell, London, 2007

TASHIA A. BUNCH, Well-known Marks Doctrine: Where do we go from here?, Journal of the Patent Trademark Office Society, March 2008, Thomson Reuters, 2009

S. P. CHEETHAM, Protection of Intellectual Property Rights in luxury goods, M.A. Cohen-A.E. Ban-S.J. Mitchell (eds.), Chinese Intellectual Property law and practice, Kluwer Law International, The Hague, 2000.

J. THOMAS MCCARTHY, Dilution of a trade mark: European and United States law compared, in Vaver D., Bently L. (edited by), Intellectual property in the new millennium, Essays in honour of William R. Cornish, Cambridge University Press, Cambridge, 2004,

F. MOSTERT, The protection of famous trademark on non competing goods, in Vol. I Intellectual Property Studies, 1996.. W. PATTISHALL-D. C. HILLIARD-J. N. WELCH II, Trademarks and competition desk book, Matthew Bender, New York, 2001.

The protection of well known marks in Asia-pacific, Latin America and Africa, issued by the International Trademark Assoication, Oct. 2004., On Trademarks and Unfair Competition, West Group, 2002..J. MCCARTHY & F. MOSTER, Famous and Well-Known Marks - An International Analysis, 2nd Edition, International Trademark Association, New York, 2004..KUR, TRIPS and TRADEMARK LAW, in "From GATTS to TRIPS", WEINHEIM, 1996.. GRINBERG, The WIPO Joint Recommendation Protecting Well Known Marks and the Forgotten Good Will, Chicago- KENT Intellectual Property Law Society Journal of Intellectual Property, 2005.BLAKENEY, The Protection of Well-Known Trademarks, Lecture prepared for WIPO National Seminar On Intellectual Property organized by the World Intellectual Property Organization (WIPO) in cooperation with the Cairo University, Arab Republic of Egypt (Cairo, February 17 to 19, 2003)

STEPHEN P. LADAS, International Protection of Well-Known Trade-Marks, The Trade-Mark Reporter, 1951W. MOSTERT, Well-Known and Famous Marks: Is harmony possible in the global village?, The Trademark Reporter, 1996RANGEL-ORTIZ, Well-Known Trademarks Under International Treaties, Trademark World, February 1997H. TATHAM, WIPO Resolution on Well-known Marks: A Small Step or a Giant Leap?, Sweet & Maxwell Ltd and Contributors, 2000

Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS), signed in Marrakesh, Morocco, on 15 Apr 1994.

Joint Recommendations Concerning Provisions on the Protection of Well-Known Marks, adopted in 1999 by the World Intellectual Property Organization.

Paris Convention for the Protection of the Industrial Property, as amended in 1979.

2. The national (or domestic) discipline of Italy, Uzbekistan and Pakistan and relevant literature

ADRIANO VANZETTI - VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffré Editore, 2009

JASMINE KARIMI, Avoiding Dilution of Well-known Marks in the US, EU and Asia, April 2007. HEATH & K. LIU, The protection of well-known marks in Asia, Kluwer, The Hague, 2000. FAULKNER, Branding in South East Asia, in Brands and Branding, The Economist Series, Bloomberg press, Princeton, New Jersey, 2004.. YOOK, Trademark Dilution in European Union, North Western School of Law, LEWIS & CLARK COLLEGE, 2001.

3. Commentaries:

PIERGAETANO MARCHETTI - LUIGI CARLO UBERTAZZI, Commentario breve alle leggi su proprietà intellettuale e concorrenza, 4 edizione, Cedam, 2007

4. Cases (Chronological order):

Corte di Giustizia 6 ottobre 2009, causa C-301/07, Pago International GmbH c. Tirolmilch Genossenschaft mbH, caso "Pago"

Opinion of the Advocate General Poiares Maduro of 22 September 2009, in Cases C-236-238/08, Google France e Google Inc. c. Lousi Vuitton Mallettier, Google France c. Viaticum Luteciel e Google France Bruno Raboin, Tiger SARL c. CNRHH, Pierre Alexis Thonet, case "Google-Ad-Words"

Trib. primo grado CE 15 settembre 2009, causa T-308/08, Parfums Christian Dior c. UAMI e Consolidated Artists BV, caso "Mango adorably"di Giustizia 18 giugno 2009, causa C-487/07, LOréal SA, Lancôme parfums et beauté & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso "LOréal"dellAvvocato generale Paolo Mengozzi del 10 febbraio 2009, causa C-487/07, LOréal SA, Lancôme parfums et beauté & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso "LOréal"di Giustizia 18 dicembre 2008, causa C-16/06 P, Les Editions Albert René c. UAMI, caso "Mobilix"di Giustizia 11 dicembre 2008, causa C-57/08 P., Gateway, Inc. c. UAMI e Fujitsu Siemens Computers, caso "Activy Media Gateway"di Giustizia 27 novembre 2008, causa C-252/07, Intel Corporation c. CPM UK Ltd., caso "Intel"dellAvvocato generale Sharpston del 26 giugno 2008, causa 252/07, Intel c. CPM UK Ltd., caso "Intel". primo grado CE 19 giugno 2008, causa T-93/06, Mühlens GmbH & Ko. KG c. UAMI e Spa Monopole, compagnie fermière de Spa SA/NV, caso "Mineral spa"di Giustizia 12 giugno 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., in Racc. 2008, I, 4231 ss., caso "O2". primo grado CE 16 aprile 2008, causa T-181/05, Citigroup Inc. e Citibank NA c. UAMI e Citi SL, in Racc. 2008, II, 669, caso "Citi/Citibank"dellAvvocato generale Paolo Mengozzi del 31 gennaio 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., caso "O2". primo grado CE 30 gennaio 2008, causa T-128/06, Japan Tobacco, Inc. c. UAMI e Torrefação Camelo Lda, caso "Camelo"dellAvvocato Generale Trstenjak del 29 novembre 2007, causa C-16/06 P, Les Editions Albert René c. UAMI, caso "Mobilix". primo grado CE 27 novembre 2007, causa T-434/05, Gateway Inc. c. UAMI e Fujitsu Siemens Computers GmbH, caso "Activy Media Gateway"di Giustizia 22 novembre 2007, causa C-328/06, Alfredo Nieto Nuño c. Leonci Monlleó Franquet, caso "Fincas Tarragona"dellAvvocato generale Paolo Mengozzi del 13 settembre 2007, causa C-328/06, Alfredo Nieto Nuño c. Leonci Monlleò Franquet, caso "Fincas Tarragona". primo grado CE 11 luglio 2007, causa T-150/04, Mühlens GmbH & Co. KG c. UAMI e Minoronzoni s.r.l., in Racc. 2007, II, 2353 ss., caso "Tosca Blu". primo grado CE 11 luglio 2007, causa T-263/03, Mühlens GmbH & Co. KG c. UAMI e Conceria Toska s.r.l., caso "Toska". primo grado CE 16 maggio 2007, causa T-137/05, Gruppo La Perla c. UAMI e Worldgem Brands - Gestão e Investimentos Lda, caso "La Perla"

Court of First Instance 10 May 2007, in case T-47/06, Antartica s.r.l. c. UAMI e Nasdaq, case "Nasdaq"22 March 2007, in Case T-215/03, Sigla SA v. OHIM and Elleni Holding BV, case "VIPS"

CFI 6 February 2007, case T-477/04, Aktieselkabet af 21.november 2001 v. OHIM and TDK Kabuiki Kaisha (TDK Corp.), case "TDK"

Corte di Giustizia 25 gennaio 2007, causa C-48/05, Adam Opel c. Autec, in Racc. 2007, I, 1017 ss.; in Foro It. 2007, 137 ss. con nota di Casaburi e in Il dir. ind. 2007, 423 ss. con nota di M. Bogni, Il marchio automobilistico dei modellini, caso "modellini in miniatura". primo grado CE 27 ottobre 2005, causa T-336/03, Les Editions Albert René c. UAMI e nei confronti di Orange A/S, in Racc. 2005, II, 4667 ss., caso "Mobilix". primo grado CE 25 maggio 2005, causa T-67/04, Spa Monopole, compagnie fermière de SPA SA/NV c. UAMI e Spa-Finders Travel Arrangements, in Racc. 2005, II, 1825 ss., caso "Spa-Finders". di primo grado 13 dicembre 2004, in causa T-8/03, El Corte Inglés SA c. UAMI e Emilio Pucci, in Racc. 2004, II, 4297 ss., caso "Emilio Pucci"di Giustizia 23 ottobre 2003, causa C-408/01, Adidas-Salomon AG e Adidas Benelux BV c. Fitnessworld Trading Ltd., in Racc. I, 389 ss., Giur. ann. dir. ind. 4608; in Il dir. ind., 2004, 31 ss. con Commento di R. S. De Marco e in Giur. comm. 2004, II, 363 ss. con nota di N. Bottero, Marchi notori, beni affini e usi atipici nella giurisprudenza comunitaria, caso "Adidas-Fitnessworld"di Giustizia 9 gennaio 2003, causa C-292/00, Davidoff & Cie SA e Zino Davidoff SA c. Gofkid SA, in Racc. 2003 I, 389 ss., in Giur. it. 2003, 283 s. con mia nota La tutela dei marchi che godono di rinomanza nei confronti della registrazione ed utilizzazione per beni affini nella giurisprudenza della Corte di Giustizia e in Giur. comm. 2003, II, 574-584 con mia nota Marchi che godono di rinomanza e beni affini nella giurisprudenza comunitaria,, caso "Davidoff"di Giustizia 14 settembre 1999, causa C-375/97, General Motors Corp. c. Yplon, in Racc. 1999, I, 5421 ss., caso "General Motors/Yplon"

Boards of Appeal, Yearly overview of decisions 2007

5. National Laws and Regulations

Pakistan Trademark Ordinance, 2001.

Pakistan Trademark Rules, 2003.

Law of the Republic of Uzbekistan on Trademarks & Appellations of Origin of Goods, 2001

Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009


Теги: Protection of trademarks  Диплом  Маркетинг
Просмотров: 40448
Найти в Wikkipedia статьи с фразой: Protection of trademarks
Назад