A registered trademark that has become famous is granted wider protection in some jurisdictions. In the United States a famous mark is provides protection already when there is a likelihood of dilution and not only when there is a likelihood of confusion. There is no exhaustive list of requirements which must be fulfilled for a mark to be considered famous but the relevant criteria include the length of time the trademark has been used as well as the sales volume and advertising expenditures.

Probatival can provide full project management and execution services for projects regarding the documentation of your famous trademarks.

Registered trademarks with a reputation enjoy special protection in several jurisdictions, including the EU where they are covered by article 8(5) of the Community trademark regulation.

A registered trademark with a reputation enjoys protection for goods and services which are neither identical nor similar to those covered by the trademark. Therefore, a trademark with a reputation is a particularly powerful tool for almost any enterprise.

When determining whether a registered trademark has a reputation all relevant facts must be taken into consideration and in particular the market share held by the mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it. A systematic approach including collection of proof of use of the trademark is a prerequisite of proving reputation.

Probatival can set up, manage and execute projects for the purpose of proving your trademarks’ reputation.

‘Article 6bis
Marks: Well-Known Marks

(1) The countries of the Union undertake, 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 which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. 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. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(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.’

Well-known marks are in most jurisdictions protected against signs which constitute a reproduction, imitation or translation of the mark if they are likely to create confusion among the relevant public. It is normally not a requirement that well-known marks are registered in order for them to enjoy protection in respect of goods and services which are identical with, or similar to, those for which they have obtained their reputation. Provided certain conditions are fulfilled, well-known marks will also in several jurisdictions enjoy protection in respect of dissimilar goods and services.

Moving the extra step from ordinary trademark to establishing the well-known status of the mark, is in many cases not a question of spending more on marketing but simply requires a systematic collection of proof of use of the trademark in the relevant jurisdiction combined supporting evidence from external sources such as consumer surveys.

Step by step, Probatival can help your business build the case that your trademark is well known.

This wiki is your free resource to subjects related to Trademarks with special legal qualification.

The wiki started in March 2012 and is being continually expanded, so check back regularly or subscribe to receive a quick note when we publish more short insights, background and trademark related news on this site.

Kind regards,

Probatival