Protection of well-known trade marks

Protection of  well-known trade marks

©Presented By : Jordanian Lawyer  Sami A Alawad Bani Domi

Introduction

A- Exception to territoriality

The principle of territoriality means that the protection of a trademark in a certain country depends exclusively on the law of that country, and that the effects of a trademark ownership by use or by registration in a country do not reach beyond the borders of that country, it also means that only facts occurring in a certain country may affect the trademark right in that country. But there are exception to this principle, that is the world wide reputation of a mark as a basis of extended protection.

B. Exception to specialty

The principle of specialty stipulates that trademarks can only be protected in relation to the same or similar goods or services covered by their registration or use. But according to Section 16(3) of the TRIPS Agreement, in certain circumstances, a trademark can be granted extended protection to non-competing goods or services.

Section 16(3) of the TRIPS Agreement makes a legal basis available for the protection of well-known marks on non-competing goods or services on the condition that the mark has been registered. Protection is afforded in relation to goods or services which are not similar provided that the use of the mark on such dissimilar goods or services would indicate a connection with the owner of registered trademark, and the interests of the registered trademark owner are likely to be damaged by such use.[1][5] Thus, the extended protection of the well-known trademarks to non-competing goods or services constitutes an exception to the principle of specialty.

C-  Exception to registration

 Both the Paris Convention and the TRIPS Agreement establish protection for well-known marks whether or not they are registered in the country in which the protection is sought.

Thus in the country where the prerequisite for protection is registration, the protection of the well-known trademark constitutes an exception to the principle of registration.

  Well known marks in international treaties:      

A. Paris convention

B. TRIPS Agreement

C. WIPO Joint recommendation

A. Paris convention

The Paris Convention includes provisions relating to the all-industrial property rights, and establishes a set of uniform rules that must be observed by the member country of Union to provide minimum protection in the domestic legislation of the industrial property rights. The Paris Convention provides the protective principles of well-known trademarks in Article 6bis, as follows:

Article 6bis

(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.

overview about Paris convention

   (1)Article 6bis first incorporated the concept of a well-known trademark in 1925, and has been applying universally. It specifies the principles of protection of well-known trademarks in the countries of Union.

   (2)       The protection accorded to famous and well-known marks is a protection against the registration and use of a trademark that constitutes a reproduction, imitation or translation, liable to create confusion, of a well-known or famous mark or an essential part of such a mark.

    (3) The protection in Article 6bis extends only to trademarks, that is marks that are used in respect of goods, and does not extend to service marks which are used in respect of services.

    (4)      The protection extends to registration or use in respect of identical or similar goods but there’s No provision for dissimilar goods or services .

    (5) The Paris Convention doesn’t provide the definitions or criteria of which trademarks can be recognized as well known.

   (6) the cancellation application for the illegal trade mark which similar to well-known trademark A period of at least five years from the date of registration shall be allowed for requesting the cansilation .

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

B. TRIPS Agreement

         TRIPS Agreement is the annex to the (Marrakesh) Agreement that established the World Trade Organization (WTO). It entered into force on January 1,1995, its formal title is “Agreement for Trade-Related Aspects of Intellectual Property Right”. It is the most important international intellectual property right agreements promoting the harmonization of national IPR regimes.

              It establishes the basic principles and standards concerning the availability, scope and use of trade-related international property rights; civil and criminal enforcement obligations including border measures; procedural requires 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. The TRIPS Agreement makes the enhanced protection of well known trademarks in Article 16 (2) and (3), as follows:

Article 16  :
   Rights Conferred

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.

3. 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.

Overview about TRIPS

(1) Article 16 (2) makes the Article 6 bis of the Paris Convention applicable to the service trademark.

(2) Also Article 16 (2) it defines some relevant factors to be considered when deciding whether a mark is well known or not .

(3) Article 16 (3) specifies the protection of well-known trademark on non-competing goods or services, and protects against the dilution of a trademark avoiding detrimental to the reputation that the business enjoys. on two conditions:

        – first, that the use of the allegedly infringing mark in relation to those other goods or services would indicate a connection between those other goods or services and the owner of the famous mark, and,

       – secondly, that the interests of the owner of the famous mark are likely to be damaged by such use. 

C. WIPO Joint recommendation

    There are a lot of debates about the conditions for a mark to be protected as well-known trademark. In order to solve this controversies, a number of countries have approached the WIPO to seek clarification on their obligations under the Paris Convention and the TRIPS , WIPO began to research this issue after the conclusion of the TRIPS Agreement. A special program was set up to study and determine the criteria for the definition of well-known trademarks under Article 6 bis of the Paris Convention and Article 16 of the TRIPS Agreement.  The draft Provision on the Protection of Well-Known Marks have been considered by the WIPO Committee of Experts on Well-Known Marks, It recommends the Member State of the Paris Union or of WIPO to pay attention to protect the well-known marks in accordance, mutatis mutandis with the joint recommendation.

 The criteria to be a well-known mark under the Joint Recommendation

           WIPO Committee of Experts on Well-Known Marks but the  following factors:

   1.the degree of knowledge or recognition of the mark in the 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 services to which the mark applies;

   4.the duration and geographical area of any registration, and /or any applications for registration, 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 .

According to the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, Determination whether a mark is well known in member state, the competent authority shall take into account any circumstances from which it may be inferred that the mark is well known. In particular, should consider information including, but not limited from the mentioned factors.

Those factors are as guideline considered by administrative or judicial authorities of countries in judging whether trademark is well known or not. It is not likely to be consideration all of them in one case. Whether the trademark is well known or not is a question of fact. Consideration of which factors are important than others depends on the special circumstances of every case. The case by case approach should be adopted in recognition of well-known trademarks.

The protection of well-known trademark in Jordan

A. Law  No. 33 for the year 1952

B. Amendment Law No. 34 for the year 1999

C. Amendment Law No. 15 for the year 2008
 

A. Law No. 33 for the year 1952

In the law of 1952 there was no protection for the well-known trademark expressly in the provision , but at this time  the fact that it was protected  by the anti unfair competition provisions and there is a lot of statements issued by the High Court of Justice where protect the well-known trademark under the article 8 paragraph 6.

In addition that it was protected because Jordan is a member in Paris Convention Treaty which impose the protection for the well-known trademark, but the court in Jordan didn’t make any statement based on the treaty .

B. The amendment  Law No. 34 for the year 1999

In this Law it’s the first time the legislature put a provisions to protect the well-known trademark, the main thing at this law that the legislature verify a definition to the well-known trade mark which said:

Article 2 of Law No. 33 of 1952, a well-known trademark is “the mark with a world renown whose repute surpassed the country of origin where it has been registered and acquired fame in the relevant sector among the consumer public in the Hashemite Kingdom of Jordan.”

In the fact that  there’s another important provisions in this law related with well known trade mark like article 8\12,article 15\1, article 25\5, and article 25\B.
 

C. The amendment Law No. 15 for the year 2008

The only  amendment   related to the well-known trademarks. Is According to Article 2 of Law No. 33 of 1952, a well-known trademark is “the mark with a world renown whose repute surpassed the country of origin where it has been registered and acquired fame in the relevant sector among the consumer public in the Hashemite Kingdom of Jordan.”

As per the amended law, the following has been added to the definition, “taking into consideration the regulations issued by the competent minister in this respect and in accordance with the international agreements related to well-known trademarks to which Jordan is a member.”

The definition  of the well-known trademarks according to the new amendments

According to Article 2 of the law, the Well-Known Mark is defined as the mark with a world renown whose repute surpassed the country of origin where it has been registered and acquired a fame in the relevant sector among the consumer public in the Hashemite Kingdom of Jordan.

From the provision we found that there is tow elements for the well-known trademark:

1- world renown whose repute surpass the country of origin.

3- a fame in the relevant sector among the  consumer public in Jordan.

Analyze the definition :

The definition did not give us the mean of the fame.

The definition said that (origin where it has been registered ) this sentence is not clear because we don’t know whether it’s the owner domicile, the institution domicile or the work domicile.

From my point of view  , its enough for the mark to consider a well-known trademark if it  registered in one country any country in the world to be protect because we talk about a world reputation. 

The mean of  relevant sector among the consumer public

There is a debate in  explaining the sentence above which mentioned in article 2 from the JTM , to solve this issue  Article 2(2) of the WIPO Joint Resolution provides that relevant sectors of the public shall include:

(1)actual and/or potential consumers of the type of goods and/or services to which the mark applies;

(2)persons involved in channels of distribution of the type of goods and/or services to which the mark applies; and

( 3)business circles dealing with the type of goods and/or services to which the mark applies.

The new amendment 2008 what is new on it;

As per the amended law, the following has been added to the definition of the well-known trademark in article tow , “taking into consideration the regulations issued by the competent minister in this respect and in accordance with the international agreements related to well-known trademarks to which Jordan is a member.”

comments on the amendment

About the new amendment I see that its not relate to the definition and its better if this article is separate from the definition of the well-known trademark.

There no need for this addition in because the competent minister can issue a regulation without this provision also he is obliged to respect the agreements by the constitutional law.

I think the only reason to this amendment is to emphasize the obligations and duties in the PCT and TRIPS as it is part from our law , in the fact that I see Jordan law has made more than the minimum protection which demand by the tow agreements , may be the only thing which not mentioned in Jordan TM  law is the protection of the well-known trademark in the bad faith.

Scope of protection in Jordan for well-known trademark.

According to article 8\12

 First : Prohibiting the registration of a trademark that is identical or  similar or a translation of a well known trademark.

At these cases there is tow situations :

      A – to use the mark in same goods or services in this situation there must be cause confusion with the  well-known trademark.

      B – to use the mark in dissimilar goods or services

               in this situation it shall be   prejudice the interests of the owner of the well-known mark and leads to believing that there is a connection between its owner and those goods as well as the marks which are similar or identical

Second:  Prohibiting the use of a trademark that is identical or similar or a translation of a well known trademark: 

According to the article 26\b

“ If a trademark is well-known and if it is not registered, then its owner may demand the competent court to prevent third parties from using it on identical or unidentical goods or services provided that such use indicates a connection between those goods or services and the well-known mark and provided that there is a likelihood of prejudice to the interests of the trademark owner because of such use , a likelihood of confusion shall be assumed if an identical well-known mark is used on identical goods ”.

   The main thing in this article that the legislator make a legal presumption fit to the famous trademark owner  in the case of the identical in goods and mark.

Third: cancellation of registered trademark that is identical or a translation for a well known mark:

 First : if some one success to register a identical mark to well-known trade mark in good faith what the owner can do:

According to the articles 8 ,  15\1 and 25\5 from Jordan TML and according to article 6bis paragraph 2  from Paris convention in addition to article 16 from TRIPS agreement , the owner must be made within five years as from the registration of the trademark , the owner shall have the options of submitting an application in the prescribed manner to the high court of justice, or make such application ask the cancellation.

Second: If some one register a mark in bad faith what the owner of the well-known trademark can do?

      According to the article 2 from JTML and article 6bis paragraph 3 the owner have the right to request the cancellation without limit time.

Protection of  well-known trade marks ©

 

Observations

The famous or well-known trademark must have already become a famous or well-known trademark on the filing date of the third party’s application.

According to JTML  it is not stipulate expressly or implicitly the use as term  for protection, In addition that Supreme Court of Justice ruled that the protection of the well-known trademark will be without considering the usage  nor registration in Jordan.

Protection of  well-known trade marks ©

 

The end

Protection of  well-known trade marks ©

 

One thought on “Protection of well-known trade marks”

  1. Attorney Sami ( Jordanian lawyer ) has helped me set up a number of legal issues relate to Arab Laws which helps my practice grow. He is a trusted advisor essential cooperative lawyer to my law firm.
    Barrister David D. Peterson
    Mark E. Fried P.A.
    Miami, FL

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