The degree of fame and reputation enjoyed
by a mark may be a relevant factor in
different contexts, including acquired
distinctiveness and likelihood of confusion.
In two particular respects, however, the
international legal framework calls for
special treatment for so-called ‘well-known
trademarks’:
•
Under Article 6
bis
of the Paris
Convention for the Protection of
Industrial Property, where a trademark
is well known in a territory for certain
goods (even if it is unregistered), an
application to register a similar mark for
similar goods should be rejected on
proof of likelihood of confusion. Further,
the use of a junior mark should be
prohibited.
•
Article 16(3) of the Agreement on Trade-
Related Aspects of Intellectual Property
Rights (TRIPs) states that in relation to
registered marks, Article 6
bis
should
apply to non-similar goods or services,
provided that use of the later mark
indicates a connection to the owner of
the well-known mark and that the
interests of the owner of the well-known
mark are likely to be damaged.