Protection of trademarks
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onds 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 words 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/words 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 words 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 diswords 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 words 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 question