Protection of trademarks
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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