the protection of trademarks with a reputation procedural issues trademark law institute amsterdam,...

The Protection of Trademarks With a ReputationProcedural Issues

Trademark Law InstituteAmsterdam, October 2010

Marcus Höpperger

Article 6bis Paris Convention

Non-registered well-known marks (identical or similar for identical or similar goods)

Refusal of registration (ex officio or upon request)

Cancellation of registration (ex officio or upon request)

Prohibition of use (ex officio or upon request)

TRIPS 16.2 and .3

Article 6bis applies mutatis mutandis to service marks

Article 6bis applies mutatis mutandis to dissimilar goods and services (subject to additional conditions)

WIPO Joint Recommendation (1999)

Determination whether a mark is well-known by competent authority (list of factors)

Determination of the “relevant part of the public” (list of factors)

Opposition Procedures

Ground for opposition at least where g/s identical or similar

WIPO Joint Recommendation (1999)

Invalidation Procedures

Ground for invalidation at least during five years from publication of registration for similar and dissimilar g/s

If ex officio invalidation, ground for such invalidation during at least five years from publication of registration for similar and dissimilar g/s

Prohibition of use

Upon request during at least five years from knowledge of use for similar and dissimilar g/s

Areas of Convergence for Opposition (2009)

Area of Convergence # 3 “Grounds for Opposition”

“at least on the basis of prior trademark rights in the jurisdiction concerned”

WIPO/STrad/INF/1 Rev.1 (January 2010)

Questionnaire on TM Law and Practice

Opposition on basis of well-known/famous mark/mark having a reputation: 55 of 81

Well-known Mark Registries

Armenia Register (26 entries)Belarus Register (four entries)Brazil Registration of notorious marks

(discontinued)Bulgaria Register of WKM (about to be

discontinued)China Administrative recognition of WKM; list

published twice per yearCzech Republic “Database” with WKM for TM Office useFinland List of TMs with reputation (55 entries)Mexico Ad-hoc recognition of well-known and famous marksMoldova Register (14 entries)Russian Federation Recognition and publication in list (97 entries)Ukraine Recognition of WKMs (43 TMs published)

AIM Position Paper 2007

Broad endorsement of WIPO JR (2007)

Concerns and Questions

Recommended Guidelines (14)

Thank you for your attention!

Trademark Law InstituteAmsterdam, October 2010

Marcus Höpperger