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1 Respond to our user survey. Back to Global Trademark Resources Home How To Use This Resource Editors and Contributors Index of Marks Useful Links Supplemental Resource Famous and Well-Known Marks: An International Analysis uniquely explores the rationale for and implementation of the protection of these exceptional trademarks. This benchmark work, available online for the first time, is an invaluable guide to the principles and practice of this evolving body of international law. INTA gratefully acknowledges the contributions of this publication's Principal Author and Editor, Frederick W. Mostert, and all of its Contributing Authors. The Supplemental Resource, accessible through the tab above, is a separate searchable database of marks that have been recognized as famous or well-known by particular jurisdictions. For additional information on how to use this resource, please click on the tab under the banner at the top of this page. You can print a full chapter or country PDF by clicking on the attachments icon (the paper clip) on the lower left side of the page view. You must print from the attachment, not the original PDF. Adobe Reader is required to view a full chapter or country PDF. You can download it here. CONTENTS Collapse All CHAPTER 1: International Recognition and Protection of Famous and Well-Known Marks II. Supranational Law A. The Distinction Between Reputation and "Well-Known Marks" B. The Degree of Recognition of the Mark C. The Extent to Which the Mark Is Used and the Duration of the Use D. The Extent and Duration of Advertising and Publicity Accorded to the Mark E. The Extent to Which the Mark Is Recognized, Used, Advertised, Registered, an Enforced Geographically or, If Applicable, Other Relevant Factors That May Determine the Mark's Geographical Reach Locally, Regionally, and Worldwide F. The Degree of Enforcement and Registration of the Mark G. The Degree of Inherent or Acquired Distinctiveness of the Mark H. The Degree of Exclusivity of the Mark and the Nature and Extent of Use of the Same or a Similar Mark by Third Parties I. The Nature of the Goods or Services and the Channels of Trade for the Goods or Services That Bear the Mark J. The Degree to Which the Reputation of the Mark Symbolizes Quality Goods K. The Extent of the Commercial Value Attributed to the Mark A. Marks That Are "Famous," "Well-Known," or That Enjoy a "Reputation" B. Additional Parameters C. Caveat: Famous and Well-Known Marks Only

2 A. The Element of Bad Faith in Proceedings for the Refusal of an Application or for the Cancellation of a Registration and for Injunctive Relief B. The Element of Bad Faith C. Bad Faith as a Single Factor D. Good Faith Adoption A. Confusion of Business Connection or Sponsorship B. Trademark Dilution C. Defense in Dilution Cases D. Commercial Magnetism as a Ius In Se VII. Remedies B. Refusal of an Application or Cancellation of a Registration That Conflicts With a Famous or Well-Known Mark C. Injunctive Relief Against the Use of a Mark That Conflicts With a Famous or Well-Known Mark D. Damages VIII. Customs: Protection of Famous and Well-Known Marks at the Border B. Supranational Law-Recognizing Changes C. National Law IX. Counterfeits: The Protection of Famous and Well-Known Marks Against Piracy B. The Nature and Extent of the Trademark Counterfeiting Problem C. Laws Relating to Trademark Counterfeiting, Enforcement and Famous and Well-Known Mark Protection D. A Practical Trademark Enforcement Program for Famous and Well-Known Mark Owners 1. Centralized Command 2. Effective and Experienced Outside Counsel and Private Investigators 3. An Anticounterfeiting Policy and Plan 4. Close Coordination With the Trademark Registration Program 5. Careful Planning at the Regional and National Level and Budgetary Considerations 6. Using Anticounterfeiting Technologies 7. Use of Databases and Control of Information 8. Use of Appropriate Enforcement Weapons 9. Working with Other Intellectual Property Rights Holders 10. Publicity and Public Relations 11. Evidence of Fame and Reputation 12. Assessment and Recidivism E. Conclusion X. Conclusion CHAPTER 2: Protection of Other Famous and Well-Known Indicators of Origin I. Protection of Famous and Well-Known Trade Names B. Supranational Law C. Criteria D. Parameters 1. General 2. Local Use as a Precondition for Protection

3 3. Licensing a Trade Name Across Borders E. Protection in the Absence of Competition F. Bad Faith and Damages II. Protection of Famous and Well-Known Geographical Indications B. Supranational Law C. Criteria D. Parameters E. Protection on Non-Competing Goods F. Bad Faith and Damages III. Protection of Famous and Well-Known State Emblems IV. Trade Dress: Protection of Famous and Well-Known Get-Up B. Supranational Law C. The Criteria: When Is a Trade Dress or Get-Up "Famous" or "Well-Known"? D. Parameters of Famous and Well-Known Trade Dresses and Get-Up 1. The Problem of Functionality a. Utilitarian Functionality b. Aesthetic Functionality 2. Labeling E. Protection on Non-Competing Goods F. Bad Faith and Damages 1. The Significance of Bad Faith Copying 2. Damages V. Public Figures and Celebrities: Protection of Famous and Well-Known Figures B. Supranational Law C. Criteria D. Parameters 1. Personality Rights 2. Registered Trademarks 3. Unfair Competition and Passing Off 4. Miscellaneous Rights E. Protection in the Absence of Competition F. Relevance of Bad Faith and Damages G. Conclusion VI. Internet: Protection of Famous and Well-Known Domain Names 1. The Magnetism of Famous Marks on the Internet for Traffic and Piracy B. Brief History of the Treatment of Famous Marks on the Internet 1. Mid-1990s: The Initial Response - Limitations of Existing Statutes Pre-Cybersquatting Laws 2. The Legislative Response to Cybersquatting C. Survey of Existing Famous Mark Protection 1. Supranational Law 2. National Legislation and Dispute Resolution Policies

4 D. Discussion and Open Issues 1. Special Role of Bad Faith 2. Fair Use Issues 3. Use of Famous and Well-Known Marks as Keywords 4. Protection of Personal Names of Famous Individuals 5. Extraterritorial Effect of ACPA - The Ability of Non-U.S. Marks to Utilize ACPA 6. Enhanced In Rem Powers over Domain Names 7. Protection of Famous Marks in Social Media E. Conclusion and Predictions CHAPTER 3: Recognition and Protection of Famous and Well-Known Marks by Jurisdiction ARGENTINA A. General B. Notoriety as a Distinctive Element C. Dilution D. Misappropriation and Unjust Enrichment AUSTRALIA A. Refusal or Cancellation B. Prohibition of Use of Confusing Marks VIII. Conclusion BENELUX A. Supranational Law B. Previous Benelux Law C. Current Benelux Law

5 VIII. Conclusion BRAZIL CANADA A. Refusal or Cancellation of Registration B. Prohibition on Use of Confusing Marks A. Degree of Notoriety or Recognition of the Mark B. Geographical Extent of Making-Known IV. Parameters of Well-Known Marks VII. Section 22: Depreciation of Goodwill VIII. Damages CHINA A. Supranational Law B. National Law 1. The 1996 Regulations 2. Current Trademark Law 3. The 2003 Regulations III. The Criteria: When Is a Mark "Well-Known"? IV. Parameters of Well-Known Marks A. Procter & Gamble v. Shanghai Chengxuan Intelligent Tech Development Limited B. E.I. Dupont De Nemours and Company v. Beijing Cinet Information Limited C. Starbucks v. Shanghai Xinbake Coffee Shops Limited V. Protection of Well-Known Marks and the Element of Bad Faith VI. Protection of Well-Known Marks on Non-Competing Goods VIII. Conclusion FRANCE A. The Paris Convention B. The TRIPS Agreement

6 C. The European Trademark Harmonization Directive A. Well-Known Trademarks B. The Famous Trademark (or Mark of Renown) A. Well-Known Trademarks B. Famous Trademarks A. The Acquisition of a Right: Article 6bis of the Paris Convention B. Other Consequences of Well-Known Status A. The Case Considered B. International Discussion C. The Early Cases D. The Current Positive French Law E. Jurisprudence GERMANY II. International and National Law III. The Criteria: When is a Mark "Famous," Reputed" or "Well-Known"? A. Court Rulings Prior to the Coming Into Force of the German Trademark Act on 1 January 1995 B. The Concept of Reputed in the Reputed Marks in German Trademark Law IV. Parameters of Famous, Reputed and Well-Known Marks A. Market Recognition B. Well-Known Mark C. Marks Having a Reputation in Germany D. amous Marks E. The Determination of the Level of Recognition V. Protection of Reputed Marks and the Element of Bad Faith VI. Protection of Reputed Marks on Non-Competing Goods A. The Likelihood of Confusion and the Similarity of the Goods and Services 1. Assessment of the Likelihood of Confusion Pursuant to Section 14(2) (No. 2) MarkenG 2. Similarity of Goods and Services B. Exploitation of Reputation and Tarnishment of Reputation (Dilution) 1. Identical or Similar Goods and Services 2. Identical or Similar Marks 3. The Exploitation of or Detriment to Distinctiveness or Reputation Without Due Cause by Unfair Means a. Exploitation of Reputation b. Exploitation of Distinctive Character c. Detriment to Reputation (Tarnishment of Reputation) d. Detriment to Distinctive Character (Tarnishment of Distinctiveness) C. Use as Trademark VIII. Conclusion

7 INDIA A. Trademarks B. Trade Names C. Trade Dress D. Evidence VII. Remedies VIII. Time Factor in Infringement Cases IX. Conclusion ITALY III. The Criteria and Parameters: When Is a Mark "Famous" or "Well-Known"? IV. Protection of Famous and Well-Known Marks A. Civil Protection B. Criminal Protection V. Damages VI. Conclusion JAPAN VIII. Protection of Famous and Well-Known Marks Against Cybersquatting IX. Conclusion MEXICO III. The Criteria: When Is a Mark "Well-Known"? RUSSIAN FEDERATION

8 A. Treaties and Agreements 1. Paris Convention; TRIPS Agreement 2. Multilateral (European Union-Russian Federation) (1997) 3. Bilateral (USA-Russian Federation) a. Agreement on Trade Relations (1992) b. Bilateral Investment Treaty (1992) B. National Law 1. Protection of Well-Known Marks - Background a. Trademark Law; Examination Guidelines b. Cases 1. JURASSIC PARK (copyright) 2. GROLSCH (trade name) 2. Protection of Well-Known Marks - Current SINGAPORE III. The Criteria: When Is a Mark "Well-Known"? A. Statutory Definition of a "Well-Known" Mark B. Concept of "Well-Known" in the Context of the Tort of Passing-Off C. Conclusion: "Overall Commercial Impression" and "Totality of the Evidence" A. Protection Under the Trade Marks Act B. Protection Under the Geographical Indications Act C. Protection Under the Tort of Passing-Off D. Protection of Well-Known Marks as Domain Names A. Significance of Bad Faith Under the Trade Marks Act B. Significance of Bad Faith Under the Geographical Indications Act C. Significance of Bad Faith in Passing-Off Cases D. Significance of Bad Faith in Domain Name Cases E. Bad Faith and Interlocutory Relief VI. Limitations on the Protection of Well-Known Marks VII. Future Developments SOUTH AFRICA A. Refusal or Cancellation of Registration B. Prohibition of Use III. The Criteria: When is a Mark "Famous" or "Well-Known"?

9 SPAIN III. The Criteria and Parameters: When Is a Mark "Famous" or "Well-Known"? A. Degree of Trademark Recognition B. Extent and Duration of Trademark Use C. Extent and Duration of Promotion of the Mark D. Geographic Area in Which a Trademark Is Recognized, Used, Advertised, Registered, and Defended and Other Factors for Determining Whether a Trademark Has Local, Regional or Worldwide Significance E. Degree of Inherent or Acquired Distinctiveness of Trademarks F. Degree of Trademark Exclusivity and Nature and Extent of Use of the Same or Similar Marks by Third Parties G. Nature of the Goods or Services and of the Channels of Trade for the Goods or Services Covered by a Trademark H. On Whether Well-Known Character and Renown Are the Same as a Reputation as a Symbol of Product Quality I. The Importance of a Trademark's Commercial Value I A. Bad Faith as a Determining Factor in Refusal of Registration B. Bad Faith as a Cause of Invalidity of a Registration C. Bad Faith as Grounds for Claiming Ownership of a Registration D. Bad Faith and Dolus as Elements of Wrongdoing (Particularly Criminal Wrongdoing) in the Infringement of Registered Trademark Rights V. Protection of Famous and Well-Known Marks on Non-Competing Goods A. Possible Business Connection or Sponsorship B. Taking Unfair Advantage of the Well-Known Status or Renown C. Protection Against Dilution of and Detriment to Well-Known and Famous Trademarks VI. Remedies A. Applications for Conflicting Marks Filed by Third Parties B. Conflicting Third-Party Registrations C. Third-Party Acts Infringing Rights That Do Not Involve the Register of Trademarks D. Damages E. Injunctive Relief VII. Customs Protection for Famous and Well-Known Marks VIII. Protection of Famous and Well-Known Trade Names IX. Conclusion UNITED KINGDOM A. The Terms "Famous Mark" and "Well-Known Mark" A. Relevant Supranational Agreements and Laws B. Article 6bis of the Paris Convention as Applied in the United Kingdom C. The TRIPS Agreement D. The Community Trade Mark III. The Criteria: When is a Mark "Famous" or "Well-Known"?

10 VIII. Conclusion UNITED STATES A. Infringement Proceedings B. Opposition or Cancellation Proceedings A. Confusion of Business Connection or Sponsorship B. Dilution C. Commercial Magnetism as a Ius In Se VIII. Conclusion A. Right of Publicity B. Color Marks and Product Configurations C. Customs D. Anti-Counterfeiting Seizures E. Residual Goodwill of Disused Famous Marks Disclaimer All information provided by the author and contributors of this Supplemental Resource to Famous and Well-Known Marks, An International Analysis is provided as a source of general information on trademark and related intellectual property issues. In legal matters, no publication whether in written or electronic form can take the place of professional advice given with full knowledge of the specific circumstances of each case and proficiency in the laws of the relevant country. While efforts have been made to ensure the accuracy of the information in this resource, it should not be treated as the basis for formulating business decisions without professional advice. No responsibility is accepted for the accuracy, completeness or relevance to the user's purpose of the information. Those using it for whatever purposes are advised to verify it with the relevant government department, case reporters or other sources. The author and contributors and the International Trademark Association therefore disclaim any liability however arising, including liability for negligence, errors or omissions, for any loss resulting from the use of, or reliance upon the information. Readers are advised to seek the assistance of their own expert legal counsel and other advisors with respect to any legal questions they may have relating to matters covered in this resource. We emphasize that trademark and related intellectual property laws vary from country to country, and between jurisdictions within some countries. The information included in this resource will not be relevant or accurate for all countries or states. Copyright International Trademark Association, 655 Third Avenue, 10th Floor, New York, NY USA phone +1 (212) fax +1 (212) memberservices@inta.org