THE SCOPE OF PROTECTION OF WELL-KNOWN TRADEMARKS Forum on Legal Protection Of Well-known trademarks PAUL RANJARD September 7, 2008

OUTLINE Primary function of the trademark : distinction Protection of consumers against confusion Well-known trademarks / Paris convention (6bis) Secondary function of the trademark : attraction Protection of economic value for the owner EU regulation (8.5) & TRIPS (16.3)

A. Primary function : distinction To guide the consumer towards a particular product/service, amongst products/services of the same nature To guarantee a certain indication of quality Avoid confusion between products/services Protect the consumer

Primary function : distinction EU Directive 21 Dec 1988 (Art 4.1.b) Regulation 20 Dec 93 (Art 8.1) Community Trademark Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered: if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected; if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

Primary function : distinction “… the likelihood of confusion includes the likelihood of association with the earlier trade mark” was inserted at the request of Benelux countries. Sabel vs Puma (European Court of Justice) 11 Nov 1997 “the concept of likelihood of association is not an alternative to that of likelihood of confusion” If no likelihood of confusion, no protection

Primary function : distinction Paris Convention article 6 bis (1967) “(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods…” Non-registered trademark protected if well known Consumer protected against risk of confusion

Primary function : distinction EU Community Trademark Regulation 20 Dec 93 (Art 8.2.c) 2. For the purposes of paragraph 1, earlier trade marks means: (c) trade marks which, on the date of application for registration of the Community trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the Community trade mark, are well known in a Member State, in the sense in which the words “well known” are used in Article 6 bis of the Paris Convention.

B. Secondary function : attraction Image of success, quality, luxury Economic value for the owner Need of protection against Dilution (blurring / tarnishment) Coca Cola with many products, or engine oils.. Parasitism

Secondary function : attraction TRIPS (1994) Article 16 - Rights Conferred 3. Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar 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. The concept of “connection” ( or “risk of association”) applies to well-known trademarks used on non similar goods

Secondary function : attraction EU Regulation 20 Dec 93 (Art 8.5) 5. Furthermore, upon opposition by the proprietor of an earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with or similar to the earlier trade mark and is to be registered for goods or services which are NOT SIMILAR to those for which the earlier trade mark is registered, where in the case of an earlier Community trade mark the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned AND where the use without due cause of the trade mark applied for would take unfair advantage of, OR be detrimental to, the distinctive character OR the repute of the earlier trade mark.

Secondary function : attraction Use of the trademark on other goods Detrimental to the distinctive character (“blurring”) the repute (‘tarnishment”) Take undue profit of distinctive character or reputation “parasitism”

Secondary function : attraction A loophole : Use of a “remotely” similar trademark on identical or similar goods/services, Creating a likelihood of association Nothing in the Directive or the Regulation

Secondary function : attraction European Court of Justice Davidoff (5 June 2003) “… cannot give an interpretation which would lead to marks with a reputation having less protection where a sign is used for identical or similar goods or services” Adidas II (29 October 2003) “… grant protection which is at least as extensive for identical or similar goods or services as for non-similar goods or services”

CONCLUSION

IDENTICAL/SIMILAR GOODS REGISTERED (TRIPs 16.3) REGISTERED NOT REGISTERED (Paris 6 bis) ( Davidoff -Adidas) NON-SIMILAR GOODS IDENTICAL/SIMILAR GOODS IDENTICAL/SIMILAR GOODS WELL-KNOWN REPUTATION WELL-KNOWN TARNISHMENT BLURRING IDENTICAL IDENTICAL similar Parasitism similar NO CONFUSION BUT ASSOCIATION confusion association TRADEMARK OWNER CONSUMERS

THANK YOU ! Paul Ranjard ranjard@wanhuida.com