WELL-KNOWN MARKS
Inc, owner of several earlier Community and national trademarks for ‘Botox’, requested the cancellation of these trademarks.
OHIM considered that there was no real risk of confusing the products, but nevertheless admitted that the use of the trademarks ‘Botolist’ and ‘Botocyl’ would take unfair advantage of the reputation of the earlier ‘Botox’ marks. Helena Rubinstein and L’Oréal requested without success the cancellation of this decision before the CJEU, which in turn validated OHIM’s decision. Te evidence brought by Allergan, such as press articles published in scientific journals, English daily newspapers or the inclusion of the word botox in English dictionaries, showed sufficient proof that its ‘Botox’ trademarks had gained reputation.
Te possible detriment done to the distinctive character of the earlier trademark or to the repute of a trademark shall also be taken into consideration when analysing a conflict between a well-known trademark and a new trademark application.
Proof of character
Trademark owners oſten face difficulties to prove that their trademark is well-known in order to obtain benefit from wider protection offered by trademark law to such trademarks.
In its Joint Recommendation concerning Provisions on the Protection of Well-Known Marks, the World Intellectual Property Organization (WIPO) established guidelines to help determine whether the specific status described above can be granted to a trademark. One of the most important indicators mentioned is the degree of knowledge or recognition of the mark to the relevant public. Further indicators are also taken into consideration when examining the level of recognition of a trademark such as the duration, extent and geographical area of any use of the mark or of any promotional activity around it, the number of countries where the trademark has been filed if the trademark rights have been successfully endorsed somewhere, and the value associated with the trademark.
“EVEN THOUGH WELL- KNOWN TRADEMARKS ARE PROTECTED MOST OF THE TIME EVEN WHEN THEY ARE NOT REGISTERED, IT IS ALWAYS ADVISABLE TO REGISTER THEM IN ORDER TO ENSURE PROTECTION.”
Te definition of a well-known trademark is difficult to establish and can vary depending upon the relevant jurisdiction. Numerous and different criteria can be taken into account when granting this increased level of protection to a trademark. Terefore, when confronted with this level of uncertainty, even though well-known trademarks are protected most of the time even when they are not registered, it is always advisable to register them in order to ensure protection.
In a recent decision (Case T-357/11, December 14, 2012), the General Court had to explain the relationship between the level of recognition of a trademark and the burden of proof of the prejudice caused to well-known trademarks by third parties’ trademark applications designating different goods and services.
Te trademark ‘Bimbo’, registered in Spain and well-known for bread (Classes 5, 29 and 30), was the basis of the opposition filed at OHIM by Bimbo SA against the application filed by Grupo Bimbo SAB de CV for the registration of
the figurative trademark ‘Grupo Bimbo’,
protecting products and services in Classes 5, 29, 30-32, 35 and 43. OHIM rejected the trademark application on the basis of Article 8(1)b of the Community Trademark Regulation for similar products and on the basis of Article 8(5) of the regulation (concerning the relative grounds for refusal) for the other products.
Tis decision was cancelled by the Board
of Appeal which considered that, given the differences stated between the products and services offered under the trademarks in conflict, no harm could be done to the reputation of the trademark, no matter how high the recognition level was. Te General Court cancelled this decision and ruled that there is no need for an opponent to the registration of the conflicting trademark to bring any further argument or proof of any other factual element if the degree of recognition of the trademark is exceptionally high. Tis substantiates alone the risk of detriment that could be done to the repute of the prior trademark.
16 World Intellectual Property Review Annual 2013
Clémence Le Cointe holds a Master’s degree in IP law. She is experienced in the management of outsourced trademark portfolios of international companies. She assists multinational clients, especially in the pharmaceutical industry in all relevant trademark matters.
Dennemeyer & Associates is an international IP law firm, providing the full range of legal services relating to intellectual assets worldwide.
www.worldipreview.com
Te specific protection offered to well-known trademarks is an aspect that should be always taken into consideration while applying for a new trademark. Any earlier application can always infringe the rights of a company that owns a non-registered well-known trademark and could be considered an unfair competition practice.
Clémence Le Cointe is a French trademark attorney at Dennemeyer & Associates in Munich. She can be contacted at
clecointe@dennemeyer-law.com
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