FAMOUS MARKS
PROTECTION OF FAMOUS AND WELL-KNOWN TRADEMARKS
When deciding whether a mark is well- known, there is a lack of unity among the national authorities of Costa Rica as to the territory where the notoriety has to be proved, as María del Pilar López describes.
A defi nition of a well-known mark is not included in both the Paris Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). T e recognition of whether a trademark can be considered well-known is therefore interpreted on an independent national basis, and this has led to the situation where a well-known mark in one jurisdiction will not be found well-known in another.
In an attempt to simplify, unify and harmonise the above-mentioned international provisions, the Standing Committee on the Law of Trademarks of the World Intellectual Property Organization (WIPO) created the Joint Recommendation Concerning Provisions on the Protection of Well- Known Marks No. 833, adopted by the assembly of the Paris Union for the Protection of Industrial Property and WIPO’s general assembly in 1999.
Recommendation 833 states that “… the competent authority shall consider information submitted to it with respect to factors from which it may be inferred that the mark is, or is not, well-known, including, but not limited to, information concerning the following:
(i) T e degree of knowledge or recognition of the mark in the relevant sector of the public;
(ii) T e duration, extent and geographical area of any use of the mark;
(iii) T e duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;
(iv) T e duration and geographical area of any registrations, and/or any applications
for
registration, of the mark, to the extent that they refl ect use or recognition of the mark;
(v) T e record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognised as well- known by competent authorities; and
(vi) T e value associated with the mark.”
However, there is still no actual defi nition of a well-known trademark.
Statute of limitations of well- known marks
When it comes to well-known marks and unfair competition, the statute of limitations is a controversial issue. It would be simpler if it would only imply the annulment of a trademark registration, but it usually comes associated with a continued use of the infringed mark.
According to Article 6 bis of the Paris
Convention, of which Costa Rica is a member “… (2) A period of at least fi ve years from the date of registration shall be allowed for requesting the cancellation of such a mark. T e countries of the Union may provide for a period within which the prohibition of use must be requested.” Further on it continues to state that “… (3) No time limit shall be fi xed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith …”
Similarly, Article 4, item 5(b) and (c) of Recommendation 833, states that “… a member
48 World Intellectual Property Review Annual 2013
state may not prescribe any time limit for requesting the invalidation of the registration of a mark which is in confl ict with a well-known mark if the confl icting mark was registered in bad faith.
(b) Notwithstanding paragraph (4), a member state may not prescribe any time limit for requesting the prohibition of the use of a mark which is in confl ict with a well-known mark if the confl icting mark was used in bad faith.
(c) In determining bad faith for the purposes of this paragraph, the competent authority shall take into consideration whether the person who obtained the registration of, or used, the mark which is in confl ict with a well-known mark had, at the time when the mark was used or registered, or the application for its registration was fi led, knowledge of, or reason to know of, the well-known mark …”
So in accordance with the Paris Convention, no time limit shall be fi xed for the cancellation or the prohibition of the use of marks registered or used in bad faith, which may result in imprescriptible rights contrary to the legal certainty that should exist.
T e Convention also provides for a period of fi ve years to request the cancellation of a mark in the absence of bad faith, but what happens when the continued use of the mark involves unfair competition? According to Decision No. 000855- F-2005 of
the First Civil Court in November
2005, when there is a continued improper use, the statute of limitations of the fi ve-year term will not apply even if bad faith was not demonstrated. Some jurists support this theory, affi rming that
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