WELL-KNOWN TRADEMARKS
When a trademark has achieved the status of a ‘renowned mark’, it reassures consumers that goods and services designated by this trademark are of a high quality or present a certain image of luxury, lifestyle and exclusivity (judgment of 18/06/2009, C-487/07 L’Oréal). T erefore, if someone else uses an identical or similar trademark it is obvious that he is taking unfair advantage of, and is being detrimental to, the distinctive character and reputation of the earlier mark.
Public awareness
One of the factors when assessing whether a trademark has achieved renowned character is the public’s awareness of the mark. An infringer, usually acting in a diff erent business line to the owner of the renowned mark, would like the consumers of his goods and services to consider that the goods are of the same quality as the goods marked with the reputable trademark. When this second company marks its products with the reputable trademark, that trademark becomes less distinctive.
But who is to judge whether such detriment has occurred? According to the jurisdiction it is an average consumer of goods and services for which this trademark is registered. T is consumer is deemed to be
reasonably well informed,
reasonably observant and circumspect (judgment of 27/11/2008, C-252/07 Intel, para. 35).
“SOMETIMES GOODS/SERVICES DESIGNATED BY LATER TRADEMARKS ARE SO DIFFERENT FROM THE GOODS OR SERVICES DESIGNATED BY THE RENOWNED MARK THAT IT WOULD BE DIFFICULT TO DISCERN ANY ASSOCIATION BETWEEN THEM.”
Moreover, it should be underlined that not every renowned trademark will be tarnished. It is more diffi cult to prove that the use of identical or similar trademarks has detrimental infl uence if the earlier trademark consists of very common and frequently used signs. Fanciful trademarks enjoy stronger protection in this case.
Sometimes goods/services designated by later
trademarks are so diff erent from the goods or services designated by the renowned mark that it would be diffi cult to discern any association between them. For example, such an opinion was presented by the Board of Appeals in its decision of 05/06/2000 R 802/1999-1 in the case of Duplo, in which the renowned mark was designed to designate chocolate while the latter one covered printing inks, staplers, hole punchers and photocopiers.
Detriment to the trademark’s distinctive character may have various forms, and dilution may be caused by ‘blurring’ or ‘tarnishment’. Although the fi nal eff ect on the damaged trademark is the same, the actions causing this eff ect are diff erent.
Dilution by blurring means using an identical or highly similar mark for marking identical or
30
Trademarks Brands and the Internet Volume 2, Issue 3
www.worldipreview.com
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44