Publications- Well known marks- Well known law- -

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.

EU Directive – Article 5(2)

Closely aligned to these texts, in a European context, is the First Council Directive 89/104/EC (1998) Article 5(2) which deals with infringement (and its counterpart dealing with registration in Art 4(4)(a)):

“Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the reputeof the trade mark.”

This provision for extended protection is optional, but has been adopted as prescriptive for the CTM by Council Regulation 40/94/EC in Article 9(1)(c), with its counterpart in Art 8 (5), and in the UK Trade Marks Act (1994), statute 10(3), and its counterpart in s.5(3).[v]

Terminology –‘ well known’,’ famous’, ‘marks with a reputation’: a bit of a muddle?

Before we consider how the Paris Convention and TRIPS are to be understood in the context of EU and UK legislation, some considerations need to be made regarding terminology.

1.Famous v well known

The terms ‘well known’ and ‘famous’ are dictionary words with interchangeable meanings, viz. ‘known to many’ and ‘celebrated’ or ‘well known’ (Oxford Encyclopedic English Dictionary, Oxford 1991), and as such they are used in legal commentaries. However, they also have a meaning that is derived from their legal context within their respective legislative text. The term ‘famous’ does not appear in the First Council Directive 89/104, nor the UK Trade Marks Act (1994) nor the Council Regulation 40/94, but is found in the US Lanham Act s.43, being defined as “a mark [which]..is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” Such a mark could be a household name, or something which when mentioned in a book or film would not need any explaining. Other terms that are used interchangeably by US courts and commentators for famous marks include ‘notorious’,’ highly renowned’, ‘highly reputed’ and ‘exceptionally wellknown’, which, in the view of the 1992 World Trademark Symposium was confusing and reflected a ‘linguistic muddle’.[vi] This did not stop the Committee of Experts on well-known marks at WIPO in 1995 from proposing these same terms as a new international vocabulary whereby ‘famous’ marks could be differentiated from “mere” well known marks – in order to give them more extended protection covering dissimilar goods or services (which the Paris Convention did not give) - by use of terms which expressed a greater notoriety than what was simply ‘well known’. In the event, this recommendation was not taken up.[vii] TRIPS 16(3), just three years later in 1998, extended protection of ‘well known’ marks, under certain conditions, to cover dissimilar goods and services. So had the recommendation been adopted, this would have just added to the confusion.

Turning to Europe, Germany has recognised ‘famous’ marks in its domestic law, the courts according this status to a mark according to a quantitative criterion from market survey evidence: when it is recognised by more than 80% of the general public. When there is just 40% recognition, this entitles the mark to have the status of being ‘well known’. Italy, on the other hand, has recognised well known status at 71% of general public recognition.[viii

]

Well known v Having Reputation

The EU Directive and all countries like the UK that have modelled their law on it, use the term ‘reputation’ –which, as we have seen above, is not used in the Paris Convention or in TRIPS. The European Court of Justice in General Motors v Yplon (‘Chevy’), maintains, albeit incidentally in its discussion on what constitutes having reputation, a distinction between a well known mark (as per the Paris Convention), and a mark with a reputation.

It was noted that the Belgian and Netherlands Governments and the Commission submit that the condition in the Directive that a mark should have a 'reputation‘ is a less stringent requirement than the requirement of being well known. It was also the Advocate General Jacobs’ opinion that as the protection of well-known marks under the Paris Convention and TRIPs is an exceptional type of protection (being an exception to the principle of territoriality, as we will discuss below) afforded even to unregistered marks, it would be proper that the requirement of being well known imposed a relatively high standard for a mark to benefit from such exceptional protection, there being no such consideration in the case of marks with a reputation. Further, whereas the term 'well known‘ in Article 6 bis of the Paris Convention has a quantitative connotation (i.e. known to many’), that of reputation has, rather, a qualitative connotation - e.g. (1) what is generally said or believed about a person's or thing's character or standing ; (2) the state of being well thought of; distinction; respectability. The conclusion is that a trade mark with a reputation within the meaning of Article 5(2) of the Directive is to be interpreted as meaning a mark which is known to a significant part of the relevant sectors of the public, but which need not attain the same degree of renown as a mark which is well known within the meaning of the Paris Convention’.[ix]Many marks in fact enjoy substantial reputation despite

their lack of fame – e.g. ‘Vandoren’ for clarinet reeds, Knockando for malt whiskey and ‘Euthymol’ for dentifrices.[x]

Given this clarification, one which was recently alluded to in the UK courts by Justice Richard Arnold in Cipriani[xi], one would have expected clear delineation between the concepts of ‘well known’ and ‘reputation’ in subsequent legislative texts and in the opinions of the Advocate General. But not so. The European court itself uses the terms interchangeably, and surprisingly even in discussions of Article 5(2), at least in their English translations.

Thus, just recently in the L'Oréal SA v Bellure NV Opinion of Advocate General Mengozzi (Case C-487/07, 10 February 2009) the previous careful delineation of terms by Advocate General Jacobs appear to have been swept aside. References to marks with a reputation in the context of Art 5(2) have now become references to ‘well-known’ marks. For example, he states in section 37: Article 5(2) of the directive permits Member States to confer upon well-known trade marks greater protection than that provided for under Article 5(1). And in paragraph 58 he refers to Davidoff: “However, it cannot be ruled out that the broad interpretation of Article 5(2) followed by the case law initiated by Davidoff..., covers... situations in which a sign is used that is identical with the well-known mark for similar goods or services ....”[xii]

Is this the effect of the linguistic challenges of translating from varying original texts into some at least of the 22 other official EU languages, with blissful disregard for terminological tradition? The consequence is that now a new tradition of confusing terminology has been introduced, this new terminology being passed on even by luminaries of the Courts of England like Lord Justice Jacob. It may be permissible for him to refer in esure, using dictionary language to Direct Line as a ‘very very well known mark’[xiii] but he should know better, in the UK Court of Appeal action which lead to the referral, when writing “ ...it has been held at [25] in Davidoff v Gofkid ... that Art. 5(2) cannot be given an interpretation which would lead to well known marks having less protection where a sign is used for identical or similar goods or services, than where it is used for non-similar goods or services” [xiv]

If you look, on the other hand, at the official English translation of Davidoff on the www.curia.europa.eu website (translated from the German original), the paragraphs at issue, which are paragraphs 24-26, only talk about ‘marks with a reputation’.[xv]

Before drawing conclusions on this issue of terminology, it may be instructive to look at just three of the languages of the EU to see how these have been used in the texts considered above and whether the muddle has affected other languages too. We will look at, and compare in tabular form, Italian (the original language of the Opinion for L’Oreal), German (the original language of Davidoff) and French (the original language of the Paris Convention), comparing the terms well known and mark having a reputation in article 6bis of the Paris Convention, The Directive, in Davidoff, and the Opinion in L’Oréal.

What can be seen is that in the French and German versions the terms ‘well known mark’ and ‘mark with a reputation’ have indeed become freely interchangeable in L’Oréal. The Italian version alone (which is the language of the Opinion) does not in fact seem to have departed radically from the Paris Convention, but on the other hand there isn’t much difference in Italian anyway between the terms – ‘well-known’ and ‘having reputation’ both being based on the adjective ‘notorious’.

Does this inter-changeability of language really matter? This writer’s view is that, at the very least, we have inadvertently buried the original meaning of ‘well known’ as according to the Paris Convention. Throw in the extra ingredient of ‘famous’ mark, as found in US trade mark law with its own definition and legal context, and we really are in danger of what Jeremy Phillips describes (albeit in a slightly different context) as ‘confused thinking, poor analysis and resulting legal uncertainty’. [xvi]So time to unconfuse the thinking...

Meaning of the Paris Convention

Signed in Paris on 20 March 1883 by 11 States, the Paris Convention for the protection of industrial property (‘the Paris Convention’) is in fact a series of conventions incorporated in texts adopted by the revision conferences since the 1911 Washington conference. The text now in force is derived from the revision carried out at the 1967 Stockholm conference.[xvii] There are currently 173 contracting parties. To remind ourselves of the text of Article

6bis again:

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. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation.

(1)A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(2)No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.xviii

]

At the risk of stating the obvious, although not expressly indicated in the text, the main purpose of the provision was to protect well known marks which were not yet protected in another country through registration, as the history of the debates that led to the text indicate (this is worth remembering when we look at TRIPS momentarily).[xix] As the Advocate General Mengozzi in FINCAS TARRAGONA recently put it:

“The aim of the provision ... is to allow a proprietor of a mark registered or used in a Convention country to oppose its registration (or to have it invalidated if already registered) and its use in another Convention country in which the mark has become well known, even if it has not yet been registered. The basis for this is the idea that entitlement to the mark may arise, and must therefore be protected, by reason solely of the fact that the mark has become well known under a given national legal order.”[xx]

The matter of conflicting registrations in other countries, in the context of when the owner had first use but no registration, was first raised at the Washington diplomatic conference in 1911 and expressed a problem that needed addressing. The problem at this time was focused only on marks for goods – not services – which were liable to confuse or deceive, but only on similar goods and services. The discussion, therefore, was not on protection of marks that could harm through dilution, which became a separate issue and would be much more controversial as it would break the traditional trade mark principle of specialty.[xxi]

Mengozzi in his Opinion in FINCAS TARRAGONA, further states in the same paragraph quoted above:

The intention is clearly to discourage unfair practices made attractive by the reputation of the mark, so as to ensure that third parties are not able to appropriate it by registering or using it in a country where it is not yet protected, the result of which would be to prevent the proprietor from having access to the market in question or to make him feel that he should pay for the trade mark right to be transferred to him.

Compare this to what was said in 1924, at a preparatory meeting for the Hague amendments meeting:

It is not infrequent that traders or even other persons file applications for the registration of well-known foreign marks in order to obtain property therein and prevent the true owner of the mark to use it in the country in question or to make it expensive for him to obtain the right to use it. [xxii]

Plus ça change, plus c'est la même chose!

Thus, Article 6bis provides protection against what we could call confusingly similar marks (i.e constituting a reproduction, imitation or a translation) for identical or similar goods, as long as the mark is recognised as ‘well known’, where the mark does not – or does not yet – enjoy protection on the basis of a registration in that country or on the basis of an international or regional registration having effect in that country.

If a trade mark is registered, normally there is no need to invoke Article 6bis. However, where there is no or insufficient use of the mark to maintain the registration, depending on the stipulations of national law, the Convention could still provide continued protection as long as that jurisdiction applied Art 6bis to reputation-without- use scenarios (e.g. from spill-over advertising and trans-national telecommunications marketing). Also, Article 6bis typically provides relief where the filing date or priority date of the application was filed subsequent to the third party filing or third party use. Neither would an owner , without this provision, be able to apply for an injunction to stop use of an “infringing” mark between the period of his own application and registration.[xxiii]

The question of whether use is required in the country where protection is being sought has been the subject of hot debate ever since the text was first drafted. Article 6bis does not state that the use of a mark is not a prerequisite to the application of the provision. Hence some countries have argued that they were free not to protect well known marks which had not been used on their territory. An attempt in 1958 at the Lisbon Revision Conference to close this gap in protection making the provision applicable even when a mark had not been used failed to get unanimous approval. The Committee of experts on Well-known marks in 1995, subsequently also referred to by the Board of Directors of INTA in a Request for Action in September 1996, argued that the obligation of use already existed under Article 10bis on Unfair Competition where, under (3)(1), for example, there is a prohibition of “all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor”. Protection under this provision assumes use which generates goodwill, this being protected against confusion or misrepresentation, for example, by the common law action of passing-off in jurisdictions such as the United Kingdom. The corollary is that where there has not been sufficient use to establish goodwill, Article 6bis comes into play. Furthermore, it is illogical, so it was argued, that protection should be accorded to ‘normal’ registered marks during the initial period when use is not required (e.g. five years in the UK), whereas well known marks which are unregistered are not.[xxiv] This situation, so the INTA Resolution declared, contributes to a situation of inconsistent and unsatisfactory protection that “fosters public deception and commercial dishonesty, as well as poses an untoward risk that a company will be precluded from doing business under its own mark in a jurisdiction precisely because the strength of its reputation has led to a pirating of its mark.”[xxv] This lobbying was successful in so far as WIPO in its Joint Recommendation on Protection of Well Known Marks (1999), Article 2 (3)(a) (i), declares that:

(3) [ Factors Which Shall Not Be Required] (a) A Member State shall not require, as a condition for determining whether a mark is a well-known mark:

(i) that the mark has been used in, or that the mark has been registered or that an application for registration of the mark has been filed in or in respect of, the Member State.[xxvi]

We might note here in passing that in the UK Trade Marks Act (1994) under s.56, it is expressly stated that a wellknown mark of a qualifying proprietor (called ‘person’) is entitled to protection “whether or not that person carries on business, or has any goodwill, in the United Kingdom.”

Article 6bis of the convention, however useful to owners of well known marks, suffers from the dual restrictions of not being applicable to services (or ‘service marks’) and, most of all, does not provide protection against free-riders and those who purposely or inadvertently injure the mark through dilution on non-competing or dissimilar goods/services. For those nations who have been wedded to the specialty principle, being unsympathetic to dilution protests, this has been a serious issue with well known mark owners.

Regarding extension to services, already in 1925 Member States were free to extend protection, but were not mandated to do so.[xxvii] TRIPS 16(2)does mandate protection: Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. Whatever the legal effect of ‘mutatis mutandis’ actually is (‘the necessary changes having to be made’),[xxviii]it does not change the scope of protection of the Paris Convention as such, but it does oblige signatories of the WTO Agreement (of which there are currently 153 members) to extend the scope of Article 6bis to services in their own laws. The WIPO Trademark Law Treaty (with its 45 signatories), adopted just a few months later than TRIPS, in October 1994, requires under its Article 16 that ‘Any Contracting Party shall register service marks and apply to such marks the provisions of the Paris Convention which concern trademarks”. The ECJ recently ,in joined cases C 202/08 P and C 208/08 P (‘American Clothing’), 16 July 2009, also makes clear, following the Advocate General’s Opinion, that community legislature intended to extend protection to service marks, contradicting the CFI’s earlier view that mention in the community legislation of provisions within the Paris Convention did not imply extension of protection to services.

Finally, mention should be made of First Council Directive 89/104/EC (1998) Article 4 (2)(d) – where under the explanation of what constitutes ‘earlier trade marks’ for the purposes of grounds of refusal or invalidity as per Art 4(1), are the words: “trade marks which...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”. These words are reproduced exactly in the Council Regulation (EC) 40/94 (1993), Article 8(2)(c). In both the Directive and Regulation this is the only place where ‘well known’ mark is ever mentioned. In the corresponding section of the UK TMA (1994), s. 6 (1)(c), the wording has been changed to “a trade mark which...was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.”

It is now clear, following the reasoning behind the ECJ ruling in AMERICAN CLOTHING (which dealt particularly with Art 6ter - to do with state emblems etc), that the extent of protection given in Community legislation to a mark protected by the Paris Convention must be equivalent to what national legislation would give to national marks. [xxix] This means that services are necessarily protected under Community legislation even if the Convention itself may only protect goods. As a corollary since, following the Marleasing principle that national laws must if at all possible be construed in accordance with relevant EC/EU Directives,[xxx]the UK TMA (1994) likewise must be interpreted in light of the protection envisaged by Community legislation. Thus well known marks in the sense of Art 6bis in UK legislation necessarily cover services. [xxxi]

[i]“National Trademark Offices are often confronted with the problem that so-called’ trademark pirates’ apply for the registration of marks ahead in time of the true owners”. WIPO Committee of experts on well-known marks, Geneva 13-16 1995, Protection of well-known marks: results of the study by the International Bureau and prospects for improvement of the existing situation. Memorandum prepared by the International Bureau (hereinafter ‘WIPO Memorandum’), n.36 (WKM/CE/1/2).

[ii]Ronald Lehrman, “Reputation without use” and “Household Names”, Trademark World 3, 18 (1986), 27.

[iii]Relevant to this discussion are considerations of famous domain names, trade names and trade dress, geographical indicators and famous persons. These are considered in Frederick W. Mostert (ed), Famous and Well-

Known Marks’ available as an INTA publication, 2nd edition,

[iv]For a history of Art 6bis, see Ludwig Baeumer, “International Legislative History, within the framework of WIPO, of the recognition and protection of famous and well-known marks”, in Mostert, ibid, 3,1-27.

[v]The UK TMA, s.10(3) and s.5(3), was amended following the ECJ decision of Davidoff v Gofkid, Case 292/00, [2003] FSR 28 (p.490), which ruled that protection for marks that have a reputation should also be given for identical or similar goods (not requiring likelihood of confusion). Such amendment has resulted in the removal of the words ‘not similar’, and indeed any mention at all of goods and services. This has led to Lord Justice Jacob, in Intel v CPM , [2007] EWCA Civ 431, at 13, stating critically: “No one suggests the Act has a different meaning from the

[xxv]INTA Resolution September 18, 1996. The Resolution then goes on: BE IT RESOLVED, that the International Trademark Association endorses protection of well-known marks without requiring registration and/or actual use in the form of sales of goods or services bearing the mark in the jurisdiction in question if such mark has sufficient local reputation to be considered “well known.” Text on INTA website at: http://www.inta.org/index.php? option=com_content&task=view&id=238&Itemid=153&getcontent=3

[xxvi]WIPO Joint Recommendation on Protection of Well Known Marks (1999). Publication 833.In the Explanatory Notes, prepared by the International Bureau, it is noted, under Article 2, that the term ‘use’ is not defined. It then goes on to say: “Although promotion of a markmay well be considered to constitute use, it is included as a separate criterion for determining whether a mark is well known. This is mainly done in order to avoid any argument as to whether or not promotion of a mark can be considered to be use of the mark. Where an ever increasing number of competing goods and/or services are on the market, knowledge among the public of a given mark, especially as regards new goods and/or services, could be primarily due to the promotion of that mark. Advertising, for example, in print or electronic media (including the Internet), is one form of promotion. Another example of promotion would be the exhibiting of goods and/or services at fairs or exhibitions. Because the visitors at an exhibition may come from different countries (even if the access as exhibitors is limited to nationals from one country, for example, in the case of a national fair or exhibition), promotionin the sense of No. 3 is not limited to international fairs or exhibitions.”

[xxvii]Bodenhausen, ibid, 91(e). Cf. CFI judgments of 11 July 2007 in Case T 263/03 Mühlens v OHIM,

paragraph 54, and Case T 28/04 Mühlens v OHIM, paragraph 59, also ECJ joined cases C 202/08 P and C 208/08 P (‘American Clothing’), par 68.

[xxviii]Wikipedia describes the term thus: The term is used when comparing two situations with a multiplicity of common variables set at the same value, in which the value of only one variable is allowed to differ—"all other things being equal"—thereby making comparison easier (cf. ceteris paribus).

[xxix]In the Advocate General’s Opinion in ‘American Clothing’, the Paris Convention does not circumscribe the protection that must be given to a ‘foreign’ mark: 104. The essential aim of the Convention is to uphold the principle of national treatment, accompanying it with minimum rules for the protection of the objects of industrial property to which it applies. 105: The principle of national treatment covers the prohibition of discrimination against foreign signs, affording them the same legal protection as that given to patents, trade marks and designs at national level. It also includes a conflict of laws rule, under which, in the countries party to the Convention, industrial property cases are to be judged in accordance with the lex loci proteccionis, that it to say, according to the law of the State in which legal protection is sought for the invention, mark or design, in accordance with the principle of territoriality inherent in the Convention. 106. Consequently, the signatories of the Paris Convention are required to apply their industrial property laws in the same way to the trade marks of their citizens and to those of the subjects of the other States Parties, who may claim, as a minimum, the protection provided under the Convention. 109. In short, the extension of the protection ... to service marks does not derive from the Paris Convention, but from national or Community legislation.

[xxx]Case C-106/89 Marleasing SA v La ComercialInternacional de Alimentation SA [1990] I-ECR 4135

[xxxi]Cf. Richard Arnold QC, Le Mans Autoparts Ltd’s Trade Mark Application (O/012/05), 49: “The scheme of the

Directive is that trade marks which at the relevant date are well known qualify as “earlier trade marks” within Article 4(2)(d) and hence receive the protection that is available under Article 4(1) to all earlier trade marks. This is so regardless of whether the mark in question would be protected under Article 6bis of the Paris Convention. Thus it is immaterial that the mark would not be protected under Article 6bis e.g. because it is only well known in respect of services.

First published in the ITMA Review of October 2009