Famous and Well-Known Marks

1. What is a famous mark?

Famous marks are those that enjoy a high degree of consumer recognition. However, few trademarks enjoy the status of fame. Examples of marks held to be famous in certain jurisdictions include COCACOLA, KODAK, WIMBLEDON and VIAGRA.

2. How is fame determined?

Fame is determined differently from jurisdiction to jurisdiction. Some jurisdictions allow a mark owner to apply for certification that its mark is famous. Most jurisdictions, however, require fame to be determined on a case-by-case basis within the context of an infringement proceeding or administrative challenge. Evidence relevant to the fame of a trademark may include sales and revenue figures, geographical scope of use, channels of trade, distinctiveness, registrations in home and other countries, past enforcement efforts, consumer recognition and the existence of similar marks owned by third parties.

3. Are famous marks accorded different protection than non-famous marks?

In an infringement action, famous marks are generally accorded a broader scope of protection, which means that infringement may be easier to establish. Also, in many jurisdictions famous marks are protected against even non-competing, unrelated uses, on the basis that such use of a confusingly similar mark will dilute the distinctiveness of the famous mark.

For example, the United States recognizes a federal cause of action for dilution of a famous mark. In this context, dilution means the lessening of the capacity of a mark to identify and distinguish goods or services, or a tarnishing of the mark. Dilution is applicable regardless of whether the parties are competitors or whether there is any likelihood of confusion. In contrast, protection for a non-famous mark requires a finding of likelihood of confusion. Thus, while it takes additional effort to prove that a mark is famous, such designation can afford a famous mark with a broader scope of protection than a nonfamous mark.

4. What is the difference between a famous and a well-known mark?

Some jurisdictions treat famous and well-known marks as synonymous. Most jurisdictions, however, distinguish between famous and well-known marks. In these jurisdictions, famous marks enjoy a higher degree of reputation than well-known marks. A famous mark often needs to be registered in at least its home country for protection, whereas well-known marks are usually protected without the need for any registration. On the other hand, well-known marks are often protected only for goods and services related to those with which it is already associated, whereas famous marks may be protected from unauthorized use on non-competing goods and services. Thus, it is generally more difficult to prove that a mark is famous as opposed to well-known.

5. Is there any international protection for well-known marks?

Well-known marks are protected by various international treaties. For example, the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights(the TRIPS Agreement) require member countries to pro tect a well-known mark even if the mark is not registered or used in that country. Protection for well-known, unregistered marks under the Paris Convention is usually limited to goods and services that are identical or similar to those goods or services for which the trademark is known and in situations where use is likely to cause confusion. Under the TRIPs Agreement, protection may be extended to different goods or services if the use suggests a connection to the owner of a well-known registered mark, if the owner is likely to be damaged by such use. However, the implementation of protection under these treaties may not be uniform in all jurisdictions. Thus, if a mark is not used in a particular jurisdiction, but its owner can establish that the mark is famous or well-known elsewhere in the world, the owner can often prevent a third party from using or registering the mark in the particular jurisdiction. Generally, evidence such as certificates of registration, sales and advertising figures, third-party recognition or awards, and advertising materials are needed to prove fame. Findings of fame in other jurisdictions can also be persuasive.

6. How is a mark shown to be well-known?

Similar to fame, the determination of whether a mark is well-known is conducted on a jurisdiction by jurisdiction basis, and the factors reviewed are similar to those for famous marks. The World Intellectual Property Organizations report entitled Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks recommends the following factors to determine whether a mark is well-known: the degree of knowledge or recognition of the mark in the relevant sector of the public; the duration, extent and geographical area of any use or promotion of the mark; the value of the mark; and the record of successful enforcement of the mark.

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A Trade Mark is a distinguishing trade sign intended to differentiate the goods and/or the services of a given entity from the ones of another entity; the Establishment Name is a sign used to differentiate the physical location where a commercial activity is rendered whereas the company name is the designation attributed to the company upon its incorporation and must indicate the type of financial involvement of the partners.

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A copyright is the legal right granted to an author, composer, playwright, or artist to exclusive publication, reproduction, sale, distribution, or performance of an independently created literary, musical, dramatic, or artistic work. Copyright gives the creators of certain kinds of material the right to control the ways their material can be used. These rights begin as soon as the material is recorded in a tangible medium of expression. The owner of a copyright in particular material may prevent others from doing any of the following copying; adapting or creating derivative works; distributing;

communicating to the public by electronic transmission; renting or lending copies to the public; and, performing in public

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In many countries, there is no official register for copyrights. Unlike patents, registered designs or trade marks, there is no need to file an application or take any official action. A copyright comes into effect immediately, as soon as something that can be protected is created and "fixed" in some way in a medium of expression such as paper, film, sound recording, or an electronic format such as the Internet. Examples of some of the types of works that can be the subject of copyright protection are the following; i. ii. iii. iv. v. vi. vii. viii. original literary works, e.g. novels, instruction manuals, computer programs, lyrics for songs, articles in newspapers, some types of databases, but not names, trademarks, phrases or slogans. original dramatic works, including choreographic works of dance or mime; original musical works; original artistic works, e.g. paintings, engravings, photographs, sculptures, collages, works of architecture, technical drawings, diagrams, maps, logos; published editions of works, i.e. the typographical arrangement of a publication; sound recordings, which may be recordings on any medium, e.g. tape or compact disc, and may be recordings of other copyright works, e.g. musical or literary; films, including videos; and broadcasts

A copyright protects the way an idea is expressed in a piece of work, but it does not protect the idea itself.