Marques 2015: Well-known TM rights need clarification

The legal rights afforded to well-known and famous trademarks must be clarified, a brand valuation expert has told the Marques conference.

David Haigh, head of Brand Finance, told delegates at the Marques 29th Annual Conference that there is a lot of “mushiness” and “lack of clarity” over a brand’s rights once its marks are considered well-known or famous.

Haigh cited the International Trademark Association’s (INTA) definition of a famous mark, as having a reputation among all consumers, and a well-known mark, which it says is familiar to those within the relevant industry.

According to INTA, famous marks often need to be registered in the brand’s home country for protection, whereas well-known marks do not.

“Clarify these terms and provide a central register that lists brands that are considered famous and well-known,” Haigh said.

“Show what the criteria is in order to achieve protection. And show how well-known status adds ‘X amount’ to a company. Then the rights will be taken more seriously,” he added.

Lydia Gobena, partner at law firm Fross Zelnick Lehrman & Zissu, advised delegates to “constantly monitor how the trademark is being used in the industry to avoid it becoming generic”.

She advised to be wary of dictionaries that put trademarked terms in them.

Jorge Casals, regional IP counsel for Europe at Red Bull, said obtaining well-known status is important to the drinks company.

“Where we can register for well-known status we will always go after it,” he said.

He advised trademark lawyers to “litigate as much as necessary”, but acknowledged that sometimes it is better to take the “soft approach” to enforcing a well-known mark.

“Once entering litigation we always invoke a well-known mark argument, because it makes it easier to prove a likelihood of confusion,” he added.

The Marques Annual Conference runs from September 15 to 18.