Reputation and proof: protecting a well-known trademark

A well-known trademark can be defined as a trademark known by a large portion of the public and that can be immediately recognised as relating to the products and services for which it is used. L’Oréal, Adidas, Intel, and Apple are trademarks that definitely fit this definition.

Protection offered

The international protection of well-known trademarks is governed by Article 6bis of the Paris Convention and Article 16.3 of the Trade-Related Aspects of IP Rights (TRIPS) Agreement. The right of the owner of a wellknown trademark to act against an infringing trademark application can be based on three arguments, one of them at least having to be recognised by the court to obtain the cancellation of the conflicting trademark.

The first and most-used argument is the applicant’s intent to take unfair advantage of the repute of the earlier trademark. In its Spa decision (Case T-67/04, May 25, 2005), the European General Court explained this criterion as follows: “As regards the condition of taking unfair advantage of the distinctive character or the repute of the earlier mark, this must be intended to encompass instances where there is clear exploitation of freeriding on a famous mark or an attempt to trade upon its reputation.”

In its Botox decision (Case C-100/11P, May 10, 2012) concerning a lawsuit initiated against Helena Rubinstein SNC and L’Oréal SA, the Court of Justice of the European Union (CJEU) presented its understanding of this criterion.

In 2003, the Office for Harmonization in the Internal Market (OHIM) accepted the registration of the trademark ‘Botolist’ applied for by Helena Rubinstein as well as the trademark ‘Botocyl’ applied for by L’Oréal, both in relation to cosmetic products. The company Allergan Inc, owner of several earlier Community and national trademarks for ‘Botox’, requested the cancellation of these trademarks.

OHIM considered that there was no real risk of confusing the products, but nevertheless admitted that the use of the trademarks ‘Botolist’ and ‘Botocyl’ would take unfair advantage of the reputation of the earlier ‘Botox’ marks. Helena Rubinstein and L’Oréal requested without success the cancellation of this decision before the CJEU, which in turn validated OHIM’s decision.

The evidence brought by Allergan, such as press articles published in scientific journals, English daily newspapers or the inclusion of the word botox in English dictionaries, showed sufficient proof that its ‘Botox’ trademarks had gained reputation.

The possible detriment done to the distinctive character of the earlier trademark or to the repute of a trademark shall also be taken into consideration when analysing a conflict between a well-known trademark and a new trademark application.

Proof of character

Trademark owners often face difficulties to prove that their trademark is well-known in order to obtain benefit from wider protection offered by trademark law to such trademarks.

“EVEN THOUGH WELL-KNOWN TRADEMARKS ARE PROTECTED MOST OF THE TIME EVEN WHEN THEY ARE NOT REGISTERED, IT IS ALWAYS ADVISABLE TO REGISTER THEM IN ORDER TO ENSURE PROTECTION.”

In its Joint Recommendation concerning Provisions on the Protection of Well-Known Marks, the World Intellectual Property Organization (WIPO) established guidelines to help determine whether the specific status described above can be granted to a trademark. One of the most important indicators mentioned is the degree of knowledge or recognition of the mark to the relevant public.

Further indicators are also taken into consideration when examining the level of recognition of a trademark such as the duration, extent and geographical area of any use of the mark or of any promotional activity around it, the number of countries where the trademark has been filed if the trademark rights have been successfully endorsed somewhere, and the value associated with the trademark.

In a recent decision (Case T-357/11, December 14, 2012), the General Court had to explain the relationship between the level of recognition of a trademark and the burden of proof of the prejudice caused to well-known trademarks by third parties’ trademark applications designating different goods and services.

The trademark ‘Bimbo’, registered in Spain and well-known for bread (Classes 5, 29 and 30), was the basis of the opposition filed at OHIM by Bimbo SA against the application filed by Grupo Bimbo SAB de CV for the registration of the figurative trademark ‘Grupo Bimbo’, protecting products and services in Classes 5, 29, 30-32, 35 and 43.

OHIM rejected the trademark application on the basis of Article 8(1)b of the Community Trademark Regulation for similar products and on the basis of Article 8(5) of the regulation (concerning the relative grounds for refusal) for the other products.

This decision was cancelled by the Board of Appeal which considered that, given the differences stated between the products and services offered under the trademarks in conflict, no harm could be done to the reputation of the trademark, no matter how high the recognition level was.

The General Court cancelled this decision and ruled that there is no need for an opponent to the registration of the conflicting trademark to bring any further argument or proof of any other factual element if the degree of recognition of the trademark is exceptionally high. This substantiates alone the risk of detriment that could be done to the repute of the prior trademark.

The definition of a well-known trademark is difficult to establish and can vary depending upon the relevant jurisdiction. Numerous and different criteria can be taken into account when granting this increased level of protection to a trademark. Therefore, when confronted with this level of uncertainty, even though well-known trademarks are protected most of the time even when they are not registered, it is always advisable to register them in order to ensure protection.

The specific protection offered to well-known trademarks is an aspect that should be always taken into consideration while applying for a new trademark. Any earlier application can always infringe the rights of a company that owns a non-registered well-known trademark and could be considered an unfair competition practice.

Clémence Le Cointe is a French trademark attorney at Dennemeyer & Associates in Munich. She can be contacted at clecointe@dennemeyer-law.com