Protection of trademarks

(ii) when the later mark is registered for dissimilar goods or services, irrespective of whether a risk of confusion or

Protection of trademarks

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in Article 8(2)(c), that one of the earlier rights which may prevent the registration of a Community trademark is any mark which is well-known in one of the Member States of the E.U. "in the sense in which the words well known are used in Article 6bis". Interestingly, the Regulation creates another sort of mark, one which has a reputation, and this can be utilised by its owner to prevent the registration of a later mark also for dissimilar goods or services. Most commentators are agreed that this mark referred to Article 8, and this has now been confirmed by the European Court of Justice in Luxembourg in a case involving the trade mark CHEVY (Case C-375/97 General Motors Corporation v. Yplon S.A.).6bis of the Paris Convention reads as follows:

(1) The countries of the Union undertake (a), 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 (b) which constitutes a reproduction, an imitation, or a translation, liable to create confusion (c), of a mark (d) considered by the competent authority of the country of registration or use to be well known (e) in that country as being already the mark of a person entitled to the benefits of this Convention (f) and used for identical or similar goods (g). These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

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

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

(a) One of the questions which arises with respect to this Article is whether it may be considered "self-executing" - in countries which admit such possibility - with the result that interested parties may directly claim its application by the administrative or judicial authorities of the country concerned. This question gives rise to the following observations.

On the one hand, in stipulating that "the countries of the Union undertake...", the Article is drafted differently from many other Articles of the Convention, which direcly refer to rights or obligations of interested parties (for example, Articles 2, 3, 4, 4ter, 5bis, 5ter, 5quater, 6, 6septies, 8), or directly regulate a situation at issue (for example, Articles 4bis, 5 A(1), (3) to (5), B, C, D, 6quater, 6quinquies, 7). Nor, on the other hand, does Article 6bis refer only to an undertaking by the countries of the Union to legislate on a particolar matter, as in the case, for example, with Article 10ter and 11. Therefore, and although the Article leaves certain liberties to national legislations (paragraph (1): "if their legislation so permits"; paragraph (2): "a period of at least five years... shall be allowed..."; "The countries of the Union may provide for a period..."), it cannot be deemed only to oblige the Member States to legislate on the subject concerned, but may be considered to contain an undertaking also on behalf of the administrative and judicial authorities of these States, which - if compatible with their constitutional systems - must then give effect to the provisions of the Article at the request of interested parties.

(b) The provision under consideration refers only to trademarks and not to service marks. The Member States are therefore not obliged to apply it to service marks, but are free to do so in analogous sutiations.

(c) The purpose of the provision under consideration is to avoid the registration and use of a trademark, liable to create confusion with another mark already well known in the country of such registration or use, although the latter well-known mark is not, or not yet, protected in that country by a registration which would normally prevent the registration or use of the conflicting mark. This exceptional protection of a well-known mark has been deemed to be justified because the registration or use of a confusingly similar mark will in most cases amount to an act of unfair competition, and may also be considered prejudicial to the interests of those who will be misled. Whether a trademark will be liable to create confusion with a well-known mark will be determined by the competent authority of the country concerned, and in so doing the said authority will have to consider the question from the viewpoint of the consumers of the goods to which the marks are applied. The provision specifies that such confusion may occur in cases of reproduction, imitation or translation of the well-known mark, or even if only an essential part of a mark constitutes a reproduction or confusing imitation of the well-known mark.

(d) The word "mark" in itself would not exclude the extension of the envisaged protection also to well-known service marks, but the words "used for identical or similar goods" make it clear that only well-known trademarks are covered by the provision. The Member States are, however, free to apply the same rules also to service marks in analogous circumstances.

(e) A trademark may be well known in a country before its registration there and, in view of the possible repercussions of publicity in other countries, even before it is used in such country. Whether a trademark is well known in a country will be determined by its competent administrative or judicial authorities. The Revision Conference of Lisbon in 1958 rejected a proposal according to which use of a well-known mark in the country in which its protection is claimed would not be necessary for such protection. This means that a Member State is not obliged to protect well-known trademarks which have not beeb used on its territory, but it will be free to do so. In view of the vote taken at the Lisbon Conference, the great majority of the Member States will probably adopt this attitude.

(f) A well-known trademark will, naturally, only be protected by the Article under consideration if it belongs to a person entitled to the benefits of the Convention, that is, to a natural or legal person who may claim the application of the Convention according to Articles 2 or 3. The provision under examination, however, goes further than that when it states that, in order to be protected, the mark must be considered well known in the country concerned "as being already the mark of" such person. The history of the provision shows, however, that it will be sufficient if the mark concerned is well known in commerce in the country concerned as a mark belonging to a certain enterprice, without its being necessary that it also be known that such enterprice is entitled to the benefits of the Convention. Nor is it necessary - and it is therefore not necessary to prove - that the person who has applied for or obtained a conflicting registration or who uses a conflicting mark possessed such knowledge.

(g) The protection of well-known marks, according to the provisions under examination, applies only with respect to other marks filed, registered or used for identical or similar goods. Whether this condition is fulfilled will be determined by the administrative or judicial authorities of the country in which protection is claimed.

(h) In order to give the owner of a well-known trademark sufficient time to react to the registration of a conflicting mark, this provision specifies that he must have a period of at least five years during which he may request the cancellation of such registration. This minimum period was three years until the Revision Conference of Lisbon in 1958. The words "at least" indicate that the fixation of the period is left, on condition thai it may not be shorter that five yaers, to the national legislation or to decisions of the administrative or judicial authorities of the Member States.

(i)The Member States are free also to provide for a period within which the prohibition of use of the conflicting mark must be requested, but no minimum is indicated for this period.

(j) The administrative or judicial authorities of the country in which the protection of a well-known mark is requested will determine whether the conflicting mark is registered or used in bad faith, in which case no time limit for action will prevail. Bad faith will normally exist when the person who registers or uses the conflicting mark knew of the well-known mark and presumably intended to profit from the possible confusion between that mark and the one he has registered or used.

Thus, many features of the protection provided for and many situations not expressly contemplated in Article 6bis may be noted:

1. Nothing is said in the Convention regarding the protection of service marks, nor about the possibility of relying upon Article 6bis to take action against an unauthorized third party that adopts the well-known trademark in relation to different in Article 6bis extends only to trademarks (marks in respect of goods), and does not extend to service marks (used in respect of services). By virue of Article 16 of

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