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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s left as to the criteria of recognition and scope of protection of well-known marks. As a reply to this demand in 1995 World Intellectual Property Organization (WIPO) started working on what is now known as Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks .Preface to this document clearly states that the "Recommendation is the first implementation of WIPOs policy to adapt to the pace of change in the field of industrial property by considering new options for accelerating the development of international harmonized common principles". Joint Recommendation is not legally binding, and therefore is a flexible instrument of international harmonization in the field of trademark law. It has a profound significance for countries, which seek to comply with their international obligations and are on the stage of development of their national legislation concerning protection of well-known marks. But for the countries that already have an elaborated legislation and judicial practice in this field, the Joint Recommendation may at times be seen as controversial.Joint Recommendation addresses the issues that have stayed unclear since the introduction of the Article 6bis of the Paris Convention, namely i) the determination of a well-known mark in a Member State, by offering guidelines for assessment of a mark for being well-known; ii) the scope of protection of well-known marks, by defining marks, business identifiers and domain names conflicting with a mark deemed well-known.2(1)(b) of the Joint Recommendation proposes the following non-exhaustive list of types of information that must be taken into account by competent authority when determining whether a mark is well-known in a Member State:

(1) the degree of knowledge or recognition of the mark in a relevant sector of the public;

(2) the duration, extent and geographical area of any use of the mark;

(3) the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies;

(4) the duration and the geographical area of any registrations, and/ or any applications of the mark, to the extent that they reflect use or recognition of the mark;

(5) the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities;

(6) the value associated with the mark.

The approach of true flexibility in application of Joint Recommendation is reflected in Art. 2(1)(c), which states that

"the determination in each case will depend upon the particular circumstances of that case. In some cases all of the factors may be relevant. In other cases some of the factors may be relevant. In still other cases none of the factors may be relevant, and the decision may be based on additional factors that are not listed in subparagraph (b), above. Such additional factors may be relevant, alone, or in combination with one or more of the factors listed in subparagraph (b)".. 2(3) also provides for the list of "non-requirements" for well-known marks. It is not required:

(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;

(ii) that the mark is well known 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, any jurisdiction other than the Member State; or

(iii) that the mark is well known by the public at large in the Member State.

Thus, according to this article, the mark only needs to have a reputation in "the relevant sector of the public" and not the public at large. Also, use and/or registration cannot be a requirement for protection.to the question of the scope of protection for a well-known mark against conflicting marks, business identifiers and domain names, the Joint Recommendation establishes that it shall be at least from the time when the mark becomes well known in the Member State, and that bad faith should be considered in balancing the interests of the parties involved when assessing possible infringement of well-known marks.also stipulates the conditions under which a mark is deemed to be in conflict with a well-known mark in respect of identical or similar goods and/or services. The provisions also cover conflicts with regard to dissimilar goods and services. However, in these cases, knowledge of the public at large can be required.conclusion, it must be said that although the Joint Recommendation is a "soft" law document, and has some controversial provisions, it is a document reflecting a very high level of international consensus on harmonization of the national substantive law on protection of well-known marks, and is widely recognized and supported as one of the basic documents in this field.

 

Chapter 2. Protection of well known trademarks in Italy

12(1)(b) and (g) of the Italian Industrial Property Code (D.Lgs. February 10, 2005, n. 30) incorporate Article 6bis of the Paris Convention, as interpreted and expanded in its scope of application by Articles 16(2) and (3) of the TRIPS Agreement.Article 12(1)(b) and (f), a mark is not new and, therefore, inelegible for registration, if it is identical with or similar to a mark that is "well-known within the meaning of Article 6bis of the Paris Convention" (in accordance with Article 16(2) of the TRIPS Agreement), in the following cases:

(i) when the later mark is registered for identical or similar goods or services, if "by virtue of the identity or similarity of the signs and the identity or similarity of the goods or services, a risk of confusion may arise on the part of the public, which may also consist of a risk of association of the two signs"; and

(ii) when the later mark is registered for dissimilar goods or services, irrespective of whether a risk of confusion or association may arise on the part of the public, on condition that use of the later mark "without due cause" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the well-known mark.qualify as "well-known wihthin the meaning of Article 6bis" a mark needs to be well-known in Italy where its reputation will come as a result of its use or promotion in international trade., under Article 17(1)(f), a registered mark that "enjoys a reputation" in Italy constitutes a bar to the valid registration of identical or similar marks when use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the mark.only provision of the Italian Industrial Property Code that deals with the protection of marks enjoying a reputation is Article 20(1)(c), under which the owner of a registered mark that enjoys a reputation is entitled to prevent unauthorized third parties from using identical or similar signs with respect to dissimilar goods or services, provided that use of the mark "without due case" is likely to take unfair advantage of, or be detrimental to, the distintive character or the repute of the mark.is noteworthy that the Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services. In other words, the Italian Industrial Property Code does not contain any provision that expressly affords protection to unregistered well-known marks within the meaning of Article 6bis of the Paris Convention against the unauthorized use of conflicting signs by third parties as provided by Articles 16(2) and 16(3) of the TRIPS Agreement.is simply because, when dealing with the issue of protection, the Italian Industrial Property Code applies only to registered marks. In practical terms, to prevent the unauthorized use of the conflicting mark, the owner of a well-known mark within the meaning of Article 6bis of the Paris Convention will have only the very light burden of filing an application in Italy before taking action.speaking, if the owner of a well-known mark within the meaning of Article 6bis does not intend to file an application, protection against the unauthorized use of a conflicting mark could be alternatively sought under Article 21(3) of the Italian Industrial Property Code. Under this provision, no one may use a registered trademark after its registration has been declared invalid, when the reason for invalidity involves the unlawfulness of the use of the trademark. According to the most convincing scholarly interpretation of this provision, the above prohibition not only applies with respect to absolute grounds of invalidity, but also when there is a violation of Article 14(1)(c) of the Italian Industrial Property Code (in relation with Article 21(2) of the Italian Industrial Property Code), which prohibits the registration as trademarks of signs when their use would infringe someone elses copyright, industrial property right, or any other exclusive right.any event, it should be remembered that Article 6bis of the Paris Convention and, consequently, Articles 16(2) and 16(3) of he TRIPS Agreement, are automatically applicable in countries that are signatories to

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