LLC Krylova and Partners
The concept of «Well-Known Trademark» is the most controversial issue in the field of intellectual property today. Logically, the concept of a chorus of celebrity should include addressing such a vulnerable issue as comprehensive protection of the rights of the rightful owner of a prestigious commodity a sign against encroachment on it, because a well-known trademark is more than just a trademark; also the reputation of a company that has been earned over the years, these are goods and services that are associated with consumer with a certain quality.
However, does the recognition of a sign well known in Ukraine solve such a problem today? And what, in fact, gives such recognition in Ukraine?
The international protection of well-known marks is enshrined in two multilateral treaties: the Paris Convention, & laquo; On the Protection of Industrial Property & raquo; (1883) and in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).
Paris Convention «For the Protection of Industrial Property» in 1925, she first introduced the protection of a well-known mark, regardless of whether such a mark is registered or not. In accordance with Article 6 bis of this convention, «the countries of the Union undertake either at the initiative of the administration, if permitted by the legislation of the country, or at the request of the interested person to deny or invalidate the registration and prohibit the use of a trademark representing a reproduction, imitation or translation that can cause confusion with a sign that, by definition, the competent authority of the country of registration or country of use is already well known in that country as a sign of a person enjoying the benefits of this Convention and is used for identical or similar products. This provision also applies to those cases where a significant part of the mark is a reproduction of such a well-known mark or an imitation that can cause confusion with it.».
P. 3 of Art. 16 of the TRIPS Agreement supplemented this article of the Convention in respect of heterogeneous goods. In accordance with this clause, «Article 6 bis of the Paris Convention applies mutatis mutandis to goods or services other than those for which a trademark is registered, provided that the use of this trademark of the goods or services referred to indicates a relationship between the said goods or services and the owner of a registered trademark, bearing in mind that with such use the interests of the owner of a registered trademark may be infringed upon».
A more detailed provision on the protection of well-known marks in respect of heterogeneous goods is set out in the Joint Recommendation Concerning the Protection Provisions of Well-Known Marks (1999) (hereinafter the Joint Recommendation). In paragraph (b) of Art. 4 of this Joint Recommendation states that, «regardless of the goods and / or services for which the mark is used, is the subject of the registration application, or registered, the mark is considered to be in conflict with a well-known mark, if this mark, or its the essential part is the reproduction, imitation, translation or transliteration of a well-known mark and if one of the following conditions is met:
- the use of this sign would indicate a connection between the goods and services for which they use the sign and the owner of a well-known sign and would create the possibility of harm to his interests.
- the use of this sign may unfairly harm the distinctive character of the well-known sign
- the use of this sign would allow unfair use of the distinctive character of the well-known sign»
Based on the data of the international acts was developed and Art. 25 of the Law of Ukraine «On the Protection of Rights to Marks for Goods and Services» (dated 12.15.1993, No. 3689-XII) (hereinafter the Law of Ukraine) in accordance with which «the protection of the rights to a well-known mark is carried out in accordance with Art. 6 bis of the Paris Convention and this Law on the basis of the recognition of the mark as a well-known Appeal Chamber or court. From the date on which, by definition, of the Appeals Chamber or the court, the mark has become well known in Ukraine, he is granted legal protection the same as if the mark was applied for registration in Ukraine. At the same time, it (legal protection) also applies to goods and services that are not homogeneous with those for which the mark is recognized as well known in Ukraine, if the use of this mark by another person in relation to such goods and services would indicate a connection between them and the owner a well-known mark and its interests are likely to be harmed by such use».
«The procedure for recognizing a mark as well known in Ukraine by the Appeals Chamber of the State Department of Intellectual Property» (hereinafter the Procedure) was approved in 2005 and, in principle, 80% quite clearly regulates the whole process of recognizing a mark as well known. However, this procedure applies only to the State Department Appeals Chamber. What kind of regulation in Ukraine regulates the process of recognizing a mark as a well-known court? It turns out that in the case of the court there is only paragraph 2 of the Law of Ukraine, in which the factors are indicated that are expedient in recognizing the mark as well known.