The concept of «well-known trademark» is not enshrined in any document: neither international nor national. If we analyze art. 25 of the Law of Ukraine and the Order recognition of a mark well known in Ukraine can be given to a well-known commodity Such a wording is a sign that has a certain reputation in the market and is well known to consumers or specialists in a certain area, in the process of using which in the market of Ukraine, its owner during a certain period spent a lot of effort and money for its recognition and promotion. that might s confirmed by sociological surveys, intensive advertising, the presence of regional offices, carrying out sponsorship activities, participation in various exhibitions, fairs, contests and promotions, etc.
Naturally, well-known trademarks are very attractive for assignment by third parties, and often for heterogeneous goods. After all, if you manufacture products or provide services under a well-known mark, such goods or services will always be in demand, because the consumer will surely be certain that the manufacturer is somehow connected with the owner of the mark and manufactures products under license or with his permission. Those. the other person thus enjoys the reputation of a well-known mark.
In accordance with the doctrine of the erosion of a trademark, even if a person uses someone else’s well-known mark or sign similar to it for goods or services that are not homogeneous, although this may not mislead consumers regarding the source of goods or services, it’s may still harm a well-known mark by diminishing or diluting the power of the trademark in relation to the manufacturer.
When using a well-known mark by other persons in respect of heterogeneous goods or services, there are several dangerous moments for the present owner: – the consumer may be misled about the manufacturer of the goods and services; – the quality of products or services produced or provided by another person will hardly correspond to the quality of original goods and services, which will undoubtedly reduce the reputation of the owner, which has been accumulated for decades, and it will be very difficult to restore it; – even if the consumer is not misled, and will clearly distinguish goods from different manufacturers, the distinctive ability of a well-known mark will weaken due to the erosion of the mark.
All of the above points can certainly lead to a decrease in sales and, consequently, to material losses.
For example, if one imagines that, under the well-known YAMAHA sign, any company begins to produce, for example, household appliances, the consumer may well decide that these goods are produced by a Japanese company or another company with its permission, and that the company is simply expanded the scope of its activities. But even if a consumer understands with time and begins to distinguish goods from a Japanese and other company, the priority sign of the Japanese owner YAMAHA will still begin to erode and may lose its distinctive ability not only as a well-known, but also as an ordinary trademark.
There are cases where the reputation of the owner of a well-known mark can be directly damaged. For example, the well-known ROLEX trademark for watches was registered by an Indonesian company for cigarettes. If we take into account the fact that almost all countries of the world are currently struggling with smoking, and Rolex SA has been a sponsor and patron in the field of sports for many decades, supporting and developing a healthy lifestyle, is it really possible to say that the company’s reputation is not do any harm? There is a direct anti-advertising of the Company.
Having registered a trademark, its owner, in addition to spending time and money on its promotion and recognition, must constantly monitor and prevent cases of its illegal use or registration attempts. Leading foreign manufacturers spend huge amounts of money on this, protecting their products and their trademarks from undermining their authority with “pirates” who throw large quantities of poor quality products under the world-famous trademarks onto the market.
It is not a secret that the owner only needs official recognition of a mark in the event of a conflict situation and for a trial. The owner of a well-known mark is sure that he has spent decades and impressive money for promotion and fame of his mark not only in a single country, but in the whole world, and that good fame will give him trumps in court, while defending his legitimate right.
And here comes the actual question «and what actually gives recognition of a mark to the owner of such a mark well known in Ukraine, and does it strengthen the position of the owner?»
Based on Art. 25 of the aforementioned Law of Ukraine, recognition of a trademark well known in Ukraine provides it with absolute protection only (!) For identical or similar goods. But in accordance with the same Law (Art. 6), a trademark cannot be registered, which is identical or similar so that it can be confused with: – previously registered or declared for registration in Ukraine in the name of another person for the same or similar goods and services; – trade names that are known in Ukraine and belong to other persons who received the right to them before the filing date of the application for the same or similar goods.
Those protection of a mark in relation to the same or similar goods is already absolute and it turns out that if the owner of a well-known mark wants to cancel the registration of an identical or similar mark registered for similar goods, he does not need to recognize the sign as well-known officially, because his position is so strong and such recognition, in fact, will not play any role here.