But if an identical or a similar mark is registered for heterogeneous goods, then recognizing a well-known sign may or may not play a role. Everything will depend on whether the owner of a well-known mark can prove in court that the use of a well-known mark by another person with respect to heterogeneous goods and services indicates a connection between him and the owner of a well-known mark and whether his interests will be harmed by such use.
Of course, the official recognition of a mark that is well known in some situations is almost the only reason for filing a claim for cancellation of an identical or similar mark. But in court, and the fun begins. Our courts are absolutely not ready, either morally or intellectually, to analyze such a difficult situation as «does the other person use this sign in relation to such goods and services to indicate a connection between them and the owner of a well-known sign and whether his interests will be harmed by such use». It is unlikely that judges in such cases think about such concepts as «erosion and weakening of the mark». And it is unlikely that in some cases they really want to fulfill the obligation entrusted to them by law to protect by all means the rights and legitimate interests of the owner of the mark.
The judges believe that to answer this question it is necessary to conduct a forensic examination, and of a general nature, not in the field of intellectual property. But in fact, only an expert in intellectual property can comprehensively assess the harm that a well-known sign can do by another person. Moreover, if we take into account the wording of Art. 41 of the Economic Procedural Code of Ukraine, which states that «in order to clarify the issues that arise during the consideration of a business dispute and require special knowledge, the economic court appoints a forensic examination», what special knowledge can an expert possess in these cases without specialization in the field of intellectual sphere? So it turns out that the conclusions of the examination are unlikely to be complete to answer this question.
If we talk about the comparison of goods that are heterogeneous, and are produced or sold, then, of course, their quality will be decisive. However, such a concept as quality is complex and can be very controversial, and even conducting technical expertise may not give any results. Moreover, to compare the quality or technical indicators of heterogeneous goods, to put it mildly, is impossible. And what about the situation with services? And if the owner of a mark, identical or similar to a well-known mark, does not produce any goods, then what can we talk about then? You can, of course, wait three years from the date of registration of such a mark and sue on the basis of non-use of the mark. But this has nothing to do with good fame.
Thus, in court decisions regarding the question «whether the use of a well-known mark by another person in relation to such goods and services indicates a connection between them and the owner of a well-known mark and whether his interests will be harmed by such use» cannot and will not take into account many subtleties intellectual property for several reasons, including the lack of sufficient knowledge and experience of judges in this area, and the lack of additional legal regulation of the protection of well-known signs And the absence of any practice is relatively well-known marks in Ukraine in general.
Many foreign experts in the field of intellectual property hold the opinion that well-known signs should not be given absolute protection, i.e. A well-known mark can be registered in the name of different persons for heterogeneous goods. But why, then, at all, introduce the concept of a «well-known sign» into theory and practice? It turns out that the only and decisive advantage of such recognition should be absolute security, otherwise there is a real threat of erosion of a well-known sign. Today, the advantage of recognizing a mark that is well-known in Ukraine is that a well-known mark can be protected even without registration or filing an application in Ukraine, although in such cases well-known trademarks should be protected by experts who carry out an examination of the application for goods. sign.
In almost all countries, the rules on the protection of well-known signs are identical to Art. 6 bis Convention. For example, in the Russian Federation, the Law «On Trademarks, Service Marks and Names of Metrics of Origin of Goods» states that «if a well-known trademark recognizes an already registered trademark, the legal protection of such a well-known trademark also applies to goods that are not homogeneous with those in respect of which he is recognized as well-known, provided that the use of this trademark by the other person in relation to the specified goods will be associated by the consumers with the right holder and m Jet infringe its legitimate interests». Consumers’ association with the copyright holder can be established only by a public opinion poll.
In the United States, for example, federal law protects well-known marks from violations or registrations by other persons of a similar mark with respect to identical, similar, homogeneous and even heterogeneous goods and services if there is a likelihood of confusion, regardless of whether the major mark is registered or not. In the case of a trial, the court takes into account many factors, including: the strength of a well-known mark, including the level of recognition of a mark on the market, distribution channels of goods, including the similarity or difference between consumers, the degree of attentiveness and caution that buyers show when choosing goods or services, why the respondent chose a well-known mark for their goods and / or services, etc.
Many countries, including China and Japan, adhere to the rule that when a person uses someone else’s well-known mark or sign similar to him, and such use does not mislead consumers, but takes advantage of the reputation of a well-known, this constitutes an act of unfair competition.
Damage to the interests of a well-known mark in respect of heterogeneous goods requires judicial proof in all countries of the world, including also European countries, but the level of the courts of most countries is certainly not comparable to ours. Although, as practice shows, initiating the abolition of an objectionable trademark in court, it makes sense to speak also about unfair competition.