Reputation and proof: protecting a well-known trademark

Published on: 12 June 2013
by Ms. Clemence Le Cointe, Trademark Lawyer at Dennemeyer & Associates, Munich

A well-known trademark can be defined as a trademark known by a large portion of the public and that can be immediately recognised as relating to the products and services for which it is used. L’Oréal, Hugo Boss, Adidas, Intel, and Apple are trademarks that definitely fit this definition.

The international protection of well-known trademarks is governed by Article 6bis of the Paris Convention and Article 16.3 of the Trade-Related Aspects of IP Rights (TRIPS) Agreement. The right of the owner of a well-known trademark to act against an infringing trademark application can be based on three arguments, one of them at least having to be recognised by the court to obtain the cancellation of the conflicting trademark.

The first and most-used argument is the applicant’s intent to take unfair advantage of the repute of the earlier trademark. In its Spa decision (Case T-67/04, May 25, 2005), the European General Court explained this criterion as follows: “As regards the condition of taking unfair advantage of the distinctive character or the repute of the earlier mark, this must be intended to encompass instances where there is clear exploitation of free-riding on a famous mark or an attempt to trade upon its reputation.”

In its Botox decision (Case C-100/11P, May 10, 2012) concerning a lawsuit initiated against Helena Rubinstein SNC and L’Oréal SA, the Court of Justice of the European Union (CJEU) presented its understanding of this criterion.

Continue reading the full article on the website of the World Intellectual Property Review magazine.