Well-Known Trademark Protection Under US Law

benefiting the distinctiveness or reputation of the prior mark; (4) the CTM applicant has no reasonable cause.

Reputation is not defined in the CTMR, but its essence is understood to be a threshold requirement of knowledge, which has a quantitative character, similar to "well-known". A trademark achieves the level of reputation when it is known to a large part of the relevant public. It is important that the test for reputation is simplified. In principle, there is no need to prove other aspects such as quality image, uniqueness, inherent distinctiveness... but only to prove a suitable level of recognition. However, such additional aspects of reputation may later be important in proving that that element is damaged.

The assessment of reputation is based on a comprehensive assessment of all factors relevant to the case. The pre-existing trademark does not need to be known to a certain percentage of the public. It is also impossible to establish a certain criterion for a reputable trademark, but it is usually assessed on a case-by-case basis. For example, in the General Motors case, the factors assessed are: level of knowledge, frequency of use, duration of use, geographical scope of use, level of investment in marketing, etc.

The means to prove the reputation of a trademark as prescribed in Article 76 of the CTMR include:

- Sworn or certified declaration

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- Decisions of Courts/National Agencies

- Decisions of the Authority (OHIM)

- Polls and market surveys

- Audit and inspection results

- Certificates and awards

- Articles in newspapers and specialized publications

- Annual reports - Company records

- Invoices and other commercial documents

- Advertising and marketing materials

Some of the following examples may demonstrate the provision of evidence.

► Case OD 3188/2002 NEW MAN

Mere provision of an affidavit by the objector is generally not sufficient.

In fact this document is limited to Stepherson's statement. Stepherson was the company secretary of the objector and acted on behalf of the objector. For the parties' statements to be of absolute value, in cases such as the present one, the applicant must be required to prove the falsity of those statements. In most cases, the applicant cannot do so even where the facts are clearly false. Moreover, such a finding would undermine the principle that the objector must prove the facts on which he seeks to rely.

► Case OD 733/2004 Isla Princesa

The presentation of sales figures and volumes must be evaluated both in terms of the territory and the goods and services concerned, and must be supported by other evidence. The objector presented a chart with sales figures. There was no indication of the authorship of this chart. The objector did not submit any affidavit or similar declaration explaining the data contained therein and confirming its authenticity. The objector also did not submit any other evidence that could confirm, substantiate or supplement the sales figures and show that the earlier marks had reputation in the respective territories.

The mere submission of advertising and promotional material does not usually indicate the time, place and extent of distribution of such material, and indications should be given to this effect. The opponent submits copies of advertisements without indication as to whether they were published or distributed. In the absence of indications as to the place, time, means and extent to which the public became aware of the goods as a result of such display or advertisement, the copies submitted will not provide any useful information regarding the alleged reputation of the opposed marks.

Another issue that needs to be discussed in Article 8(5) is how is the similarity of signs to be understood? Similarity can be tested by comparing the visual, phonetic and semantic features of the signs to determine their degree of similarity.

Damages- "unfair advantage" under Article 8(5) take the following forms:

● Distinctiveness loss (dilution)

● Reputational damage (tarnished reputation)

● Distinctive advantage (Compelling value)

" Famous brand"

Famous Unregistered 8(2)(c) CTMR

Enhanced protection against similar goods where there is a likelihood of confusion

(Through Article 8(1)(b) CTMR)

Reputation Registration 8(1)(b) CTMR

Enhanced protection against similar goods where there is a likelihood of confusion

8(5) CTMR

Protection against injury or unfair advantage, and against dissimilar goods

2.2.2.2. Directive 104/89/EEC

It is not intended to unify all national trademark laws, but rather to reduce the differences between national trademark laws that create barriers to trade and affect the free movement of goods and services and limit the development of single markets. The guidance emphasizes the key elements of positive law rather than procedural issues. There are three important provisions of the guidance relating to the trademark registration mechanism and the establishment of rights through registration, namely:

- Article 3: Specifies the grounds for refusing or invalidating the registration of trademarks;

- Article 4: Refers to cases considered to cause conflicts with previous NHHHs;

- Article 5: Establishing rights through trademark registration procedures.

In particular, famous trademarks are one of the important bases that competent authorities must consider when receiving and evaluating applications for protection of trademarks in Europe.

Well-known trademarks can be protected even if they have not been registered by the competent authority. This means that, for well-known trademarks, protection is not only carried out on the basis of the "first-to-file" principle but also on the "first-to-use" principle. Thus, this is completely consistent with international law and is similar to the Japanese law that we have analyzed above.

According to the provisions of Article 4 of Directive 104/89/EEC, a trademark cannot be registered, or if registered, may be declared invalid in European countries if it is considered to be identical or similar to a trademark.

similar to registered trademarks used for similar goods or services, or which are likely to cause confusion with earlier Community trademarks. The term "earlier trademark" is understood to include trademarks recognised as well-known in accordance with the provisions of Article 6bis of the Paris Convention of 1883. This was also reaffirmed in the Community Trade Marks Regulation of 1993.

The ground of risk of confusion with a previous trademark is an important ground for refusing the registration of a trademark. However, the definition of the term "likelihood of confusion" is very difficult in practice, especially in distinguishing it from other similar terms. For example, in the Court's judgment in the case of "Sabel v. Puma AG", the term "likelihood of confusion" which includes "likelihood of association" with previous trademarks was interpreted to mean that the confusion that the public would have between two trademarks as a result of semantic similarity or similarity would not be a meaningful ground for deciding that there is a "likelihood of confusion" as provided for in Article 4(1)(b) of the Guidelines. The existence of a “risk of association” does not mean that there is a “risk of confusion” in fact. In other words, a “risk of association” here is not a substitute for a “risk of confusion”. Because of this and also based on the results of the research which showed that PUMA is not a distinctive trademark in Europe, the Court held that the competent authority could not refuse to register the SABEL mark.

In addition, there is another important principle relating to trademark protection in Europe which stipulates that the protection of a well-known trademark shall not be limited to similar goods and services. Accordingly, the scope of protection shall be extended to cases where the trademark is used for dissimilar goods or services when those

Such use may cause damage or create unfavorable conditions for the reputation of the previous trademark. And when a trademark has been recognized as famous in one of the member countries of the Union, it will automatically become a famous trademark throughout the Union. We will come to the lawsuit against the trademark CANON to see this more clearly:

The opposing party is Canon KK (Japan) and the opposing party is Pathe Communication (US). The opposing party argues that the trademark "CANON" is their trademark and company name that is well-known for products of "televisions, movies, recording devices, signal transmitting devices and other products in class 09", so Pathe's trademark "CANON" including video products, movies, cassette tapes will not be registered and will not be used. The German Patent Office did not accept the above objection of Canon Company because it believed that the products of the two trademarks were not similar. Finally, the German Supreme Court decided that the trademark CANON of Canon Company (Japan) is a trademark worldwide, so the trademark CANON of Pathe Company will not coexist even though the specific products are not identical or similar.

Thus, IPRs in Europe will be protected mainly through international treaties and unified legal documents of the Union. In addition, the independent legal systems of member states also play a very important role in setting out specific criteria and regulations on IPR protection in their national territories.

2.2.3. Protection of famous trademarks under US law

One of the factors considered in deciding whether two marks are confusingly similar is the extent to which the earlier mark is known to consumers: the more famous the earlier mark, the more likely it is to cause confusion. Other factors considered in deciding whether two marks are confusingly similar are essentially: the extent to which

the appearance, pronunciation, commercial meaning or impression of the marks; the similarity between the goods and/or services bearing the marks; whether the goods bearing the marks concerned are sold in the same channels of trade; whether the purchase decision is made on impulse or with careful consideration; whether there are many users of the similar mark in connection with the goods under consideration. And finally, whether there is actual confusion between the two marks.

2.2.3.1. Legal documents on famous trademark protection in the United States

Unlike European countries and many countries in the world, the United States is not a member of the 1883 Paris Convention on the protection of industrial property rights as well as a number of other international commitments in this field. Therefore, in principle, the United States will not be bound by the provisions of these international treaties. This also means that the United States will not be able to inherit and take advantage of international legal achievements related to this field in an official manner like many other countries. However, the legal system on the protection of trademarks in general and intellectual property rights in particular in the United States is currently quite complete and effective at both the federal and state levels.

The enforcement of trademark protection in the United States today is mainly based on the provisions of the Trademark Act of 1946, also known as the Lanham Act. However, this Act does not specifically mention famous trademarks. It was not until 1995 that the United States Congress passed a new Act, the Federal Trademark Dilution Act (FTDA). This Act was enacted to supplement and amend the Trademark Act of 1946, specifically amending the content of Section 43, which provides for compensation or compensation for dilution of famous trademarks. This amended Act described the factors to determine whether a trademark is distinctive and famous, and also provided a precise definition of the term "dilution", according to which, dilution will be understood as the reduction of the ability of a famous trademark to be used in the market.

identification and distinction of the goods or services to which the mark applies. By introducing these new regulations, for the first time, well-known trademarks were codified in the U.S. legislative system.

Although there are fundamental differences compared to the European legal system on the protection of famous trademarks, in terms of the basic principles governing this field, the US and European legal systems have one thing in common, which is the official recognition of the principle of "first to use" in the legal system. However, the application of this principle in practice is not the same. While in the European legal system, the principle of "first to use" is applied in combination with the principle of "first to file" along with the consideration of the Court or other competent authorities, in the US legal system, this principle must be applied in the consideration and consideration of the Court on the basis of the general principles of Equity. This is actually understandable because the United States is a country that follows the Common Law system, and in this system, the principles of Equity are one of the main principles that govern all areas of legal life.

2.2.3.2. Concept of famous trademark

To date, there is no precise definition of the concept of "famous trademark" in the United States. This is similar to the current situation in Europe as well as in many other countries in the world. Therefore, determining whether a trademark is a famous trademark or not is very complicated. Most countries in the world, including the United States, give the authority to competent authorities (usually the Court or the National Office of Industrial Property) to determine the fame of trademarks in specific cases. And of course, the decisions or considerations

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