Well-known marks

Normally, mark owner has no rights in an unregistered mark. However, under

Article 6bis of the Paris Convention, a well-known mark may be protected even if
it has not been filed with a national trademark office.
Although there are no particularly definitions of a well-known mark in
international treaties or national legislation, it can be defined as a trademark
known by a large portion of the public and that can be immediately recognized as
relating to the products and services for which it is used. Louboutin, but also
LOral, Adidas, Perrier, Intel, and Apple are trademarks that fit this definition.
French trademark law refers only to trademarks with a reputation and unlike
Finland or Japan, among other countries, France has no specific registry for wellknown or famous trademarks. The well-known or famous character of a mark
must thus be demonstrated each time it is used as the basis of an action. Opinion
polls and market surveys are many times the most suitable evidence if they can
provide information about the degree of knowledge of the mark, its market share
and position.
For instance, on March 7 2007 the Paris Court of Appeal found the mark
MONOPOLY to be famous on the sole basis of a survey establishing that Monopoly
is the best known of all board games ever made.
In its Joint Recommendation concerning Provisions on the Protection of WellKnown Marks, the World Intellectual Property Organization (WIPO) established
guidelines to help determine whether the specific status of well-known or famous
can be granted to a trademark. One of the most important indicators mentioned
is the degree of knowledge or recognition of the mark to the relevant public.
Further indicators are also taken into consideration when examining the level of
recognition of a trademark such as the duration, extent and geographical area of
any use of the mark or of any promotional activity around it, the number of
countries where the trademark has been filed if the trademark rights have been
successfully endorsed somewhere, and the value associated with the trademark.
As we can observe, the definition of a well-known trademark is difficult to
establish and can vary depending upon the relevant jurisdiction. Numerous and
different criteria can be taken into account when granting this increased level of
protection to a trademark. Therefore, when confronted with this level of
uncertainty, even though well-known trademarks are protected most of the time
even when they are not registered, it is always advisable to register them in
order to ensure protection.
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
Intellectual Property Rights (TRIPS) Agreement, also applicable in France.
According to their provisions, owners of famous marks have broader rights to use
their marks than do owners of less-well-known marks. They can prevent uses of

their marks by others on goods that do not even compete with the famous
product.
Thus, well-known trade and service marks enjoy in most countries protection
against signs which are considered a reproduction, imitation or translation of that
mark provided that they are likely to cause confusion in the relevant sector of the
public. They are usually protected, irrespective of whether they are registered or
not.
In France, specific provisions on the protection of well-known and famous marks
are found at article L713-5 of the Intellectual Property Code which distinguishes
between the protection of registered well-known or famous marks against
dissimilar products and/or services from that of non-registered well-known or
famous trademarks against later trademarks covering identical or similar
products or services.
French Intellectual Property Code further provides that any person that uses a
well-known mark for goods or services that are similar to those covered by the
mark shall be liable under civil law if such use is likely to cause prejudice to the
mark owner or if such use constitutes an unjustified exploitation of the mark.
In conclusion, the definition and protection of well-known trademarks is still a
grey area both internationally and in France. Despite general recognition that
protection should be given to well-known marks, the national laws implementing
the Paris Convention Art 6Bis give variable protection depending upon judges
appreciation and legal tradition in the field of the various jurisdictions.
Well-known marks have therefore a special, favor treatment, which results in a
more relaxed approach by judges. That is also why infringing a well-known mark
may not be treated equally around the world.