What is real
is not external form.



CONSTANTIN BRANCUSI

Some trademarks are protected by their own fame

09.08.2018


Some trademarks are protected by their own fame

Do you know that kind of trademark which is practically protected by its fame? Generally speaking, for a trademark to benefit from protection it has to be registered (for example, in Switzerland marks are registered with the Swiss Federal Institute of Intellectual Property). Like any rule, this also has an exception: the notorious trademarks, protected under Article 6bis of the Paris Convention (only if they own a foreign trademark registration) even if they are not registered.

We have recently won an opposition for one of our Swiss Clients regarding the infringement of their most well-known trademarks.

More specific, our Client is active in the luxury industry and his competitors were to launch a food product under exactly the same trademark as his. Even if we are not talking about the same industry, we could not rise a coexistence agreement because our Client’s trademark is very well-known and the risk of confusion would be very high in this case.

It is all about brand awareness and gaining reputation due to a high degree of use, whether the marks are registered or not. Starting from the idea that those who make substantial investments in the popularization of a brand deserve special protection, in most countries well known marks enjoy this kind of care against the marks which are considered a reproduction, a limitation or a translation of the well-known marks.

The well-known marks are not clearly defined

The fact that there is no clear and commonly agreed detailed definition for the well-known marks (with no characteristics other than being easily recognized) could lead to many interpretations and ways of protection. In general, public opinion polling is considered to be the main factor in appreciating the notoriety of a trademark. These trademarks can also be protected in other ways: by the Federal Law against Unfair Competition 1989, as moral rights to a name, as geographical indications and by copyright law.

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