Well-known marks are marks generally acknowledged to be marks which have a
high degree of recognition and reputation in the areas of trade of the
proprietors of such marks, and in many cases beyond the areas of trade of
the proprietors of such marks.
Well-known marks are critical business assets which can be used and traded
just like any other assets. As such, these critical business assets deserve
the fullest and widest possible protection in order that mark owners may
fully exploit the value of such well-known marks.
This need for specific protection for well-known marks is recognised in
various international obligations which set out the principles for the
protection of well-known marks, with individual countries setting out the
extent of which such rights are to be protected.
Whether a mark is well-known is a factual question. The factors to consider
in determining whether a mark is well-known generally falls within the
following scope:-
-
the degree of knowledge or recognition of the mark in the relevant sector of
the public;
-
the duration, extent and geographical area of any use of the mark;
-
the duration, extent and geographical area of any promotion of the mark;
-
the duration, extent and geographical area of any registrations to the
effect they reflect use or recognition of the mark;
-
the record of successful enforcement of rights in the mark; and
-
the value associated with the mark.
Protection for well-known marks is not confined to use of similar marks used
for goods or services identical or similar to those of the owner of the
well-known mark, but also to use in relation to goods or services which are
not identical or similar to those of the owner of the well-known mark if
such use would indicate a connection exists between such goods or services
and the owner of the well-known mark.
While many countries recognise unregistered well-known marks, it is however
advisable to seek registration of well-known marks, taking into account that
there may be extended forms of protection for registered well-known marks in
certain countries.
