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The Protection of Trademarks With a Reputation Procedural Issues

The Protection of Trademarks With a Reputation Procedural Issues. Trademark Law Institute Amsterdam, October 2010. Marcus Höpperger. Article 6 bis Paris Convention. Non-registered well-known marks (identical or similar for identical or similar goods)

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The Protection of Trademarks With a Reputation Procedural Issues

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  1. The Protection of Trademarks With a Reputation Procedural Issues Trademark Law Institute Amsterdam, October 2010 Marcus Höpperger

  2. Article 6bis Paris Convention • Non-registered well-known marks (identical or similar for identical or similar goods) • Refusal of registration (ex officio or upon request) • Cancellation of registration (ex officio or upon request) • Prohibition of use (ex officio or upon request)

  3. TRIPS 16.2 and .3 • Article 6bis applies mutatis mutandis to service marks • Article 6bis applies mutatis mutandis to dissimilar goods and services (subject to additional conditions)

  4. WIPO Joint Recommendation (1999) • Determination whether a mark is well-known by competent authority (list of factors) • Determination of the “relevant part of the public” (list of factors) • Opposition Procedures • Ground for opposition at least where g/s identical or similar

  5. WIPO Joint Recommendation (1999) • Invalidation Procedures • Ground for invalidation at least during five years from publication of registration for similar and dissimilar g/s • If ex officio invalidation, ground for such invalidation during at least five years from publication of registration for similar and dissimilar g/s • Prohibition of use • Upon request during at least five years from knowledge of use for similar and dissimilar g/s

  6. Areas of Convergence for Opposition (2009) • Area of Convergence # 3 “Grounds for Opposition” • “at least on the basis of prior trademark rights in the jurisdiction concerned” • WIPO/STrad/INF/1 Rev.1 (January 2010) • Questionnaire on TM Law and Practice • Opposition on basis of well-known/famous mark/mark having a reputation: 55 of 81

  7. Well-known Mark Registries • Armenia Register (26 entries) • Belarus Register (four entries) • Brazil Registration of notorious marks (discontinued) • Bulgaria Register of WKM (about to be discontinued) • China Administrative recognition of WKM; list published twice per year • Czech Republic “Database” with WKM for TM Office use • Finland List of TMs with reputation (55 entries) • Mexico Ad-hoc recognition of well-known and famous marks • Moldova Register (14 entries) • Russian Federation Recognition and publication in list (97 entries) • Ukraine Recognition of WKMs (43 TMs published)

  8. AIM Position Paper 2007 • Broad endorsement of WIPO JR (2007) • Concerns and Questions • Recommended Guidelines (14)

  9. Thank you for your attention! Trademark Law Institute Amsterdam, October 2010 Marcus Höpperger

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