Famous Trademarks

Evgeny A. Arievich, Baker & McKenzie – Moscow

Although no official definition exists as to what a famous trademark is all of us in the audience would immediately know what we are talking about once these words are pronounced. It is not important that in ranking the famous brands we may all have our own order depending on our  personal preferences and professional field: soft drink lovers will name COKE and PEPSI,  beer drinkers – HEINEKEN or BUD, those who go for the stronger stuff – STOLICHNAYA or SMIRNOFF. Car fans will immediately recall MERCEDES or FORD, adepts of healthy life – ADIDAS or REEBOK,  their opposites – MARLBORO or PALL MALL, fashion followers – PIERRE CARDIN or  VERSACE.

The sad fact that not everyone could have easy access to the goods bearing the glorious names does not mean that they shine less. The enormous investment and effort that the owners of such brands have committed to turn them into what they have become makes them the most important business asset deserving special attention and protection. Since the reputation of such brands transcends national borders it appears only natural that  countries of the world have attempted to provide legal protection to famous brands on the global scale by way of  international agreements.  Since however it turned out to be difficult to define exactly what a famous mark is and how far the protection accorded to it should stretch the decision so far has been not to impose certain standards of protection internationally and to create a global list of famous marks but rather to start from the national level.  To compensate for that  the standard of notoriety which  a mark must attain to deserve special protection has been lowered to that of so called “well-knowness” rather than fame.  The Paris Convention on Protection of Industrial Property in its Article 6 bis talks about well-known rather than famous marks, which term has been then followed by other international agreements such as TRIPS and by certain national laws and regulations. A weaker notion resulted in a weaker protection – thus the Paris Convention only extends protection to well-known marks in relation to similar goods. TRIPS which is an agreement  much more modern in its concept and reflects the current market realities already under certain condition which will be discussed later  pushes out the boundaries of the protection given to well-known marks but still sticks to the customary term.

It is my conviction that at some point of time in the not-too-far future further shrinkage of the world resulting from the rapid progress of modern means of communication and economic integration will  lead to the development of a new international pact which will establish special protection for those brands that are the best among the better – famous trademarks. Such protection will ensure among other things that in no country adhering to such pact shall it become possible to obtain KODAK trademark for bicycles for anyone but Eastman Kodak itself or for an advertising agency to call itself XEROX.  Nor will a national producer in any contracting state be able to register and use a trademark identical or similar to the one which  has for a long time been protected and used in the majority of contracting states even if such mark has for some reason not reached the requisite level of recognition in that particular country. This should be so because a famous trademark has a special function in addition to those of distinguishing and advertising.  It is the “guarantee-of-investment” function based on the universal principle of fairness.

It may be envisaged and it is hoped that such recognized world leaders in the area of trademark protection as  WIPO  and INTA will serve as the as promulgators of such accord. First steps in that direction have already been taken with the adoption of the WIPO Joint Recommendation on Well-Known Marks.  However, while the predicted developments take shape it is important that the means of protection of marks deserving special legal regime improve on the national, regional and international levels.