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

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)

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)

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

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

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

Well-known Mark Registries ArmeniaRegister (26 entries) BelarusRegister (four entries) BrazilRegistration of notorious marks (discontinued) BulgariaRegister of WKM (about to be discontinued) ChinaAdministrative recognition of WKM; list published twice per year Czech Republic“Database” with WKM for TM Office use FinlandList of TMs with reputation (55 entries) MexicoAd-hoc recognition of well-known and famous marks MoldovaRegister (14 entries) Russian FederationRecognition and publication in list (97 entries) UkraineRecognition of WKMs (43 TMs published)

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

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