How to Detect Well-Known Marks?

Sinan Haluk Tandoğan, LL.M.*

Introduction

Currently, there is no single and comprehensive legal instrument which governs how trademarks are protected and treated under various legal contexts, which applies to more than one legal system. This the main reason why countries have their own interpretation and codification of trademark law, which leads to certain difficulties in the international application of trademark law(s).

This is especially true for well-known trademarks, as there is a profusion of different local, regional and international legal instruments which govern well-known trademarks. The natural consequences which this brings about are: uncertainty, lack of clarity and a need to elaborate on the areas which are left uncodified, especially on the matter of what constitutes a well-known mark.

Well-known marks benefit from a special type of protection, distinct from regular trademarks and service marks. The special protection regime granted to well-known marks, by national laws, regional legal instruments and international legal instruments such as the Paris Convention and the TRIPS Agreement, aims to provide adequate protection to these marks. To achieve this purpose, these legal instruments have been drafted in such a way that confers well-known marks a special position among other trademarks in the sense that they are held exempt from principles such as the principles of territoriality, class-based protection and the requirement for the mark to be registered to obtain protection, to some extent. That said, in order to determine whether a mark can benefit from the special protection regime described above, one must first conclude that the mark is in fact a well-known mark, by resorting to several distinct sources. This can be done by filling in the gaps between the legislation in force regarding well-known marks.

Such gap filling is only possible after analysing what constitutes a well-known trademark by considering different criteria suggested in the doctrine and by WIPO itself and then by scrutinizing the special protection granted to well-known trademarks.

Criteria Which Make a Mark Well-Known

Certain criteria are proposed under various legal instruments from around the world and in the doctrine to be able to distinguish between regular marks and well-known marks. These criteria, in other words, help in determining what constitutes a well-known mark.

   a) WIPO Criteria

With the aim of attempting to unify the practice on determining “whether a trademark or a service mark is well-known or not” and for helping decision makers and practitioners by filling the legal gap on this issue, the World Intellectual Property Organization (“WIPO”) issued the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, which includes criteria to be used in determining what constitutes a well-known mark. These are: (i) “the degree of knowledge or recognition of the mark in the relevant sector of the public”, (ii) “the duration, extent and geographical area of any use of the mark” (iii) “the duration, extent and geographical area of any promotion of the mark”, (iv) “the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark”, (v) “the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well-known by competent authorities” and (vi) “the value associated with the mark”.

   b) Other Criteria Suggested in the Doctrine

In addition to the above criteria suggested by WIPO, the global doctrine on well-known trademarks suggests additional criteria which include: (i) originality of the trademark, (ii) the degree of similarity between the well-known mark and the subsequently used identical or similar mark, and (iii) the solitariness of the mark in the relevant market.

   c) Criteria Suggested in the Turkish Doctrine

Commentators from Türkiye suggest criteria supplementary to the WIPO criteria, to assess whether a mark is well-known or not. Some of these have been developed to address the need to classify marks used in innovative sectors which have been transformed by technology. The most prominent among these are: (i) number of stores opened under licences or via franchising, (ii) the date of the creation of the mark, (iii) number of branches, (iv) daily average number of website visitors and (v) the number and frequency of searches through search engines.

   d) Criteria Used by TÜRKPATENT

Certain criteria are used by the Turkish Patent and Trademark Office (“TÜRKPATENT”) to determine whether a mark can be protected in the register as a mark with special protection or not. TÜRKPATENT applies these criteria in determining whether a mark is well-known or not. Among these are: the duration of the usage of the mark and for how long it was registered, the extent to which the registration and usage of the mark is achieved, both within Türkiye and in foreign countries, the size of the market share, annual sales and presence of the goods and/ or services pertaining to the mark, marketing and promotional activities related to the mark, including, inter alia, TV advertisements and local newspaper advertisements, other kind of advertisements and marketing campaigns, the presence or absence of a court ruling showing that the mark is a well-known mark or ongoing trials relating to the same, the originality of the mark etc. By using one the above, or several as a starting point, TÜRKPATENT decides whether the mark can be registered as a well-known mark within Türkiye and benefit from the protection this affords.

Evaluation of the Criteria and the Mark

The most prominent criteria suggested by lawmakers, commentators and trademark offices around the globe are as listed above. As explained in the introduction, since there is no conclusive and comprehensive instrument which aids practitioners in classifying marks as well-known, a holistic approach which jointly considers more than one of the above-listed criteria should be followed in making the said classification. This partly stems from the fact that none of the criteria listed above is comprehensive and conclusive enough to determine for sure that the mark is a well-known one.

The holistic approach described above would comprise: (i) determining which of the above criteria applies to the mark in question, (ii) collectively subjecting the mark to the test described under each criterion by considering the impact created by the mark for each criterion and then (iii) using these findings to conclude the matter of whether the mark is well-known or not. This would be in line with the business realities of the modern world, where goods and services and the knowledge among the public pertaining to them are constantly changing, especially with the prevalence of fast-moving consumer goods in today’s consumer culture.

Note: Detailed information on the matter can be found in the author’s book (TANDOĞAN, S.H., Well-Known Marks: Definition, Regulation and Protection, Istanbul, 2024).

* Managing Associate at BTS&Partners