2012 APAA Trademark Committee Special Topics

Transcription

1 2012 APAA Trademark Committee Special Topics "Protection of well-known marks from different perspectives" ISSUE 1: Finding of recognition of well-known marks Is there any possibility of finding a mark well-known in your jurisdiction in the case where the mark is not used in your jurisdiction but is well known in other countries? [Note] There would be a case where a mark is not used in your jurisdiction but the mark is well known in your jurisdiction through TV news, magazines and newspapers. For example, a restaurant s name or very delicious food name would apply to this case. Yes, the Trade Marks Law enforced in Pakistan provides protection to well-known marks irrespective of whether they are registered and used in Pakistan or not, in relation to goods and services, provided they fulfill the requirements of prescribed criteria of well-known trade marks as mentioned in Issue No.6. ISSUE 2: Scope of geographic area where a mark needs to be found well-known In order for a mark to be found well known, will the mark have to be well known all over your jurisdiction or have only to be well known in part of your jurisdiction? Does the standard of finding such well-known mark vary depending on the case of excluding a third party s trademark registration or the case of excluding a third party s trademark use. [Note] Sometimes a mark would be well known throughout your jurisdiction and sometimes a mark would be well-known only in part of your jurisdiction. Is it sufficient for a mark to be well known only in part of a jurisdiction in order for that mark to be protected as a well-known trademark? There are two phases of 1

2 finding whether a mark is well-known. One is the phase where excluding a third party s trademark registration and the other is the phase where excluding a third party s trademark use. Are the standards of finding a well-known mark depending on these two phases, for example, in terms of the level of the well-known status? There is no jurisdictional division for establishing a mark to be well known in Pakistan. However, in determining whether a mark is well-known, account may be taken of the knowledge of the relevant sector of the public, including knowledge in Pakistan, which has been obtained as a result of the promotion of the mark. The standard of finding a mark to be well-known does not vary depending on the case of excluding a third party s trademark registration or the case of excluding a third party s trademark use because, the Tribunal while determining whether a trade mark is well known would look into as such, without having to require registration or actual use in the form of sales of goods or services under the trade mark in Pakistan and shall consider only the factors as relevant criteria to come to the conclusion whether the trade mark was well known as mentioned in Issue No.6. ISSUE 3: Action against use by a third party who registered the well-known mark In the case where a third party has registered your well-known Trade mark earlier than you, can you exclude the third party (trademark registrant) from using the registered mark on the designated goods/services? [Note] There could be a case where a third party has applied for your well-known mark earlier than you and registered the same. It is believed that an owner of the well-known mark may invalidate the third party s trademark registration. However, can you exclude the third party (trademark registrant) from using the registered trade mark on the designated goods or services even before invalidating the trademark registration? Yes, any third party having obtained registration of a well known trade mark earlier may be excluded from using the said well known trade mark in respect of designated goods even before invalidating the trade mark registration in view of protection provided 2

3 under Section 86(3) of the Trade Marks Ordinance, which is as follows: The owner of a trade mark which is entitled to protection under the Paris Convention as a well-known trade mark shall be entitled to restrain by injunction the use in Pakistan of a trade mark which, or the essential part of which, is identical or deceptively similar to the well-known trade mark- (a) (b) in relation to identical or similar goods or services, where the use is likely to cause confusion; or where such use causes dilution of the distinctive quality of the well-known trade mark. The aforementioned position was confirmed in a case titled as ARC International vs Ahmer Mansoor & others (2012 CLD 226) where the Sindh High Court restrained the defendants from using the registered trade mark LUNIMARC with an impression of an Archer device in reverse position in respect of glassware considering it as infringement of Plaintiff s well-known trade mark LUMINARC Archer device and ARC, which is being used by the plaintiff since 1948 in France and in numerous countries of the world including Pakistan in respect of glassware and utensils by extensive sale promotions and advertisements through, multimedia and having acquired substantial reputation and goodwill throughout the world. The Court further held that imitated registered word LUNIMARC was deceptively similar not only in spelling but also phonetically and was invariably also pronounced to be read as LUMINARC a well known name/word associated with Plaintiff used by it internationally since 1948 and same was the position with Archer device the intent of the defendants was to cash on from plaintiff s well known trade mark and the same was not permissible under Section 86 of the Ordinance, which is quite liberal when it comes to be gauged from the plaintiffs point of view. ISSUE 4: Well-known Trademarks List Is there any Well-known Trademarks List prepared by the Trademark Office or some other association in your jurisdiction? [Note] In some countries, Well-known Trademarks List is available for the purpose of easy and quick finding of well-known marks. In order to make the 3

4 Well-known Trademarks List, an application system for having the well-known trademarks listed is sometimes available. Is there such a list in your region? No such list is available in our jurisdiction. ISSUE 5: Well-known mark and Domain name Can the owner of a well-known mark exclude third parties from registering and using a domain name which is identical or similar to the well-known mark? [Note] It could happen that a third party has registered a domain name which is identical or similar to your well-known trademark. In such case, is there any way of canceling the registration of the domain name? In Pakistan, a private organization PKNIC reserves all.pk domain names. A holder of trade mark rights initiates the administrative procedure by filing a complaint with an approved dispute resolution service provider, which is approved by Internet Corporation for Assigned Names and Numbers. A list of approved dispute resolution service providers is available at In order to have a registered domain name cancelled through Uniform Domain Name Dispute Resolution Policy ( UDNDRP ), which is part of the registration agreement when obtaining a domain name, a trade mark holder must establish: (a) that he has a legally recognized trade mark in a name that is identical or confusingly similar to the domain name; (b) that the current registrant of the domain name has no legitimate rights in the name; and (c) that there has been some evidence of bad faith or abuse. In addition to the above, the domain names have been made subject for registration as a Trade Mark under Section 84(2) of Trade Marks Ordinance, According to the law a domain name if used as a source identifier may be registered as a Trade Mark in respect of relevant goods or services. 4

5 However, the proprietor of a well known trade mark may exclude third parties from registering and using a domain name which is identical or similar to the well known mark by initiating an infringement action under Section 40(6) of the Trade Marks Ordinance, 2001, which is as follows: A person shall infringe a registered trade mark if the person uses such registered trade mark as his domain name or part of his domain name or obtains such domain name without the consent of the proprietor of the registered trade mark, with the intention of selling such domain name to another including the proprietor of the registered trade mark. In case a well known mark or its part is registered by any person, then a cancellation action may be taken under Section 80 of the Ordinance 2001 before the Registrar of Trade Marks or the High Court or the District Court. Issue 6: Standards for Being Acknowledged as Well-Known When it becomes necessary to determine whether a certain mark is well-known or not, what are the generally recognized standards in your jurisdiction for determining such well-known status? (Please indicate your prioritization in the Special Topics Chart.) Example of answer---adcbe a. the sales figures or market share figures of the products bearing the trademark, b. market survey results, c. listing in a famous trademark directory, d. advertisements, evidence showing media exposure, e. foreign registration certificates f. others [Note] There can be many phases (examination, opposition, invalidation, etc.) where your trademark office or courts have to determine whether a certain mark is well-known. Normally, as trademark practitioners, we try to obtain and submit all available materials ranging from the sales figures or market share figures of the products bearing the trademark, market survey results, listing in a famous trademark directory, advertisements, evidence showing media exposure, foreign 5

6 registration certificates, etc. In most cases, all the above factors would be considered in their totality but, is there a certain type of evidence that can be more powerful and persuasive than others in your jurisdiction? You may wish to prioritize the above-enumerated examples in the order of the most effective to the least effective. The well known status of a mark is usually required to be proved in opposition, invalidation and infringement cases in accordance with criteria provided under Section 86(2) of the Trade Marks Ordinance 2001, which is as follows: : (i) the amount of Pakistan or worldwide recognition of the trade mark; (ii) the degree of inherent or acquired distinctiveness of the trade mark; (iii) the Pakistan or worldwide duration of the use and advertising of the trade mark; (iv) the Pakistan or worldwide commercial value attributed to the trade mark; (v) the Pakistan or worldwide geographical scope of the use and advertising of the trade mark; (vi) the Pakistan or worldwide quality and image that the trade mark has acquired; and (vii) the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and the presence or absence of identical or deceptively similar third party trade marks validly registered or used in relation to identical or similar goods and services. Though all the above mentioned factors are considered but evidence in the form of affidavit duly executed by an authorized person of the proprietor of well known trade mark showing year wise sales figures or market share figures of the products along with the yearly expenditure figures incurred on the promotional activities of the products bearing the well known trade mark and worldwide exclusivity of registration of the said mark is considered to be the powerful and persuasive evidence than others in our jurisdiction.the above stated criteria in the following order of the most effective to the least effective may be as under: a) the degree of inherent or acquired distinctiveness of the trade mark; b) the Pakistan or worldwide duration of the use and advertising of the trade mark; c) the amount of Pakistan or worldwide recognition of the trade mark; 6

7 d) the Pakistan or worldwide exclusivity of use and registration attained by the trade mark and the presence or absence of identical or deceptively similar third party trademarks validly registered or used in relation to identical or similar goods and services; e) the Pakistan or worldwide commercial value attributed to the trade mark; f) the Pakistan or worldwide quality and image that the trade mark has acquired; g) the Pakistan or worldwide geographical scope of the use and advertising of the trade mark Issue 7: Registration of Well-Known Trademarks before the Trademark Office Has your IP office ever reviewed the possibility of adopting a system where you can apply for registration of well-known marks? If not, what is your opinion about having this system in your jurisdiction? [Note] There are countries such as China which have a system for filing and registering well-known marks, when they meet certain very high criteria of requirements. Has there ever been any discussion about adopting a system similar thereto in your jurisdiction, and if yes, please share the pros and cons of such discussion with us. If not, please let us have your personal opinion on having such a system. Assuming that you have such a system, what would be the advantages and disadvantages? What degree of special treatment do you believe should be given to those marks registered as well-known marks. For instance, should the effect of registered well-known marks extend to dissimilar goods? Is it justifiable to allow stronger civil and criminal remedies for those marks? There is neither a system of registration of well known trade marks in Pakistan nor it was ever discussed in our IP offices. However, I am of the view that there must be a system of registration of well known trade mark in Pakistan and for this purpose the criteria enumerated in the law should be adopted by the Trade Marks Registry. In this connection, a list of such well known marks be prepared so that if any third party applies for registration of a trade mark, which is similar or identical to a well known mark, then the Trade Marks Registry should be in a position to refuse registration of such a mark at the initial stage. The owner of well known trade mark would be saved 7

8 from unnecessary cost of opposing such application filed by an unauthorized person. If a proprietor of well known mark does not get its mark listed under the system, it will be required to go into litigation every time if an identical/similar mark is applied for registration by a third party and allowed to proceed to registration. Stronger civil remedy should be available to well known mark but criminal remedy may prejudice the innocent user of a well known mark because the law protects such users under Section 40(8)(c) as they had acted innocently. Issue 8: Scope of Protection of Well-Known Registered Marks When a well-known mark is also registered, what should be the scope of protection of those well-known registered marks? Should it be broader or narrower than the trademarks that are registered but not very much known to the public? [Note] There can be two conflicting views on this question. Do you believe that the well-known status of a registered mark would be more likely or less likely to cause confusion? The scope of protection to a well known registered mark should be broader than the trade marks that are registered but not very much known to the public because, the law also protects well known marks in respect of different goods or services to avoid unfair advantage or detriment of distinctive character or repute of the well known trade mark. [END] 8

9 2012 APAA Trademark Committee Special Topics Chart "Protection of well-known marks from different perspectives." October29, (1) (2) Australia Bangladesh Hong Kong India Indonesia Japan Korea New Zealand Pakistan Y Y Y Y N Y Y N Y Philippines Singapore Sri Lanka Taiwan Thailand Vietnam [Note]: 1) Y means YES 2) N means NO 3) M means YES and NO 4) N/A means Not Applicable 9