Is Your Trademark Well-Known?

The more famous your trademark is, the more benefits you may have but, expectedly, the more your rights may be infringed. And, more importantly, infringements may appear to be not straightforward but rather inventive. Use of your trademark and goodwill for business that is not the same as yours, but still implies associations, is often the case.

Benefits for the Trademark Owner

To have a more efficient tool for preventing or fighting such situations one may seek well-known status for the trademark. The major benefits such status provides are as follows:

Extended protection in terms of the goods and services covered. Namely, the protection shall cover goods and services that are not related to those for which the trademark is recognized as well-known, provided that the use of such trademark by the other person regarding such goods and services shows the relationship between them and the owner of the well-known trademark, and such use may damage the interests of the owner of the well-known trademark.

The status may be granted retrospectively, i.e. as of the date in the past, provided that the applicant proves the fame of the trademark as of that date.

Otherwise, according to the Law of Ukraine On Protection of Rights in Marks for Goods and Services (the Trademark Law) from the date as of which the trademark is recognized as well-known in Ukraine, it will enjoy the same protection as those trademarks registered in Ukraine. Thus, a trademark may be recognized as well-known regardless of its registration in Ukraine, although, in most cases, the status is sought for trademarks that are already registered.

As contemplated above, a trademark may be recognized as well-known for a specific list of products and/or services, although the actual protection may go beyond such a list. Also, it is important to define and prove who may be the beneficiary of the procedure, i.e. a well-known trademark owner. The choice may be a challenge where, for example, a group of companies is concerned.

Available Procedures

Protection shall be granted to a well-known trademark with reference to Article 6bis of the Paris Convention for the Protection of Industrial Property, on the basis of a decision recognizing such trademarks as well-known. In Ukraine, two options are available to obtain such a decision: applying to the Appeal Chamber with the Ukrainian Patent Office (the Appeal Chamber) or filing the respective legal action to a court.

If one seeks the well-known trademark status as a preventive measure, to combat the potential conflicts in the future, applying to the Appeal Chamber may be preferable. At the same time, if the conflict already exists, considering the legal action route may be practicable as it allows the addressing of both trademark infringement and recognition of trademarks as well-known in the same proceeding.

As far as the Appeal Chamber is concerned, the procedural rules are set out in the Procedure for Recognizing the Trademark as Well-known by the Appeal Chamber (the Procedure). Court proceedings shall be governed by the relevant procedural code (e.g. the Commercial Procedure Code or the Civil Procedure Code), depending on who the parties to the proceedings are.

The information regarding the trademarks that have been recognized as well-known is published on the Ukrainian Intellectual Property Institute’s website
(www.uipv.org/ua/bases2.html). The respective register includes trademarks recognized as well-known by either the Appeal Chamber or courts.

As of today the trademarks recognized as well-known in Ukraine include Forbes, ASOS, ESCADA, YOUTUBE, INTEL and many others. Notably, the Forbes trademark was recognized as a well-known trademark of Forbes Inc. in respect of electronic publications, Internet publications and magazines (periodicals) as of 30 May 2005, while the respective court decision came into effect on 6 May 2010.

Important Factors

Regardless of the route chosen, the following factors, as provided by Article 25 of the Trademark Law, shall be considered to opine whether the trademark is eligible for well-known status:

— the degree of the reputation and recognition of the trademark in the relevant public sector;

— the duration, volume and geographical area of any use of the trademark;

— the duration, volume and geographical area of any promotion of the trademark, including advertising or offering to the public and display of the trademark on exhibitions of goods and/or services for which the trademark is used;

— the duration and geographical area of any trademark registrations and/or applications for registration of the trademark, provided that the trademark is used or recognized;

— evidence of successful protection of rights in the trademark, in particular, the territory where the trademark is recognized as well-known by competent authorities;

— the value associated with the trademark.

Various documents may be submitted to prove the aforesaid circumstances in relation to the trademark for which the well-known status is sought. These may include supply and distribution contracts, invoices and waybills, promotional materials, proof of advertising campaigns, relevant licenses and permits.

Fame and recognition of the trademark in other countries shall also be helpful, as is proof of successful enforcement of rights in the trademark.

Surveys

Opinion polls appear to be one of the most important instruments to demonstrate the fame of the trademark among a certain consumer segment in Ukraine. Such surveys shall be carried out by a research organization that focuses on conducting sociological or marketing research.

The survey shall cover at least six cities located in different geographical regions of Ukraine with a population of at least 500,000 people. First of all, the survey shall cover three of the biggest regional centers e.g. Kyiv, Kharkiv, Lviv, Odesa, Dnipro. Other cities shall be chosen depending on the peculiarities of the respective business activities of the applicant.

The number of respondents shall correspond to the survey target, more specifically, it shall not be less than 500 respondents in any of the two cities chosen, and shall be at least 125 respondents in every location. However, it is important that the survey covers the “target audience”.

For example, the survey among sales personnel shall not fairly represent the situation against end customers. Therefore, surveys regarding consumer goods shall be carried out among so-called average consumers in terms of age, gender, education, social and financial status, as well as among experts in the relevant sectors of industry or trade. At the same time, if the products concerned are designed for industrial use, the survey shall be carried out among experts who are, in fact, the consumers of such goods and belong to the production, trade or other business circles.

The survey report shall provide the respondent’s answers to at least the following questions:

— do they know the trademark;

— for which goods and/or services the trademark is used;

— what person, in their opinion, is the trademark owner or the manufacturer of goods under the trademark, or supplier of services under the trademark;

— how long have they known the trademark;

— what is the source of information regarding the trademark for them.

Still, as far as court proceedings are concerned, obtaining the expert opinion of a certified court expert may be required or helpful so as to prove the fame of the trademark.