INTERNATIONAL / TRADE MARKS / WELL-KNOWN MARKS

In an article in Intellectual Property Quarterly, Issue 2, 2000, entitled WIPO Resolution on Well-known Marks: a Small Step or a Giant Leap ?, David Tatham discusses the Resolution adopted in the General Assembly of WIPO and the Assembly of the Paris Union in September, 1999. He points out that Article 16 of the TRIPS Agreement "set out to supply those elements missing from Article 6bis [of the Paris Convention]", but "still contains no definition or guidance as to what is meant by the term ‘well-known’". The WIPO Resolution, however, lists a number of factors determining whether marks fall into that category: the degree of knowledge of the mark, the duration and extent of its use, the duration and extent of any publicity associated with it, the number of registrations of it worldwide, the diligence with which its owner can prove that he has defended it against copiers and the value of the mark. The author discusses the various articles of the Resolution, mentioning that Article 4 is somewhat complicated, with 17 clauses and sub-clauses. He says that the Resolution is not legally binding but is authoritative and should be strongly persuasive: he concludes that "we now have in our hands, at last and for the first time, an authoritative statement of how to define a well-known mark and the rights which an owner of it may claim". [20021]