The more famous your trademark is – the more benefits you may have but, expectedly, the more you will be infringed. And, more importantly, infringements may appear to be not straightforward but rather inventive. Use of your trademark and goodwill for the business that is not the same as yours, but still implies associations, is often the case.
Benefits for the trademark owner
To have more efficient tool for preventing or fighting such situations one may seek the well-known status for the trademark. The major benefits such status provides are:
(1) The 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 cause damages to the interests of the owner of the well-known trademark.
(2) The status may be granted retrospectively, i.e. as of the date for a date in the past, provided that the applicant proves 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 the 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 the trademarks that are already registered.
As contemplated above a trademark may be recognized as well-known for the specific list of products and/or services, although, the actual protection may go beyond such list. Also, it is important to define and prove who may be the beneficiary of the procedure, i.e. the well-known trademark owner. Notably, the choice may be a challenge where e.g. a group of companies is concerned.
Protection shall be granted to the 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 decision: applying to the Appeal Chamber with the State Intellectual Property Service of Ukraine (the "Appeal Chamber") or filing the respective legal action to court.
If one seeks the well-known trademark status as a preventive measure, to combat with the potential conflicts in the future, applying to the Appel Chamber may be preferable. At the same time, if the conflict already exists, considering the route of legal action may be practicable as it allows address 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 forth in the Procedure for Recognizing the Trademark as a Well-known by the Appeal Chamber (the "Procedure"). Court proceeding 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 proceeding are.
The information regarding the trademarks that have been recognized as well-known is published on the website of the Ukrainian Intellectual Property Institute (http://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, Forbes trademark was recognized as well-known trademark of Forbes Inc. in respect of electronic publications, Internet-publications and magazines (periodicals) as of May 30, 2005, while the respective court decision became effective on May 6, 2010.
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 the 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 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 a 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 well as proof of successful enforcement of rights in the trademark.
Sociological survey appears to be one of the most important instruments to demonstrate the fame of the trademark among certain consumer segment in Ukraine. Such survey shall be carried out by the 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 population of at least 500 000 people. First of all, the survey shall cover three of the biggest regional centers e.g. Kiev, Kharkiv, Lviv, Odessa, 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 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 survey need to cover the "target audience".
For example, survey among the sales personnel shall not fairly represent the situation against the 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 the experts in 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 the experts who are in fact the consumers of such goods and belong to production, trade or other business circles.
The survey report shall provide the respondent’s answers at least to 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;
- for how long do they know 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 from the certified court expert may be needed or helpful to prove fame of the trademark.