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25 Feb

Reputed trademarks. A big one can do much more!

I’m sure that you will associate such reputed trademarks as Apple, Coca Cola and BMW. They are brands usually worth of billions of dollars. And it is the result of high sales, intense advertising or good consumer opinion. There is something special about them. Reputed trademarks benefit from increased legal protection. Everything is explained in the article below.

Reputed trademarks. Why a big one can do much more?

Reputed trademarks have stronger protection than ordinary ones.

As a matter of fact, each newly registered trademark is a regular trademark.

The reputation of a reputable trademark is obtained only after its use. And it’s only in special cases.

When you apply for a trademark protection, you must indicate what you want to protect. If you run a restaurant, you indicate restaurant services. And within these services you get a legal monopoly on that sign.

Meanwhile:

Reputed trademarks are also protected in the field of non-similar goods or services.

Example:

I want to introduce on the market a new car model.

If I name it Coca Cola, it will be a lot easier for me to find buyers. Formally, the Coca Cola trademark does not cover cars After all, relying on the reputation of this brand, Coca Cola would easily forbid me to sell such goods.

Below is a rough example of infringements of reputed trademarks:

reputed trademarksE9 – Sun Care.
Zero associations with Internet Explorer

reputed trademarksFish SNICKERS in tomato sauce.

reputed trademarkWD40 – only for real men.

And finally, something from our Polish backyard:

reputed trademarksHow are reputed trademarks born?

The key question is, of course: when does the trademark acquire reputation?

Where is the limit beyond which the ordinary trademark becomes a reputed trademark?

The rules do not define this concept.

You have to use the judgment of the European and Polish courts. They indicated a number of requirements that must be fulfilled in order to demonstrate the reputation of the mark.

1 – A reputed trademark must be registered.

To think of enhanced trademark protection at all, it must be registered in the appropriate patent office. So if an entrepreneur says his trademark is reputable, because, for example, it is recognizable on the market and actually he does not protect it, then no reinforced protection can be said.

Such mark may benefit from protection as a well-known trademark.

2 – A reputed trademark must be known to a large number of customers.

EU case law is dominated by quantitative criteria. However, there are three things to remember about this occasion.

  • The recognition of the mark is examined among its recipients, that is, buyers of certain goods or services. This is important because in some cases it definitely narrows the number of people who need to associate the trademark.

If we talk about the brand of milk, then the number of potential consumers is huge. However, if the mark is used to designate agricultural machinery, the target audience is limited to farmers.

  • The mark should be recognizable by the recipients, but in a substantial territory of the country. High reputation of the given brand in Warsaw and its surroundings is not enough to recognize the reputation.
  • This significant knowledge of the mark among the recipients is not precisely defined. Certainly it’s degree doesn’t  need not be high (more than 50%).

Curiosity:

Based on only the quantitative criterion, the AMBER GOLD mark could be considered a reputed trademark. Formally, it is a registered EU trademark. AMBER GOLD is a polish financial pyramid . A few years ago it was a hot topic at the polish media because people lost the life savings because of AMBER GOLD.

reputed trademarksEUTM-010928513

3 – Evaluation of the relevant circumstances of the case.

European case law points out that, when analyzing if a trademark is reputed, it is also important to take into account such criteria as:

– market share
– amount of outlay for promotion
– intensity, geographical range of use of the mark
– period of use
– quality of the goods marked

4 – Evaluation of qualitative characteristics.

In Polish case law, in addition to the quantitative criterion, reputed trademarks must have certain qualities. It is about:

-prestige;
– the power of attraction;
– advertising value, and
– convince consumers of the great features of the goods bearing this mark.

Under these circumstances, AMBER GOLD would not be considered a reputed trademark.

The requirement to fulfill specific qualities raises many discussions. Note that some trademarks by definition is then excluded from the reputation. It is hard to talk about the prestige or the attraction of signs intended to mark the hemorrhoid cream or funeral services.

reputed trademarks

What do reputed trademarks protect from?

1 – Protection against parasitism.

This is a situation where the entrepreneur uses a sign that the consumer associates with a reputed trademark. Such positive associations are therefore conveyed. And this definitely makes it easy to sell.

So there are undue benefits.

These associations with reputed trademark, make the subject of the sign does not have to incur expenditure on advertising.

Curiosity:

Association with a reputed trademark is not always easy to demonstrate. In Poland is still registered such a trademark intended to mark … windows and doors:

reputed trademarksR-107547

Even attempted to invalidate it, but ineffectively 🙂

2 – Protection against trademark dilution.

This is a situation where, as a result of the presence on the market of similar signs, the earlier mark does not associate immediately with the goods for which it was registered.

Frank Schechter, New York lawyer said that:

If we allow Rolls-Royce restaurants, Rolls-Royce cafes, Rolls-Royce trousers and Rolls-Royce sweets, than in 10 years time there will no longer be Rolls Royce brand.

In this particular example, this reputable car brand would be downgraded to the ordinary trademark.

3 – Protection against reputation degradation.

It’s about a situation where the goods of a trademark to be marked by a third person have a characteristic which may have a negative effect on the reputation of a reputed trademark.

Example:

We have all known perfume brand Chanel.

On the market however appears, the brand name Chanel to designate… poison rats.

The persistence of such goods on the market, will have a negative impact on the attractiveness of this reputed trademark.

Summarizing:

Reputed trademarks may be recognized by marks known to a large number of consumers.

  • However, if they relate to goods from some niche, the number of those customers may be relatively small.
  • Territorial coverage must cover a large part of the country. Again, this does not have to be the whole territory.
  • There is also no definite percentage of recipients who need to associate such a sign. Thus, a less than 50% recognizability may be enough to prove a reputation.

As you can see, reputed trademarks are not just Coca Cola type brands.

In certain cases, when we have a niche market, the trademark that has dominated this market can be considered reputable. Obviously it is difficult to prove, but it can be done.

And if that works, then the brand can benefit from enhanced protection.

Mikołaj Lech

Do you need legal help? Contact with me.
+48 607 416 240
office@lech.bydgoszcz.pl

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