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18 Jan

Well-known trademarks. Protection even without a formal registration.

Well-known trademarks are trademarks known at least by 50% of the consumers. Contrary to reputable trademarks, they are not registered. By indicating a common knowledge of your trademark you can benefit from legal protection equal to registered trademarks. But it is not as simple as it looks like.

Well-known trademarks do not occur very often.

In legal (and not colloquial) terms, well-known trademarks are rare. As I wrote in the introduction, they are trademarks that:

  • are not formally registered in the relevant Patent Office, and
  • are known for at least a half of your potential consumers.

Companies that own brands on which they make a profit quickly register them.

And it’s most often right in a few variations.

However, it may happen that an entrepreneur is actively promoting his trademark in many countries but does not protect it worldwide.

Example:

Physically, the first bottles of Coca Cola to Poland came in 1957. Even then, this brand was a well-known trademark in Poland. If this trademark was not registered, it would have benefited from legal protection by his popularity.

However, it is only “what if.”.As I checked, Coca Cola has been protecting in Poland since almost 90 years, the following trademark:

well-known trademarks

R-013871

Curiosity:

Recently in the media appeared information that APPLE lost the trial in China for a trademark IPHONE. An Asian company registered this mark in 2007 for marking leather accessories.

Importantly, Apple’s first revolutionary phone model was introduced only in 2009.

Thus, at the time when the Chinese entrepreneur made the application, IPHONE was neither a well-known trademark nor a reputable-known trademark.

The Chinese easily defended and continue to produce such goods:

well-known trademarks

When the well-known trademarks are created?

As in the case of a well-known trademarks, here  the following question must be asked:

when the ordinary trademark transforms into a well-known trademark?

It is certainly not a quick process.

Well-known trademarks must meet certain requirements.

1. They must be used in the function of the trademark.

Such marks must be used in trade to designating goods or services.

For example, if someone has a very popular blog, but he does not offer anything, he does not use it’s name as a trademark.

However, it would have been if the blog ran a shop, for example with wines under the same name.

2. They must be well-known among potential recipients.

  • This means that it must be known at least by 50% of the recipients. This is therefore a higher criterion than with reputable marks. So it can be said that it is more difficult to prove the common knowledge of a mark than its reputation.
  • The buyers are those who are interested in the purchase of goods or services marked with this mark.

Depending on the type of goods, the number of people who need to know the mark may vary.
In the case of the milk brand it will be almost everyone. However, with the farm tractor brand, this knowledge is enough to demonstrate among farmers.

  • Well-known trademarks must be known throughout the territory of the country or a substantial part thereof.

3. It is not necessary to demonstrate the high qualities of the products.

Polish jurisprudence as one of the elements required for the recognition of a reputation as a recognized one recognizes the high quality of the goods or services marked with this mark. Such requirements do not have to meet the well-known trademarks.

Moreover, a given physical product does not even have to occur in our country.

If, as a result of intense advertising, a given mark would be known to the majority of recipients in Poland, it would be protected. In the ALLPE dispute, IPHONE was neither advertised nor offered before 2007, so this common knowledge or reputation has not been demonstrated.

Well-known trademarks vs. reputable ones.

What differentiates the well-known trademarks from reputable marks is:

the scope of protection

The first ones are protected only in the scope of the goods and services they are used for. Reputable marks, on the other hand, are also protected in the scope of unsimilar goods and services.

Their protection is therefore stronger (wider)

There is, however, a simple way for a well-known trademark to be turned into a reputable mark. It must be registered. The requirement of recognizability at reputable marks is lower than at commonly known marks. With this registration we will be able to benefit from increased legal protection.

Of course, it’s not that easy either.

In case of any dispute, we will always have to prove the reputation or common knowledge of our mark.

In conclusion:

Trademarks known to more than 50% of potential recipients may be considered well-known trademarks.

  • Such customers are those who are interested in acquiring the goods or services concerned.
  • These marks must be used in a significant territory of the country.
  • These marks must be used in the function of the trademark (that is, to mark the goods or services).
  • These marks can not be registered in the Patent Office.

Mikołaj Lech

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

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