Publication Type

Journal Article

Version

acceptedVersion

Publication Date

12-2009

Abstract

The continual strengthening of the protection for well-known marks has been one of the features of international trademark development in the post-TRIPS era. In many countries well-known marks can now be granted full trademark right and protection merely from the fact that they are well-known; well-known marks can also be protected against dilution or even the likelihood thereof, and against comparative advertising that is discrediting or denigrating. However, for market late-comers seeking a new trademark, there is no clear way to determine if a particular mark is well-known. Without this certainty the applicant cannot calculate the risk of having the trademark application rejected or even the risk of liability through the infringement upon or the dilution of a well-known mark.Therefore, with various jurisdictions establishing different ways of listing well-known marks, the variant listing methods have resulted in divergent effects. This paper examines the various practices of listing well-known marks and points out how listings can be misused. It evaluates the pros and cons of different models of listing well-known marks. With the aim of maximizing the use and minimizing the misuse of listings, this paper concludes by advocating the creation of a centralized on-line database of well-known marks cases recognized in the past five years.

Discipline

Intellectual Property Law

Research Areas

Innovation, Technology and the Law

Publication

International Review of Intellectual Property and Competition Law

Volume

40

Issue

6

First Page

685

Last Page

697

ISSN

0018-9855

Publisher

Max-Planck-Institut für Immaterialgüter- und Wettbewerbsrecht

Copyright Owner and License

Authors

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