Progress is Made Towards Strengthening Protection of Well-Known Marks

Geneva, March 22, 1999
Press Updates UPD/1999/53

After four years of deliberations, member states of the World Intellectual Property Organization (WIPO) have made significant headway in extending the scope of international protection available to owners of well-known trademarks. The Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), meeting under the auspices of WIPO from March 15 to 17, 1999, wrapped up with agreement on a number of key questions.

The Committee focused on finalizing a draft resolution on the Protection of Well-Known Marks that will be submitted for approval to the meeting of the Assemblies of the WIPO member states in September 1999. This is part of efforts by WIPO to complement the more lengthy treaty-based approach to the adoption of internationally harmonized industrial property principles and rules.

Participants at the meeting finalized five of six articles in the draft resolution. These cover definition of well-known marks, determination of whether it is well known in a particular member state, and the scope of protection of well-known marks. They agreed to defer consideration of the sixth article on conflicts between well-known marks and domain names to their next meeting in June 1999.

The draft resolution builds on the Paris Convention on Industrial Property and the TRIPs agreement (Trade Related Aspects of Intellectual Property), and establishes specific criteria for the definition of well-known trademarks. It also seeks to broaden the scope of international protection of well-known marks by outlining the conditions to determine whether a mark is well-known in a given country. The holder of a well-known mark, according to the draft resolution, is free to use any evidence that may support such a claim. The draft stipulates that a well-known mark shall be protected in a specific country on the ground that it is well known, even if the mark is not registered or used in that country.

The meeting was attended by delegations of 71 member States and the European Communities, two intergovernmental organizations (IGOs) and 18 non-governmental organizations (NGOs).

The SCT was established by WIPO Member States in March 1998. In addition to WIPO member states, the Committee is open to selected IGOs and NGOs. It allows member states to set priorities, coordinate and streamline the Organization's on-going work in the progressive development of the international law of trademarks, industrial designs and geographical indications.

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