Guidelines for Well-Known Marks Agreed
Geneva, June 11, 1999
Press Updates UPD/1999/63
Members of the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) have agreed on a set of new measures to improve the scope of protection for well-known marks. The meeting, which was held under the auspices of the World Intellectual Property Organization (WIPO) from June 7 to 11, 1999, reached consensus on the adoption of a resolution concerning Provisions for the Protection of Well-Known Marks (see http://sct.wipo.int) which is to be submitted for formal approval by member states at the September meeting of the WIPO Assemblies.
Protection of well-known marks is required under the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS). The proposed resolution seeks to clarify, consolidate and supplement these existing international standards of protection and to facilitate their application.
The proposed resolution sets out factors to be considered in determining whether a mark is well-known or not within a member state. It stipulates that a mark shall be considered well-known if it is recognized in a least one relevant sector of the public rather than by the public at large. Also, the proposed resolution outlines measures to resolve conflicts between well-known marks and other marks, business identifiers or domain names. The new standards require that a well-known mark shall be protected in a member state on the ground that it is well known, even if the mark is not registered or used in that country. Similar conditions are also set out for the protection of well-known marks in relation to business identifiers and domain names.
The proposed resolution is part of WIPO's policy to adapt to the rapid pace of change in the field of industrial property by considering new options to accelerate the development of international harmonized common principles and rules. This approach is designed to complement the traditional and more lengthy treaty-based approach to international standard setting. While not legally binding, the resolution - once adopted by the Paris Union and the WIPO General Assembly - will have strong persuasive authority. The adoption of the resolution does not preclude the provisions from being incorporated into a treaty at a later stage.
The proposed resolution is addressed only to those member states of the Paris Union or of WIPO that are already bound by an international obligation to protect well-known marks, for example under the Paris Convention for the Protection of Industrial Property or the TRIPS agreement.
The SCT also considered the broader issue of the use of trademarks and signs on the Internet and the possible consequences for international trademark law. The problems associated with the use of trademarks on the Internet stem from the territorial nature of intellectual property rights as well as the global reach of the Internet which results in a single act having effect simultaneously in practically all the jurisdictions of the world. The question of whether it is necessary to improve existing standards or whether new international private law rules are required to address this problem will be the subjects of on-going discussion by Standing Committee members.
The SCT was established by WIPO member states in March 1998 to assist in setting priorities, coordinating and streamlining the Organization's on-going work in the progressive development of the international law of trademarks, industrial designs and geographical indications.
For more detailed information, please contact the Media Relations and Public Affairs Section:
Tel: (+41 22) 338 81 61; 338 95 47
Fax: (+41 22) 338 88 10
E-mail: publicinf@wipo.int