The Use and Misuse of Well-Known Marks Listings

Abstract

In order to extend protection to marks already known but not registered in the country where protection is sought, the Paris Convention introduced in 1925 the "well-known" marks regime in Art. 6(bis). Article 6(bis) limits the protection by prohibiting other parties from registering or using confusingly similar marks on identical or similar goods (excluding services).(1) With the Agreement on Trade-Related Aspects of Intellectual Property Rights, the World Trade Organization further applied Art. 6(bis) of the Paris Convention to services and dissimilar goods or services (Art. 16(2) and (3)). As of December 2008 the Paris Convention had 173 contracting parties and the WTO 153 members. As a consequence, the term "well-known" mark is widely used by countries the world over. However, since neither the Paris Convention nor the TRIPS Agreement defined the term, the practice of recognizing and protecting well-known marks now varies significantly from country to country.(2)