Kenny Wiston


Recently, there has been a massive growth in the registration of domain names, many of which consist of trademarks of the registrant. Because of their accessibility, domain names are the preferred way to specify an address to a  computer. While designed to serve the function of enabling users to locate computer addresses in an easy manner, domain names have acquired a further significance as business identifiers and, as such, have come into conflict with the system of business identifiers i.e. trademarks that existed before the arrival of the Internet and that are protected by intellectual property rights.
       The tension between domain names, on the one hand, and intellectual property rights particularly trademarks, on the other hand, have led to numerous problems that raise challenging policy questions. These policy questions have new dimensions that are a consequence of the intersection of a global, multipurpose medium, i.e. the Internet, with systems designed for the physical, territorial world. With domain name registration tending to operate on a first come first served basis,  the potential for disputes over rights to a domain name, particularly those that constitute trademarks, has also inevitably increased.

       The tension that exists between the nature of the two systems has been exacerbated by a number of predatory and parasitical practices that have been adopted by some to exploit the lack of connection between the purposes for which the Domain Name System (DNS) was designed and those for which intellectual protection exists. These practices include the deliberate, bad faith registration as domain names of well-known and other trademarks in the hope of being able to sell the domain names to the owners of those marks, or simply to take unfair advantage of the reputation attached to those marks.
       Disputes, however,  arise over registration of conflicting domain names innocently  as well as fraudulently .

Definition and Terminology of Well-Known Mark

The concept of a well-known mark was, in fact, developed in the context of Article 6bis of the Paris Convention to provide owners of marks, which were widely known in the marketplace but not registered, with a measure of protection against later registrations of the same mark by others.

        It should, nonetheless, be recognised that well-known status cannot be pinpointed with precision by a bright-line definition. Courts and commentators use a variety of terms to refer to well-known marks or various categories of them, including notorious, famous, highly renowned, highly reputed and exceptionally well-known.  These terms indeed have such a large degree of overlap which may lead to a fair amount of confusion. The better view seems to be one that focuses on the universal term provided in Article 6bis of the Paris Convention of a well-known mark: marque notoriement connue, notorisch bekannte marke, marchio notoriamente conosciuto or marca notoriamente conocida. The ordinary dictionary meaning of well-known according to Merriam Webster  and the Oxford English Dictionary  is, among others, widely known and known to many. According to the International Association for the Protection of Industrial Property (AIPPI), a well-known mark is a mark which is known to a large part of the public, being associated with the article or the service in the mind of the public, as indicating their origin.

Nevertheless, an interesting development is Article 16(3) of the TRIPs Agreement which provides that Article 6bis of the Paris Convention shall apply mutatis mutandis to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trade mark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trade mark and provided that the interests of the owner are likely to be damaged by such use.

When Is A Mark Well-Known?

In trying to establish internationally recognised criteria to determine whether a mark is well-known or not, Frederick Mostert  summarised a common set of factors that has evolved from an analysis and comparison of guidelines from many different countries. In brief these are as follows:

(i) The degree of  recognition of the mark
This can be established directly, by unsolicited requests from third parties such as potential licencees, manufacturers and other users or consumers of the goods or services which bear the mark. Alternatively it can be proven by survey evidence. This degree of recognition is the very essence of establishing a famous or well-known status and can be done is various ways. The following additional factors are a non-exhaustive set of guidelines which has emerged to assist with assessing the degree of recognition acquired by the mark in question.

(ii) The extent to which the mark is used and the duration of the use
As well as volume of sales, and depth of market penetration, the market share of the goods or services for which the mark is used will also be useful.

(iii) The extent and duration of advertising and publicity accorded to the mark
The effectiveness of the advertising is very important in producing a well-known mark. It can happen overnight, or over a long period, and can spill over into other territories, jurisdictions, and fields of goods or services.

(iv) Factors which may determine the mark's geographical reach locally, regionally and worldwide
Included in these are the extent to which the mark is recognised, used, advertised, registered and enforced geographically. Other significant factors could be the use in another country sharing the same language or media, along with the owner's effort to register and enforce the mark worldwide.

(v)   The degree of inherent or acquired distinctiveness of the mark
The demonstration of distinctiveness can assist in supporting a broader scope of protection for the mark on non-competing goods. Insofar as the distinctiveness of the mark is dependent upon its exclusivity, such determination coincides with the next factor to be considered.

(vi) The degree of exclusivity of the mark and the nature and extent of use of the same or a similar mark by third parties
The multiple use by several parties of the same mark is likely to indicate that wide reputation or fame does not attach to any one of them, except perhaps in a narrow field of use within a specific market. This is significant in a dilution case where the less exclusive a mark, the more unlikely the chances it will become even more diluted by a third party use on non-competing goods.

(vii) The nature of the goods or services and the channels of trade for the goods or services which bear the mark
The channel of trade which help to broaden or narrow the exposure of the consuming public to the mark, could have an effect on the protection afforded on non-competing goods or services.

(viii) The degree to which the reputation of the mark symbolises quality goods
This is relevant in dilution cases where tarnishing is involved.

(ix) The extent of the commercial value attributed to the mark
In some cases, the asset value given to the mark by financial institutions could be reflective of its reputation and fame. Whether a mark is well-known or not should be assessed case by case. It is the overall picture which emerges from the application of all these criteria which will determine whether a mark is considered famous in the marketplace.

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