The protection of famous and well-known marks

Abstract

Without any shadow of doubt, the eighties and nineties have been the decades of intellectual property. Though there are several reasons for this, the most important must surely be the great impetus created by the United States that led to the inclusion of matters concerning intellectual property onto the agenda of the General Agreement on Tariffs and Trade at the commencement of the Uruguay Round. As a result, such matters have become fundamental trade-related issues which directly or indirectly have certain affects on all the states that are members of the international community. This entire process has given famous and well-known marks significant importance. This is primarily manifested in the Agreement on Trade Related Aspects of Intellectual Property Rights, which was concluded in 1995 within the ambit of the World Trade Organisation Agreement. This agreement has built on the previously obtaining scenario that was focused around the Paris Convention for the Protection of Industrial Property. Its highlights include specific provisions that oblige member states to grant well-known marks specific protection, even beyond the scope of similarity, within their territories. Moreover, the agreement incorporates enforcement mechanisms to ensure that member states do in fact, guarantee the required levels of protection to famous and well-known marks. This thesis intends to examine the phenomenon of famous and well-known marks and analyse the channels of protection that are presently available to the owners of such marks around the world. In the first chapter, which is mainly introductory, introduces the reader to the world of intellectual property, examining the different theories of intellectual property protection and then, passes on to deal with trademark law in particular. The final part of the chapter, converges onto famous and well-known marks and their immense importance in trans-national commercial transactions in the world today. Chapter two, is entirely devoted to the topic of famous and well-known marks. It analyses whether or not such marks deserve special protection and the· justification for such protection. The chapter then attempts to lay down certain standard parameters to assist in determining whether or not a mark is to be considered famous and well-known. It also examines the evolving attitudes in different states that have adopted distinctions between categories of repute. The third chapter takes a cursory glance at the protection given to famous and well-known marks in a number of jurisdictions across the world. It commences with Malta, going on to the European Union and then passes on to the United Kingdom. Next, it tackles the position in the United States, with particular reference to the theory.of anti-dilution, followed by the situation in Australia and South Africa, where, until recently, the attitude towards famous marks was not too favourable. In the last part of the chapter, there is a brief mention of the position in Canada and Italy. Chapter 4 passes on to analyse the international perspective to the protection of well-known marks. It commences with a comment on the World Intellectual Property Organisation and then delves directly into the matter, beginning with the Paris Convention 1883. It continues with the Madrid Agreement and Protocol and the possibilities of international registration of marks. This is followed by a brief comment on some other international trademark treaties and lastly, analyses the new world order that has emerged following the above mentioned TRIPS Agreement. The final chapter looks into the future and includes some concluding remarks on the local as well as the international sphere.