According to the “Well-known Marks” doctrine (also known as the “Famous Marks” doctrine) under Article 6bis of the Paris Convention, a trademark or service mark may be entitled to protection in a country even if it was never used or registered in that country. Yes, you read that correctly – we are telling you that the territoriality principle, the longstanding tenet of U.S. trademark law, is not absolute.
Under this Famous Marks doctrine, when a mark that is used only on products sold outside of the U.S. is so famous such that its reputation is known within the U.S., then that mark can nevertheless be legally recognized inside the U.S. also. This becomes important when a junior user begins using a confusingly similar mark within the U.S. – the senior (non-U.S.) trademark owner can invoke this doctrine to allege a likelihood of confusion in the U.S. with its mark. When considered this way, the doctrine is really not in conflict with the territoriality principle at all – it simply recognizes that the non-U.S. company has established its priority position in the U.S. through its reputation before the junior user came along.
The Famous Marks doctrine can be a useful tool, especially when facing trademark pirates who race to a country’s trademark authority to register a well-known mark on goods or services on which the mark has not yet been registered in that country by the rightful owner. The doctrine is rarely invoked in countries like the U.S., where common law rights are recognized – the doctrine is typically more important in countries where registration is required in order for a mark to have protection against infringers. Nevertheless, even in the U.S., the doctrine can be very valuable tool in the tool belt of trademark owners in the right circumstances.
Although this doctrine is sometimes referred to as the “Famous Marks” doctrine, it should not be confused with the legal concept of a “famous mark” in the context of anti-dilution laws. Under anti-dilution laws, being “famous” is a very high standard reserved for only the most widely recognized marks – for example, the Ninth Circuit has stated that in order for a mark to meet this demanding requirement it must be “a household name.” A leading commentator on U.S. trademark law suggested that a mark should at a minimum be recognized by 75% of the general consuming public.
In contrast, under the Paris Convention Famous Marks doctrine, the Ninth Circuit held that “a substantial percentage of consumers in the relevant American market [must be] familiar with the foreign mark.” Grupo Gigante S.A. de C.V. v. Dallo & Co., 391 F.3d 1088 (9th Cir. 2004) (emphasis added). The “relevant American market” is the geographic area where the alleged infringer uses the mark in the U.S., and the concurring opinion indicated that a “substantial percentage” should be 50%. This is a higher standard than that of secondary meaning, but not as high as the standard under the anti-dilution laws.
When comparing these very different legal doctrines with the same name, it is evident that it may not be as difficult for non-U.S. trademark owners to meet the Paris Convention test as one may think. Marks can attain the level of requisite fame through advertising in internally distributed media (including the Internet), discussion by global media, or even by travelers who saw the mark in other countries.
Although this doctrine is required to be available in all countries that are members of the Paris Convention, it is up to each country to determine the definition of a well-known mark in their country. International Trademark Association (INTA) just released a bulletin that discusses this issue in the context of European jurisdictions.