Assessing whether a mark is ‘well known’

The criteria for a mark to be ‘well known’ is higher than the assessment criteria for trademarks with reputation (Chevy, C-375/97), and decisions can vary considerably between EU member states, as Casper Hemelrijk explains.

Providing the necessary level of evidence to prove that a sign is well known can cause issues for unregistered rights holders. The required level of recognition to be considered well known can also differ between EU member states, since there are no specific legislative criteria to assess marks, and interpretation of case law can vary.

Criteria for assessment

In Boomerang (T-420/03), the General Court of the EU decided that the competent authority can consider any circumstances from which it may be inferred that the mark is well known, including:

• The degree of knowledge or recognition of the mark in the relevant sector of the public;
• The duration, extent and geographical area of any use of the mark;
• The duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fair or exhibitions of the goods and/or services to which the mark applies;
• The duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent to which they reflect use or recognition of the mark;
• The record of successful enforcement of rights in the mark, in particular, the extent to which the mark has been recognised as well known by competent authorities;
• The value associated with the mark.

As mentioned above, the trademark offices of the member states have their own discretion in deciding whether a mark is well known, and the required rate of recognition can differ between the member states therefore. For example, the Benelux Office for Intellectual Property (BOIP) is stricter and more hesitant to recognise marks as well known, as compared to the EUIPO.

For further advice or support, please speak to your Novagraaf attorney or contact us below.

Casper Hemelrijk works at Novagraaf’s Competence Centre in Amsterdam.