Contributors: Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador
INTA Famous and Well-Known Marks Committee.
Ms. Lisa Yong, Indonesia Country Manager Rouse, Jakarta, Indonesia
In 2005, INTA issued a Board Resolution establishing guidelines for countries electing to establish famous and well-known marks (FWKM) registries so they could adopt certain practices—clearly outlined in the resolution—that align with international standards and afford legal certainty concerning rights in well-known marks. Seventeen years later, INTA’s FWKM Committee has concluded a survey of these registries to determine how INTA’s recommended best practices have been adopted.
FWKM registries are useful for brand owners that are operating or whose products have substantial commercial use in the respective markets. In general, these lists are published and accessible to anyone, so brand owners may easily use these when facing disputes such as oppositions or cancellations.
The best practices contained in the Board Resolution include, for example, the publication of the purpose and benefits of the registry, clear rules and criteria for examination of FWKMs, and adequate examiner training. Further, the procedure of adding FWKMs to the registry should afford third parties the opportunity to oppose a mark from being in the registry and should provide confidential treatment for the sensitive information provided for the examination.
INTA’s Board Resolution established that marks should be in a registry for a 10-year term, with the possibility of renewal. However, the guidelines contained in the Board Resolution make clear that being in the registry is not a prerequisite to bringing a claim (related to trademark infringement or asserting the mark, for instance), and not being included does not diminish the right of a trademark owner to seek protection of its famous or well-known marks.
How Have INTA’s Best Practices Been Adopted?
Initiated in the 2020‒2021 Committee Term and concluded in July 2022, the survey has been going on for over two years. This involved exhaustive research during which it was discovered—with much surprise —that only 12 markets worldwide maintain such registries, including, in terms of larger consumer markets, Brazil, India, and Mexico. The survey database includes useful practical information in relation to FWKMs, including timeframes, cost ranges, evidence requirements, and their formalities, such as language or notarization requirements. It also features the actual effects of the recognition on enforcement matters, and if there is a possibility to appeal in case of refusal or the possibility of cancellations from the registry. The survey database has been published on the INTA website.
Based on a preliminary review, the survey found that the degree of adoption of INTA’s best practices varies depending on the recommendation. For example, the recommendation for publication of well-known marks data was taken up by most FWKM registries. However, in terms of a fixed 10-year period for well-known mark status, it was interesting to find that some registries either adopted shorter periods or went to the other extreme of indefinite protection, as long as the registration is renewed.
In the next stage of this project, the FWKM Committee will analyze in depth the survey results and hold dialogues with the key registries. This further work aims to provide informed input on what has worked and what has not, and to determine (1) to what extent INTA needs to update its best practices (if at all); and (2) if the Association should update its official position on FWKM registries through the adoption of a new Board Resolution.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2022 International Trademark Association
“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”