Publication date: 21.03.2024
I am studying in the third year of the State University of Economics and Technology.I specialize in contractual, economic and corporate law, in particular, I provide consultations and write articles.
One of the main institutions of intellectual property law is the institution of means of individualization, the key element of which should definitely be considered trademarks. Trademarks should be understood as special designations used in order to distinguish the goods and services of some business entities from the goods and services of other entities. At the same time, some brands, as a result of their long-term use, or due to the quality of products marked by them, become well-known. With the popularity of a trademark, the risks of its improper use, unfair competition and other illegal actions that in one way or another will violate intellectual property rights become greater, and therefore the legislation provides for a mechanism to protect such trademarks by giving them the status of well-known. With the acquisition of such status, the owner will receive a number of advantages, namely: the protection will extend both to related goods and services, and to those that are not related to the goods or services marked by a well-known trademark, in contrast to an ordinary trademark. which is 10 years, the well-known brand will be protected indefinitely, and this status will also act as an additional tool against illegal reproductions, imitations of the trademark.
Analysis of the features of recognizing a trademark as well-known:
As already mentioned, this status directly depends on the level of public awareness of the brand, and therefore its acquisition is possible only if the trademark complies with the legally established conditions. According to Art. 25 of the Law "On the Protection of Marks for Goods and Services" establishes the following relevant factors that can be used to establish whether a trademark is well-known: level of knowledge, recognition of such a trademark in a certain sector of society; attention should also be paid to the duration, scope, or geographic area of use and promotion (through advertising, publication, presentation at exhibitions, etc.), attention should also be paid to the duration and geographic area of trademark registration, or submission of applications for registration, are taken into account and the presence of evidence of successful defense of the rights to such a trademark and, in general, the value associated with it. When submitting an application for recognition of a trademark as well-known, it is not enough to mention the above factors, because it is necessary to document their existence. For example, the use or promotion of a trademark can be confirmed by information about the types of marking of goods, its use in advertisements, or taking any measures to promote the trademark. In turn, the intensity of use can be confirmed by the volume of sales of goods and services marked with a trademark, information about the average number of consumers, as well as the volume of exports of goods for which this means of individualization is used, etc. It is acceptable to conduct surveys in order to confirm the compliance of the trademark with the above conditions. It is worth noting that recognition of a trademark as well-known does not depend on the fact of its registration. It is possible to obtain the status of a well-known trademark both by applying to the NOIP Appeals Chamber and through court proceedings.
Procedure for recognition of a trademark by the well-known NOIP Appeals Chamber:
1. If the owner of the trademark has established the presence of the above-mentioned factors and wishes to recognize it as well-known, then it is necessary to submit a corresponding application to the NOIP Appeals Chamber. It is worth noting that the application is submitted for one trademark. The following should be added to the application: an image of the trademark that must be recognized as well-known, documents that confirm the information stated in the application, as well as an extract from the register of trademark certificates. It should also be taken into account that a fee is charged for submitting an application.
2. The submitted application is subject to registration in the NOIP, and a panel is appointed accordingly for its consideration. It is such a panel that will establish the compliance of the application with the requirements of the law and, in general, will establish the grounds for recognizing the trademark as well-known. If all the conditions are met in the application, it is accepted for consideration and the applicant is sent a corresponding message, which must indicate the place and time of the meeting.
3. The next stage is holding a meeting with the applicant. After reviewing the application on the merits, the panel will make a decision on recognizing the trademark as well-known. If the decision was made in violation of the legally established procedure or the applicant was unreasonably refused to satisfy the application, then such a decision can be appealed by applying to the court.
Consultation of a lawyer specializing in intellectual property law:
The procedure for recognizing a well-known trademark is multi-stage and involves legal analysis of the situation and analysis of documents, and the main thing is compliance with the above-mentioned factors. A lawyer may be needed at any stage, starting from drafting an application and ending with receiving a decision. If the application was unreasonably rejected, the lawyer will help appeal such a decision in court.
