Paris Convention (1) Flashcards
What is the Paris Convention?
It is a Union for the protection of intellectual property. It was signed in 1883 and is still in force. It was one of the first IP treaties.
What does Article 6 bis of the Paris Convention relate to?
Protection of well-known trade marks
What is the purpose of Article 6 bis?
It is needed only occasionally as most, if not all, well-known marks are registered. However, when the Paris Convention was negotiated, many proprietors had not got round to registering their marks throughout the world and some marks could not be registered at all (e.g. many geographical names in UK).
The article places members under an obligation to reject or cancel the registration, or prohibit the use, of trade marks that are identical or confusingly similar to a mark that is well known within a jurisdiction.
Describe the terms of Article 6bis of the Paris Convention for the Protection of
Industrial Property which provides for the protection of well-known marks.
a) The countries of the Union undertake ex officio if their legislation so permits, or at the request of an interested party
i. to refuse or to cancel the registration, and to prohibit the use, of a trademark
ii. which constitutes a reproduction, an imitation, or a translation, liable to create
confusion,
iii. of a mark considered by the competent authority of the country of registration or use to be well known in that country
iv. as being already the mark of a person entitled to the benefits of this Convention
v. and used for identical or similar goods.
vi. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.
Describe the provisions in Article 6bis relating to time limits.
i. A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.
ii. No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.
Explain briefly whether it is possible to rely on the Paris Convention provisions benefiting ‘well-known marks’ in the following scenario:
A French owner of an unregistered mark wishes to oppose a United Kingdom trade mark application. The mark has only ever been used in the United Kingdom, on the owner’s imported goods, and is well-known only to British consumers. 2 marks
i) Yes. The owner is established in a Convention country [0.5 mark (i) ], and the mark is well known in the United Kingdom [0.5 mark (ii) ]. There is no requirement that the
mark be registered [1 mark (iii) ].
Explain briefly whether it is possible to rely on the Paris Convention provisions benefiting ‘well-known marks’ in the following scenario:
A Jersey-incorporated owner of a registered French trade mark wishes to oppose a United Kingdom trade mark application. The mark has only ever been used in France, on goods made in the owner’s French factory. The mark is wellknown to British consumers, from their holidays in France. Jersey is not a member of the Paris Convention. 2 marks
ii) Yes. The mark is well-known in the United Kingdom [1 mark (i) ]. The owner has a
real and effective industrial or commercial establishment in a Convention country [1
mark (ii) ]. This is all that is required.
Explain briefly whether it is possible to rely on the Paris Convention provisions benefiting ‘well-known marks’ in the following scenario:
A French owner of a registered French trade mark wishes to oppose a United Kingdom trade mark application. The mark has only ever been used in France, where it is well-known. It is wholly unfamiliar to British consumers. 2 marks
iii) No. The marks is not well known in the United Kingdom [1 mark (i) ] and therefore not entitled to protection as a ‘well-known mark’ in the United Kingdom [1 mark (ii) ].
2 marks
Explain briefly whether it is possible to rely on the Paris Convention provisions benefiting ‘well-known marks’ in the following scenario:
A French owner of a registered French trade mark wishes to oppose a European Union Trade Mark application. The mark has only ever been used in France, where it is well-known. It is also well-known to other European consumers, from their holidays in France. 2 marks
iv) Yes. The mark is well known in at least one ‘Member State’ of the EU [0.5 mark (i) ]
other than France [0.5 mark (ii) ]. Grounds for refusal in one member state is
sufficient for the entire EUTM to be refused [1 mark(iii)]
2 marks
