Well-known trademark

A well-known mark is a mark known to a large part of the relevant public, to the point of being protected even without registration. The concept originates in Article 6bis of the Paris Convention for the Protection of Industrial Property. In French law, the well-known mark enjoys specific protection under Article L. 713-5 of the French Intellectual Property Code.

Well-known mark and mark with a reputation

The two concepts are often confused. The well-known mark is protected without any filing, by way of exception to the principle that rights in a trade mark are acquired by registration. The mark with a reputation, by contrast, is a registered mark whose recognition by the public justifies protection extending beyond the designated goods and services. The required degree of recognition also differs: well-known status requires very extensive recognition, while reputation is assessed more flexibly. In practice, the owner of a well-known mark is well advised to register it so as to combine both regimes.

Proving well-known status

Well-known status may be proved by any means. Surveys, sales figures, the scale of advertising investment, the duration of use and media coverage are the elements usually relied on. The relevant public is that of the consumers of the goods or services concerned, not the general public as a whole. A mark may therefore be well known in a specialised sector without being known beyond it.

Available actions

The owner may oppose the registration of an identical or similar sign, seek cancellation of a later mark and bring a civil liability claim against anyone using the sign. The use of a well-known mark by a third party is thus governed by a regime close to that of trade mark infringement, without being formally qualified as infringement where the mark is not registered. The firm handles such disputes before the Paris judicial court and the INPI, alongside actions for unfair competition and parasitism.