1 - The international protection of trade marks

Question 1

What is the test for rejection of a TM application based on a ‘well-known’ marks?

Answer 1

The registration of a mark may be refused or cancelled
and/or its use prohibited (by injunction)

if the trade mark
or any essential part of it

is the same
or confusingly similar

to a mark already well-known

for the same
or similar goods in that country.

Question 2

What status must the owner of the TM have to benefit from well-known marks?

Answer 2

the owner must be a national of or domiciled in a [Paris] Convention country,
or have a real and effective industrial or commercial establishment in a Convention country.