Lexicon > Renowned or well-known trademark 
IP Lexicon
Renowned or well-known trademark

In law, the concepts of reputed and well-known trademarks were first established by case law and concern trademarks which, due to their high public awareness, are likely to benefit from extended protection.

Although these two concepts are similar, they are not synonymous: the legal regime of the reputed trademark and the well-known trademark is distinct.

Concerning first of all the regime of the reputed trademarkIn addition to the above, the right to use a registered trademark may be granted to the owner of a registered trademark who can prove that his trademark is widely known to a significant part of the relevant public for the purposes of product(s) and/or service(s ) it designates (CJEU, 14 September 1999, Case C-375/97, points 22, 23 and 26).

Conditions for protection of the reputed trademark

The benefit of the reputed trademark regime, whether it concerns the repute of a French trademark or a European Union trademark, thus assumes that the following conditions are met

  • Registered trademark (or trademark application, subject to subsequent registration) ;
  • Sufficient degree of knowledge of this trademark by a significant part of the relevant public: the ” significant part of the relevant public” is assessed at two levels:
  • The first level is that of the territory concerned by the alleged knowledge: the scope of the knowledge of the trademark cannot be only local for a French trademark, or only centered on a member state of the European Union for a European Union trademark (with rare exceptions).
  • The second level is that of “knowledge” by the public: to establish this extensive knowledge, case law takes into consideration all the elements relevant to assessing repute, and in particular the market share held by the trademark, the intensity of its use, the geographical extent and duration of its use, or the importance of the investments made to promote and market it (see in particular INPI, December 22, 2020, n°NL 20-0009; INPI, January 13, 2021, n°NL 20-0037; Court of Appeal of Paris, March 9, 2018, n°16-24.260).

The proof of reputation must be clear and convincing, and the case law is very strict on this subject.

This strict assessment is explained by the fact that when the reputation of the trademark is considered to be established, its owner escapes the principle of speciality, which can be considered as an obstacle to the principle of free competition.

He can then validly oppose his trademark to a trademark and/or to the use of a subsequent sign identical or similar to the reputed trademark, for different product(s) and/or service(s ).

Conditions for infringement of the reputed trademark

However, the principle of speciality can only be waived in the case of
of damage
the use of a reputed trademark, which is characterized when the use of the later trademark takes undue advantage, without just cause, of the distinctive character or the repute of the earlier trademark, or is detrimental to it.

The well-known trademark
The well-known trademark, on the other hand, concerns a sign that is not registered with the Offices and that has become widely known to the public because of the use that is made of it (this use must nevertheless be made “as a trademark “, see Counterfeiting).

This concept comes from Article 6bis of the Paris Union Convention.

In the absence of a trademark registration, since the introduction of the ” Trademark Package , the unregistered well-known trademark can be opposed in the context of an opposition or a nullity action before theINPI.

However, a person who claims an unregistered well-known trademark is not entitled to bring an action for infringement: this is a classic civil liability action.

Point of jurisprudence

The EUIPO refused to recognize the reputation of the trademark (TIK TOK) because the applicant did not provide sufficient information on the level of awareness of the TIK TOK trademarks among relevant consumers in the European Union (EUIPO, Opp. B3135494, December 22, 2021).

The plaintiff company also failed to produce any invoices, sample advertisements or evidence indicating the extent of trademark promotion, opinion polls or any conclusive evidence to support the sales figures or other figures mentioned in online articles.

The case law is therefore particularly strict in its assessment of repute and appreciates the seriousness of each repute case submitted to it, regardless of the “general public’s” knowledge of a trademark.

Update on the principle of speciality

By virtue of the principle of specialty, the protection of a trademark is not absolute and is limited to the product(s) and/or service(s) it identifies.

Thus, even if two signs are perfectly identical, the likelihood of confusion can be ruled out if the signs are used for different products and/or services, as the public is not entitled to attribute a common origin to them in such cases.

Update on the “Trademark Package”

Whereas well-known and well-known trademarks were then subject to the same regime and limited to civil liability actions, the PACTE law introduced the possibility of invoking well-known or well-known trademarks in the context of oppositions and nullity actions before the INPI.

The reputed trademark can now also be invoked in support of an infringement action before the Courts, whereas the well-known trademark can only be invoked in the context of a classic civil liability action.

The Bouchara firm assists you in particular in :

  • Protection and optimization of your intellectual property rights in France and abroad;
  • Prior art search prior to any trademark filing in order to identify identical or similar prior signs;
  • The formalities for filing your trademarks (drafting the wording of the classes of product(s) and/or service(s), information about the applicant, analysis of the distinctive character of the sign, etc.);
  • Strategies to protect and defend your trademarks ;
  • Proceedings before the Offices and before the Courts(opposition, nullity action, actions for revocation for lack of use or loss of distinctive character, seizure procedure);
  • Preparing the proofs of use required to demonstrate the notoriety or reputation of your trademarks.