The use and misuse of well-known marks listings

• Main Authors: LIU, Kung-chung, WANG, Eric, TAO, Xinliang
• Format: text
• Language: English
• Published: Institutional Knowledge at Singapore Management University 2009
• Subjects: Intellectual Property Law
• Online Access: https://ink.library.smu.edu.sg/sol_research/3112; https://ink.library.smu.edu.sg/context/sol_research/article/5070/viewcontent/Use_misuse_well_known_marks_2009_av.pdf
• Institution: Singapore Management University

The continual strengthening of the protection for well-known marks has been one of the features of international trademark development in the post-TRIPS era. In many countries well-known marks can now be granted full trademark right and protection merely from the fact that they are well-known; well-known marks can also be protected against dilution or even the likelihood thereof, and against comparative advertising that is discrediting or denigrating. However, for market late-comers seeking a new trademark, there is no clear way to determine if a particular mark is well-known. Without this certainty the applicant cannot calculate the risk of having the trademark application rejected or even the risk of liability through the infringement upon or the dilution of a well-known mark.Therefore, with various jurisdictions establishing different ways of listing well-known marks, the variant listing methods have resulted in divergent effects. This paper examines the various practices of listing well-known marks and points out how listings can be misused. It evaluates the pros and cons of different models of listing well-known marks. With the aim of maximizing the use and minimizing the misuse of listings, this paper concludes by advocating the creation of a centralized on-line database of well-known marks cases recognized in the past five years.