Well-Known Trademarks: What Makes These Famous Marks Special?
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Let’s explain how well-known marks differ from ordinary registered trademarks and how major brands benefit from the extended scope of protection of their trademark rights, regardless of their registered goods and services classes and territories.
How trademarks usually work
Registering a trademark gives you an exclusive right to use it commercially for a particular class of goods and services and in a specific territory. If someone else uses a similar mark to sell goods in the same industry as yours, and in the same country you do business in, you will have the right to oppose them due to trademark infringement.
But if you sell dental devices, for example, and someone uses a similar trademark on their car repair shop in a different city, it would be tough to oppose the use even if you own a registered trademark—customers will hardly ever confuse your two businesses.
Extended protection for famous trademarks
However, if someone opens a brewery in Spain and wants to trademark one of its beers named “AUDI” and puts the famous logo on the bottle, things won’t go as planned.
Sure, everyone knows that AUDI doesn’t sell beer, but it’s obvious that the brewery owner is taking advantage and piggybacking the well-known trademark. In legal words, this is called “trademark blurring” as it connects a brand with unrelated products and services.
What’s more, because the core business of AUDI is making and selling cars, tying driving with alcohol can damage the reputation of the company. In a legal sense, they would likely claim “trademark tarnishment,” as the brand is tied to an activity that damages its reputation and core values.
But, how can they do that if AUDI doesn’t have a registered trademark in Spain for class 33 – alcoholic beverages?
EUIPO AUDI trademark classes
In this case, AUDI will claim their earlier trade mark has widespread recognition among the general public, giving it broader protection.
How do you protect a famous trademark?
In our case, AUDI will oppose the registration. They must prove to the Spanish IP office that the AUDI trademark used on the beer bottle is already well-known in Spanish territory.
They will do that by indicating all their trademarks already used in Spain for other goods and services and showcasing their advertisement materials. They can even conduct surveys demonstrating how the general public is more than familiar with the AUDI name and their logos.
Moreover, because Spain is a member of the European Union, AUDI can also submit all of the other trademarks registered in other EU countries and even show how they have won their famous trademark infringement claims in other IP offices and courts.
Lastly, they will claim that using an AUDI logo on beer bottles causes trademark dilution, specifically by blurring and tarnishment, and may even claim unfair competition.
The likely result will be that the Spain IP office rejects the opposed trademark application due to AUDI’s well-known trademark status—adios AUDI beer!
Bottom line
While it would be great to own a brand so famous that its trademarks enjoy extended protection, small business owners have a different concern—infringing famous trademarks.
That’s why it’s best to check everything in advance, not only when you want to register a logo for your products but even when selecting a business name. While you can trademark your business name, a brand name can also lead to trademark issues if it resembles a registered or well-known trademark or business name.
Because of the potential risks, it is imperative to consult a trademark attorney right away to prevent disputes and ensure your intellectual property is protected effectively.
