OF WELL-KNOWN MARK S
Ronald Lehrman *
Carlos Cucurella **
This article will comment on problems faced by owners of well-known trade-
marks from the perspective of an outside counsel involved in the interna-
tional protection of such marks. Although considerable advances have been
made in the protection afforded to well-known marks under treaties, such as
the Paris Convention, multi-country laws, such as the Benelux and European
Community trademark laws, and national laws, ownership of these marks
is a high-maintenance business. It involves heavy burdens, some of which
should, in a better-organized world, be borne by governmental agencies.
This is not intended to be a lament for owners of well-known marks who are,
as a group, doing rather well. But such companies are the primary targets
for specific forms of illegal activities that society does not condemn, and to
some extent, actually embraces.
International protection for marks which are well known, but not reg-
istered in the country where protection is sought, was introduced into the
Paris Convention at the Hague Conference of 1925 through Article 6 bis.
The article obliges member countries to refuse or cancel a registration, and
to prohibit the use, of a trademark confusable with a well-known mark of
a party entitled to the benefits of the Convention. It is effective only with
respect to identical or similar goods; a serious limitation.
Article 6 bis does not oblige member countries to protect well-known
marks that have not been used in the jurisdiction, although it leaves them
free to do so. In the 1958 Lisbon Conference, a proposal, providing that use
* Lawyer, University of Havana and Dartmouth College (B.A.). Harvard Law School
(J.D.), Phi Beta Kappa. Author of several works related to trade mark law. He has been recog-
nized as leading trade mark law practitioner by many specialized publications, such as Who’s
Who Legal Trademarks, Euromoney Legal Media Group; New York Super Lawyers, Legal 500
US Guide. Partner at Fross Zelnick Lehrman & Zissu, P.C.
** Universitat Pompeu Fabra School of Law, Barcelona, Licenciatura en Derecho. Lon-
don School of Economics and Political Science (LL.M.), Patronat Catala pro-Europa Scholar.
New York University School of Law (LL.M.), “La Caixa” Foundation Scholar. Member of the
Il.lustre Col.legi d’Advocats de Barcelona, New York State Bar Association, International
Trademark Association (INTA) and Inter American Association of Intellectual Property