The fame of a trademark : protecting the well-known trademark

Abstract

This thesis will trace the definition and elements of what constitutes a famous and “well-known” trademark, both at a national and international level, drawing a path of the protection covering such trademarks. Running through Maltese law, a variety of EU legislation, Conventions and the domestic legislation of various other countries that are examined including the United Kingdom, the United States of America, France, Germany and Spain. In Chapter 2, a distinction is made between “well-known” trademarks and marks having a “reputation”, catering for a different degree of protection. The similarity and identity of trademarks, and the result thereof, are also explored, along with extensive case law on the subject. Another aspect which this thesis tackles is the notion of likelihood of confusion in comparison to the likelihood of association. In relation to this, the significance of an earlier trademark and the roots of its protection are spread well throughout Chapter 3. The thesis covers another type of protection: that against unfair competition, in Chapter 4. Here, the Maltese Commercial Code comes into play. The principle of “prior use” is examined in detail, leading to a better understanding of what it constitutes, while case law shows how this has been applied. Various other jurisdictions, including the ones mentioned above, will be analysed, indicating how they uphold this protection in their own distinctive manner. The causes and circumstances that may result from the unjust or unauthorised use of such trademarks are also outlined in Chapter 5, clearly showing the aspects that cause infringement to arise, as well as how the Court of Justice of the European Union has tackled these issues in a critical approach.