This content is from: Trademarks

Don’t you know who I am? Tips for proving fame

Panelists shared tricks for defeating trademark hijackers in various jurisdictions yesterday in the session “Almost Famous: Proving Fame in First to File Jurisdictions”

Tiki Dare of Oracle Corporation offered a war story from Oracle in Chile. The technology company did not have a registration in Chile when a watch notice turned up for textile and clothing.

To prove it was famous, Dare was able to bring in a lot of evidence including from social media and the company’s involvement in the Americas Cup. “It didn’t hurt that we were in Iron Man 2,” she said.

Mauro Santos of Dannemann Siemsen Bigler & Ipanema Moreira in Brazil gave an overview of well-known trademarks and famous trademarks in his country.

Well-known trademarks give a trademark owner the chance to attack a third party independently of whether it has previously filed or registered in Brazil. The general conditions needed are evidence in Brazil, evidence in the field of activity and evidence prior to infringement. Actual use is not a pre-condition, however.

Famous trademarks get a higher level of protection. “The Brazilian PTO is very stringent on evidence for these,” said Santos. “It is a very high standard.” He said an applicant would likely need a survey showing brand recognition with more than 60% of the public. When taking on trademark hijackers, bad faith is a strong tool in Brazil because there is no time limit for requesting cancellation.

Spring Chang of Chang Tsi & Partners in China said that famous is an interesting concept in her country. If you don’t have a registration, you have to claim you are famous within the class at issue, for example.

The panel, moderated by Rachelle Dubow of Morgan Lewis & Bockius in the U.S., shared some practical tips. “The number one thing is to build a fame binder,” said Dare. “I have found it very important to maintain some kind of record.” This would include items such as the company’s welcome book, InterBrand rankings, and lists of licensees and worldwide partners.

David Gooder of Jack Daniel’s Properties urged registrants to “update constantly.” He advised being mindful of how far back they will need evidence. He said Jack Daniel’s once had to prove fame in a country going back 20 years.

Another tip was to consider unconventional evidence. One example is the Wayback Machine Internet archive. It is not always easy to search but “you can often find a website from a long time ago,” said Dare.

Another is citing product placement. Gooder said to consider the impact of paid compared to unpaid product placement. “My feeling is it doesn’t really matter,” he said, because people are exposed to the product either way. Other examples of unconventional evidence were being referenced in competitor advertising, mentions on social media and evidence in the country of counterfeits and take-offs of the brand.


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