In intellectual property, protection rarely crosses boundaries, but when it does, well-known trademarks are the exception.
These marks are distinctive signs that have achieved such a high level of recognition that their protection goes beyond the usual rules for registering a trademark.
In Argentina and around the world, these marks enjoy special protection because of their impact on consumers and on the market.
What is a well-known trademark?
A well-known trademark is one that, through intensive use and commercial reach, is recognized by a significant portion of the consuming public, even outside its market niche. This concept differs from that of a famous mark, which enjoys global recognition regardless of the products or services it represents.
Recognition of a mark as well-known has important legal implications, since it prevents third parties from using it or registering similar signs that could cause confusion or take unfair advantage of its reputation.
Characteristics of well-known trademarks
Well-known trademarks stand out for:
1. A high degree of recognition: they are identified by a broad section of the public, even outside the sector in which they operate.
2. Association with quality and prestige: they have a reputation built over time.
3. Broader protection: they can block the registration of similar marks in unrelated classes if there is a likelihood of confusion or of taking advantage of their reputation.
4. Significant commercial value: they are valuable assets for companies and can be the subject of international licensing and franchising.
Regulation and legal protection of well-known trademarks
Internationally, the protection of well-known marks is provided for in the Paris Convention for the Protection of Industrial Property.
Article 6bis provides that member countries must refuse or cancel the registration of marks liable to create confusion with a well-known mark, even if that mark is not registered in their territory.
In Argentina, Trademark Law No. 22,362 does not explicitly mention well-known marks, but their protection derives from the application of the Paris Convention and from case law. The INPI (Argentina’s National Institute of Industrial Property) and the courts have recognized the importance of safeguarding these distinctive signs to prevent harm to consumers and to trademark owners.
The most emblematic case: Scotch tape
A representative example of a well-known trademark is Scotch, 3M’s iconic adhesive tape. Over the years, the Scotch brand has built a strong presence in the global market, becoming synonymous with high-quality adhesive tape. It is so well known that many people use the term “Scotch” to refer to any adhesive tape, which has exposed it to the risk of trademark dilution. 3M has aggressively protected its name through litigation and awareness campaigns, ensuring that the mark retains its distinctiveness and prestige in the global market. In Argentina, the recognition of Scotch as a well-known trademark has allowed it to fend off attempts to register similar names in related categories, thereby avoiding confusion among consumers.
Other international examples include McDonald’s, Nike, Apple, and Google, brands that have achieved such a level of recognition that their protection extends beyond their original industry.
Challenges and legal disputes in Argentina
Despite the legal protection available, well-known trademarks face certain challenges:
1. No specific regulation: Argentine legislation does not clearly define the criteria a mark must meet to be recognized as well-known.
2. Disputes over free-riding: there are cases in which third parties try to register similar marks to benefit from someone else’s reputation.
3. Trademark dilution: if a term becomes generic (like “rimmel” for mascara), the protection of the original mark can be weakened.
The Llao Llao case
A relevant case in Argentina was the ruling that refused registration of a mark similar to a well-known one, on the grounds that “for a mark to be well-known, it must be recognized beyond the commercial and industrial sector in which it operates.”
The case concerns the “Llao Llao” trademark. Chamber II of the National Court of Appeals in Federal Civil and Commercial Matters upheld a decision dismissing the lawsuit of a company that sought to register the mark “Llao Llao. Espíritu del Sur” for clothing. The court held that “Llao Llao” is a well-known mark associated with the hotel located in San Carlos de Bariloche, and that allowing the registration of a similar mark in another line of business could cause confusion among the public.
Related reading:
Types of trademarks and how they relate to well-known status.
