Is "scope of protection" for well known marks ABSOLUT?

TIML Golden Square, a subsidiary of Times, launched a Radio station called Absolute Radio. The class of goods is music and entertainment brand (Int'l Class 41).

V&S which owns Absolut Vodka and Absolut Tracks alleges that the term 'Absolute' results in trademark infringement and passing off. Absolut's "promotional activities have extended into areas other than just the selling of vodka". Thus consumer confusion is possible.

IPKAT asks "Can listeners tell the difference between a vodka brand and a radio brand?" and answers humourously, it "depends on how much vodka." Funny.

It is clear that consumer confusion as to ownership of the brand is the central issue. However, an integral consideration is that Absolut is a well known mark.

International protection of well known marks takes its roots in the Paris Convention and Art 16, TRIPs. Under Article 6 bis of the Paris convention, member states have the obligation to reject registration of a mark when it is confusingly similar to a well known mark.

Article 16 of TRIPs indicates that the goods and services must be related and consumer confusion likely. Specifically, "use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use....In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark."

Further, the Community Trademark Regulation (CTMR) in its Article 8(5) prohibits registration of mark that is confusingly similar, even though the class of goods or services are dissimilar. (protecting against dilution). Article 9(1)(c) protects against dilution by use and prevents the usage of a well known mark "where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier CTM."

Given the time, money and effort invested into promoting the brand Absolut in the UK, V&S has a strong upperhand. Absolute Radio is a result of a very recent rebranding effort. Absolut, in that case, might well have the last word.

Wellknown marks has not been defined yet but preferential protection is afforded in certain circumstances to marks with reputation. An interesting read on well known marks is available here.