Are Famous Trademarks Treated Differently From Regular Trademarks

What to Know About Famous Trademarks

First of all, the list of these trademarks is quite short. You have to be really big and really well-known to be recognized as a famous trademark. Think Apple, or Microsoft–all those huge names that we're thinking of–that's them. Just because you think you're known doesn't make you famous. You would need to have actual surveys that would prove that a huge number of people across the country–from different industries, from different walks of life–know you, understand who you are, and know your brand.

So what does it give you to be recognized as a famous trademark? Usually, a normal trademark only covers you for the products and services that are listed in your trademark application. Being recognized as a famous trademark in some countries allows you to use your brand to stop others from using it even for unrelated industries. That makes it a lot stronger in the sense that if the brand is so famous, there is no way somebody could have a product or a service named it the same way as that famous mark–people wouldn't associate it with that brand.

Microsoft: A Great Example

Microsoft is a great example. Try to think of any products that if you named them "Microsoft," you wouldn't think of Microsoft, the software giant! If you are selling chairs and you called them "Microsoft," that would still be an issue for them because you would somehow associate or assume that the software giant granted permission to this furniture company to make chairs and call them Microsoft.

Can a Trademark Be “Famous” Anywhere?

It does not work in all countries. In fact, it works in very few countries. Some countries have specific rigid lists of what they recognize as a famous trademark, some would require you to prove that you're famous in court every single time, and some would simply ignore that and say, you know what, if you're so famous, you still need to prove confusion, because that's the case with all regular trademarks. 

Proving Infringement

In order for you to prove that there is an infringement, you need to prove that there is a likelihood of confusion. And the question is, “Is there a likelihood of confusion when we are talking about two completely different products and services?” It's difficult, so that process was made easier for owners of famous trademarks in the sense that they can say, “Look, we are so famous, we don't need to prove that there is an actual confusion or likelihood of confusion–we're so famous that it's presumed that the marks are confusing.”

So if you have a trademark infringement dispute, you need to prove that there is a likelihood of confusion between your brand and how somebody else is using that brand. Basically, that customers would be able to confuse somebody else's product for yours or yours for theirs. A big chunk of that analysis is whether your products and services are closely related to somebody else's products and services. If the answer is yes, the brands are similar but the products and services are completely different, usually, there is no likelihood of confusion. 

So famous brands don't need to do this, it's automatically assumed that there is confusion if the brands themselves are too similar. So if you're selling chairs and you call them Microsoft in a country where famous brands are recognized, usually that'd be enough for the software giant to go after you and say, “You can't use the brand, we are a famous trademark, even if we never trademarked the word Microsoft for furniture.”