Article 6bis of Paris Convention still a problem for IEPI

In two separate decisions (Cases 01-279, September 1 2004 and 01-280, September 20 2004), committees of the Ecuadorian Institute of Intellectual Property (IEPI) have declared that the BURGER KING mark is not well known. These decisions demonstrate that the IEPI is continuing to use its seemingly erroneous interpretation of Article 6bis of the Paris Convention for the Protection of Industrial Property.

Burger King Corporation filed two separate actions before the IEPI requesting the cancellation of the trademark KIN'S BURGUER and logo, and the trade name Kin's Burguer and design. It claimed that the mark and trade name were confusingly similar to its well-known BURGER KING trademark. In both cases, the IEPI declared that while BURGER KING and the KIN'S BURGUER mark and trade name were similar, Burger King had not provided sufficient evidence to prove that its BURGER KING mark was well known at the date of registration of the mark and trade name.

Burger King filed motions for reconsideration, requesting review of the resolutions issued in the two cancellation actions. In denying the motions and affirming its earlier decisions, the IEPI noted that Burger King had failed to meet the evidentiary requirements necessary to establish that a mark is well known. In prior cases concerning marks originally registered outside of Ecuador and claiming well-known status, the IEPI has determined that, based upon Article 6bis of the Paris Convention, claimants must submit evidence that the mark is well known in the original country of registration. Specifically, the IEPI has requested, as it did in the Burger King rulings, a certificate from a government authority in the original country of registration declaring that the mark is well known in that country.

This interpretation by the IEPI of Article 6bis seems to be at odds with (i) the legislative history of the Paris Convention, and (ii) the interpretation of that provision generally accepted by the global IP community. The World Intellectual Property Organization (WIPO) establishes in its WIPO Intellectual Property Handbook: Policy, Law and Use that:

"The protection of a well-known trademark under Article 6bis exists only where the conflicting trademark has been filed, registered or used for identical or similar goods, as determined by the administrative or judicial authorities of the country in which protection is claimed."

In the case of Burger King's cancellation actions, the "country in which protection is claimed" would be the Republic of Ecuador. Other eminent treatises, including the most recent edition of Famous and Well-Known Marks, edited by Frank W Mostert and sponsored by the International Trademark Association, make the same interpretation of Article 6bis.

IEPI's requirement for a certificate from a government authority indicating the well-known status of a mark also appears to be unnecessary. As noted above, Ecuadorian authorities are themselves responsible for determining whether a mark is well known. Additionally, there are few if any countries that provide such certificates and, therefore, such requests are unreasonable.

Amani Harrison, Bustamante & Bustamante, Quito