“A well-known trademark is defined as one that is known to a broad segment of people involved in the production, trade or use of the goods in question and is clearly perceived as indicating a particular origin of those goods. It goes without saying that in assessing both the notoriety of a brand and the likelihood of confusion, the target audience to be considered should be a broad segment of the population. Consequently, the likelihood of confusion is negligible if the target audience is selective or elitist”.
HIGHER APPEALS COMMISSION
Decision No. 19/CSR/OAPI/of 05 October 2001
Appeal against Decision No 031/OAPI/DG/CO/SSD/NF of 26 April 1999 rejecting opposition to registration No 33653 of the trade mark ‘BUDWEISER BUDVAR’.
It was held that “the OAPI Director-General’s prerogatives do not include the power to ensure the protection of the notoriety of a mark, which, under Article 6, must be addressed by the courts, either through original action or by way of counterclaim”.
HIGHER APPEALS COMMISSION
Decision No. 228/CSR/OAPI of 31 OCTOBER 2017
Action in nullity of Decision No. 265/OAPI/DG/DGA/DAJ/SAJ of 31 December 2015 rejecting opposition to registration No 75160 of the mark ‘LUCA BOSSI’.
Consequently, “It is not up to the OAPI Director-General to determine whether or not a trademark is well-known at the time of its filing. Although the use of a duly-registered trademark confers notoriety, such notoriety, for it to be binding on third parties, must be confirmed by the courts, since the power to hear nullity actions based on brand awareness is vested in State courts”.
HIGHER APPEALS COMMISSION
Decision No. 067/CSR/OAPI of 21 April 2006
Action in nullity of Decision No. 0093/OAPI/DPG/SSD/SCAJ of 24 June 2004 cancelling trademark registration No. 45925, pertaining to ‘KARSA’
