Famous and well-known marks: can local fame cross borders? The “CasaIdeas” case

This question is particularly relevant for famous and well-known marks, whose protection may, under certain circumstances, go beyond that normally afforded to a registered trademark. A recent example is the case of CasaIdeas, which came to light when a name and visual identity similar to those of the well-known Chilean brand were spotted in use in France. The situation raised questions about a possible link between the two signs and, above all, about the extent to which the recognition a mark has earned in its home country can be projected into, and protected in, other territories.

To begin with, it is worth recalling that trademark law is governed by the principle of territoriality. Broadly speaking, a trademark's protection is limited to the territory in which it has been registered or protected. For this reason, a mark that enjoys wide recognition in Chile will not necessarily have the same level of protection in France, Brazil, Mexico or any other country.

This is where the protection of well-known marks becomes particularly important. Article 6bis of the Paris Convention establishes special protection against the registration or use of marks that constitute a reproduction, imitation or translation of a well-known mark. This protection was later expanded by the TRIPS Agreement, including certain situations in which the goods or services are not similar.

But the fundamental question is: well known where?

A mark's well-known status is not necessarily a universal condition. Whether it exists must be assessed in light of the specific circumstances of the case and, in particular, the degree of knowledge or recognition of the mark among the relevant public in the territory where protection is being sought.

This creates a particularly interesting situation. A mark may be widely known in its country of origin, backed by significant advertising investment, a long track record and a high degree of recognition among local consumers, and yet still face difficulties in obtaining equivalent protection in a country where it is virtually unknown.

This does not mean that well-known status must be proven exclusively through evidence generated within the borders of that second country. International presence, promotion carried out in other territories, registrations obtained and recognition achieved in different markets may all be relevant evidence in demonstrating that a mark is well known. However, local fame does not automatically become international well-known status.

This is precisely where the tension between the two principles lies: on the one hand, the enhanced protection the legal system grants to famous and well-known marks and, on the other, the principle of territoriality that characterizes the trademark system.

Consequently, when a mark that is highly recognized in one country seeks to rely on that reputation against a third party in another territory, simply asserting that it is a famous mark may not be enough. It will be necessary to examine what degree of recognition it has, where it has it, and before which authority that well-known status is being asserted.

From this perspective, the international protection of a famous mark should not be understood as an automatic consequence of its reputation. For companies that have built high-value brands primarily in their local markets, it is essential to combine the recognition they have achieved with a territorial protection strategy that covers registrations, watch services and potential disputes in those countries where there is commercial interest or a risk of misappropriation by third parties.

Ultimately, a mark can be famous without being famous everywhere. And precisely for that reason, when a reputation remains essentially local, the question is not whether fame can cross borders, but to what extent the law of another territory is willing to recognize it.