As businesses continue to expand across borders, well-known trade marks remain critical assets in maintaining brand recognition and commercial value in international markets. These marks often benefit from enhanced protection due to their strong market presence, but navigating trade mark systems across jurisdictions can be challenging. Differences in recognition standards, protection procedures, and enforcement scope may limit the effectiveness of international trade mark strategies.

This article examines the global protection landscape for well-known and defensive trade marks, drawing on the legal frameworks established by the Paris Convention and the TRIPS Agreement. Through case studies from Turkey, the Philippines, and Australia, we explore practical identification and protection mechanisms, offering insights for companies seeking to strengthen their trade mark portfolios beyond their home markets.

Protection of well-known trade marks within the framework of international conventions

Protection of unregistered well-known trade marks: The concept of well-known trade mark protection was first introduced in 1883 by the Paris Convention,^[1] and Article 6bis provides that the owner of an unregistered well-known trade mark has the right to prohibit others from using a confusing trade mark on identical or similar goods.

Extension of cross-class protection: Article 16 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) ^[2] further advances the protection of well-known trade marks, extending the scope of protection of well-known trade marks from goods to services, and from single-class protection to cross-class protection for registered well-known trade marks.

From the initial framework of the Paris Convention to the globalization rules of TRIPS, the core objective has always been to balance the interests of trade mark owners with fair competition in the market. In the future, with the deepening of regional economic integration and digital trade, it is believed that the system of well-known trade marks will become more user-friendly.

Recognition and practice of overseas well-known trade marks

Traditionally, well-known trade marks have been determined on a case-by-case basis through administrative or judicial procedures in trade mark ownership or infringement disputes. However, some countries (e.g., Turkey and the Philippines) allow direct administrative applications for recognition, providing a more efficient pre-protection mechanism for well-known trade marks.

In addition, some countries and regions (such as Australia, Japan, Hong Kong, China, Taiwan Province, etc.) allow trade mark owners to directly apply for defensive trade marks on other related products and services based on their own well-known trade marks. This allowance achieves the purpose of trade mark collapse protection, and its significance is almost similar to that of well-known trade marks.

This article aims to provide inspiration for trade mark owners on Turkey and the Philippines, two nations where one can directly apply for recognition of well-known trade marks, and Australia, where one can apply for defensive trade marks.

1. Turkey and the Philippines

On top of the administrative and judicial recognition of well-known trade marks that are common in China, Turkey and the Philippines are among the few countries where it is possible to apply directly to the Patent and Trademark Office for recognition of well-known trade marks. The rules for recognising well-known trade marks in the Philippines took effect in April 2025. Such recognition is undoubtedly the most efficient way to identify well-known trade marks, and it may also be the most effective way to protect them.

Turkey

To apply for recognition of a well-known trade mark in Turkey, the applicant can apply for registration with the Turkish Patent and Trademark Office. However, the trade mark must meet the requirements of the Turkish Patent and Trademark Office for recognition as a well-known trade mark, and the examination time is typically around 12-24 months to date. In Turkey, the data on applications for recognition of well-known trade marks are available on the official public website. At present, there are 1683 known trade marks in the Turkish database, in which the well-known trade mark application marked ‘Kabul Edildi’ has been granted. Including PEPSI, CNN, HSBC, Red Bull, Xiaomi, Columbia, eBay, MAC and other well-known brands at home and abroad have been successfully recognized as well-known trade marks in Turkey.

On February 5, 2020, the Supreme Court of Turkey issued a ruling stating that, under current law, the Turkish Patent and Trademark Office does not have the authority to register a well-known trade mark application. Instead, the well-known status of a trade mark must be determined on a case-by-case basis. This means that the right to apply for a well-known trade mark may not be able to continue to obtain relief at the court stage after the final rejection by the Turkish Patent and Trademark Office. However, so far, the Turkish Patent and Trademark Office still exercises the relevant powers ^[3], and the well-known trade mark registration system will still be included in the published fees in 2025^[4]. At present, it has not affected the application and recognition method of well-known trade marks.

1.    Evidentiary materials required for the recognition of well-known trade marks

Relevant evidence that the mark is well-known in its country of origin, other contracting states to the Paris Convention, and in Turkey, and in particular in the last 5 years in its country of origin and in Turkey, include:

1) a list of registered trade marks worldwide;

2) Copies of trade mark registration certificates from about 10 countries;

3) Relevant documents and information about the applicant's company history and business;

4) The company's annual sales and turnover;

5) Excerpts from press publications about the trade mark;

6) Advertising, documents showing the company's turnover, advertising expenditures and related expenses on the trade mark;

7) Prior well-known trade mark recognition rulings, if any;

8) Honours received by the applicant or trade mark.

2.    Scope and duration of protection of well-known trade marks

A well-known trade mark that has been successfully recognized realizes the protection of goods and services to a certain extent, and the protection of a well-known trade mark has no specific term and does not need to be renewed.

Philippines

The Philippines will officially implement the Well-Known trade marks Ordinance on April 28, 2025, introducing a unilateral, independent procedure for the recognition of well-known trade marks, which differs from the previous method of recognition through legal proceedings between the two parties, such as opposition and cancellation. At the same time, the Philippines will establish a register of well-known trade marks, which aims to further strengthen the protection of well-known trade marks.

1.    Criteria for recognition of well-known trade marks

According to the regulations of the Well-known trade marks Ordinance, the recognition of a well-known trade mark should take into account the perception of the relevant public rather than the general public, and the popularity of the trade mark in the Philippines should also be considered. At a minimum, the criteria for evaluating a well-known trade mark should include:

• • Duration, scope and geography of use of the trade mark (especially for promotional activities such as advertisements and exhibitions)
  • Market share of trade marked goods and services in the Philippines and other countries;
  • The degree of distinctiveness inherent or acquired by the trade mark;
  • The quality, image or reputation of the trade mark

In addition to the minimum criteria for recognition (1-4 above), criteria such as the scope of global trade mark registration, the exclusivity of global trade mark registration, the scope of global use, the exclusivity of global use, the commercial value of the trade mark, and the successful record of trade mark rights protection should also be considered.

2.    Details of the implementation of the recognition of well-known trade marks

• • Well-known trade marks are the same as ordinary trade marks, and they are subject to the announcement procedure, and relevant interested parties can submit objections in accordance with the law.
  • If a trade mark is recognized as a well-known trade mark, it can be used as preliminary evidence to prove the well-known nature of the goods or services, and as an important reference basis for trade mark examination.
  • The recognition of a well-known trade mark is valid for 10 years, after which it can be renewed. However, when renewing, relevant proof of continuous use and maintenance of the well-known trade mark must be submitted.
  • The register of well-known trade marks will be published in the electronic gazette. For the right holder of a trade mark that has been previously recognized as a well-known trade mark, it may submit a statement and relevant evidence (such as a court judgment, etc.) to apply for the trade mark to be entered into the register. If it is not filed within the prescribed time limit, the mark will not be recorded.

2. Australia

In Australia, unlike Turkey and the Philippines, while it also follows the principles of the Paris Convention for the protection of well-known trade marks, in relevant administrative or judicial cases the right holder can also claim that its trade mark is well-known in order to obtain recognition by administrative or judicial precedents. However, for those trade mark owners who already have a certain reputation and influence in Australia, it is undoubtedly a more desirable strategy to apply for a defensive mark registration to achieve broader protection and achieve an effect comparable to that of a well-known trade mark. Defensive trade marks can be found on the official public website. Currently, there are a total of 491 pending and registered defensive marks in the official Australian database, of which 354 have been registered. For example, brands such as Coca-Cola, FACEBOOK, Canon, INTEL, LG, SHELL, NIKE have all been registered as defensive trade marks in Australia.

1.    Provisions for Australian defensive Trade Marks

Section 185 of the Trade Marks Act 1995 provides for defensive marks: ‘A trade mark registrant may apply for registration of a defensive mark in all or any other goods or services if the registered mark is used in all or in large quantities on all or any of the goods or services for which it is registered, and if the use of the mark in relation to other goods or services is likely to cause consumers to believe that there is a connection between those other goods or services and the trade mark registrant.’

2.    Defensive Trade Mark Application Requirements

• • Before filing a defensive mark application, the applicant has a basic mark that has been registered in Australia. The name and trade mark reproduction of the applicant for a defensive trade mark need to be consistent with the basic trade mark;
  • The basic mark is ‘well-known’ through its use in relation to the goods and services it designates; The use of the trade mark in relation to other items of goods and services designated by the defensive mark can easily lead consumers to mistakenly believe that it is associated with the owner of the basic mark
  • The applicant for a defensive trade mark does not need to have a genuine intent to use the specified goods or services;
  • Fill in the trade mark application with the registration number of the basic mark on which the defensive mark application is based (it can be based on multiple basic marks, e.g. when there are multiple classes in one mark);
  • Submit evidence in support of the defensive mark application (evidence must be submitted at the time of filing, or as soon as possible after filing).

There is no conflict between a defensive trade mark application and an identical ordinary trade mark application under the same applicant's name, and both can enjoy the corresponding trade mark rights in Australia at the same time. Also,  the registration of a defensive mark is not limited to applications in different classes other than the basic mark, but can also be applied for in the same class as the basic mark.

3.    Evidence in support of a defensive trade mark application

1) Evidentiary materials on the reputation of the basic trade mark.

For example, the duration and scope of use of the basic mark, specifying the goods and services used in which the basic mark, the advertising method, advertising expenditure and advertising samples of the basic mark, etc.;

2) Grounds for applying for a defensive mark.

For example, why a potential consumer might think that the use of the mark on different goods or services would be associated with the applicant, and explain the nature of such a ‘possible connection’;

3) a sworn statement or professional market research report from a member of the same industry (the industry in which the defensive mark is sought) to further prove the connection;

4) a list of identical and similar trade marks registered under its name, including registered goods and services.

4.    Effect and duration of protection of a defensive mark

Australian defensive marks offer cross-class protection for non-similar goods or services, thereby expanding the scope of trade mark rights and ultimately enhancing the protection of well-known trade marks. A registered defensive trade mark cannot be revoked on the basis that the trade mark has not been used for three years (it can prevent others from ‘free-riding’ in the non-core class, but there is no need to worry about not using it and being ‘withdrawn’), provided that the basic mark is used on the designated item. The validity period of a defensive mark is the same as that of an ordinary mark, which is renewed every 10 years from the filing date.

5.    The difference between a defensive trade mark and a well-known trade mark

Defensive trade mark registration realizes cross-class protection for non-similar goods and services, and can achieve the purpose of well-known trade mark protection to a certain extent. However, in practice, it is inappropriate to treat a defensive trade mark simply as a way to identify a well-known trade mark.

Strategic advice for businesses

• Enterprises should focus on enhancing brand value and market recognition. Through long-term and stable product quality, advertising, and social responsibility activities, the brand will gradually enhance its popularity and influence, laying a solid foundation for the recognition of well-known trade marks. At the same time, it actively collects user feedback, market research reports, sales data and other relevant materials to fully prove the wide recognition of the trade mark among consumer groups.
• Enterprises need to pay attention to the collection and collation of evidence of trade mark use. Given that well-known trade marks can obtain cross-class protection for different classes of goods or services, enterprises must provide sufficient evidence to demonstrate the distinctiveness of the trade mark and the likelihood of public confusion. To this end, it is recommended to prepare relevant materials systematically, including but not limited to the time of use of the trade mark, market share, scale of advertising investment, award records, media reports, etc., to build a complete chain of evidence.
• If the company's trade mark has been used in Turkey and the Philippines and has gained a certain degree of popularity, it is recommended that the business should try to apply for a well-known trade mark in the two countries as soon as possible to consolidate its trade mark rights and expand the scope of trade mark protection, provided that there is relevant evidence to support it.
• Actively apply for defensive trade marks to help give full play to the functions of well-known trade marks. With the acceleration of the internationalization of Chinese enterprises, it is recommended that enterprises take the initiative to apply for the registration of defensive trade marks in Australia, Japan, Taiwan and Hong Kong, so as to prevent others from preemptively registering non-similar goods or services, and to expand the scope of trade mark rights protection and reduce the cost and complexity of subsequent rights protection.
• In the process of recognition and protection of overseas well-known trade marks, enterprises need to take into account the particularities of international conventions and the domestic laws of the target country, and formulate differentiated strategies based on the characteristics of each country's system, so as to achieve more efficient cross-border intellectual property protection.
• Prevent the risk of trade mark dilution and avoid the loss of distinctiveness of the trade mark due to improper use or authorization (e.g., ‘USB drive’ becoming a generic name).
• Continue to monitor market dynamics, promptly discover and take measures to crack down on malicious preemptive registration or counterfeiting, and effectively safeguard the legitimate rights and interests of well-known trade marks. For infringement, use their trade mark rights and interests to actively protect their rights.

Conclusion: Reflections on Constructing a Systematic Overseas Well-known Trade Mark Protection Strategy

The overseas protection of well-known trade marks has gone beyond mere legal issues and has become a core component of business's globalization strategy. In the current international trade environment, Chinese enterprises face a dual challenge for their brands to expand globally: on the one hand, they must navigate the diverse national legal systems , and on the other, they must protect themselves against the increasingly complex risks of trade mark squatting and infringement. Through a comparative study of the direct recognition systems of Turkey and the Philippines and the defensive trade mark system of Australia, this paper reveals several key dimensions of overseas protection of well-known trade marks:

First, the depth of corporate knowledge determines the effectiveness of protection. Enterprises must go beyond a principled understanding of international conventions and grasp the specific implementation rules of the target country's laws. For example, Turkey's special practice of maintaining administrative recognition despite judicial disputes, as well as the newly created registry system in the Philippines, all require businesses to maintain continuous tracking, professional research, and sound judgement.

Second, the systematic nature of evidence preparation is related to the success or failure of the determination. From the global proof of registration required by Turkey, to the market share data highlighted by the Philippines, to the consumer confusion analysis that Australia is concerned about, there are commonalities and differences in the evidentiary requirements across countries. Rightsholders should establish a regular evidence collection mechanism rather than responding ad hoc.

Thirdly, the choice of protection strategy needs to be tailor-made. The efficiency of the direct recognition system is prioritized, and the stability of the defensive trade mark system is outstanding. Enterprises should choose the most suitable protection path based on their own development stage, industry characteristics and target market, and adopt a combination strategy if necessary.

Finally, dynamic maintenance is the best long-term guarantee to date. Well-known trade mark protection is not a one-time job, and the renewal system in the Philippines and the basic trade mark use requirements in Australia all emphasize the importance of continuous maintenance. Enterprises need to establish a full life cycle management system including monitoring, rights protection, renewal and other links.

Looking ahead, with the in-depth development of the digital economy and the rise of emerging markets, the protection of well-known trade marks will face more diversified challenges. Chinese enterprises should incorporate their trade mark strategy into the overall planning of their global layout, and build a systematic, comprehensive and dynamic overseas well-known trade mark protection system through professional team building, deepening system research and continuous investment of resources, so as to escort the internationalization of their brands. This is not only related to the interests of individual businesses, but also an important means of enhancing the global competitiveness of Chinese brands.

References:

[1] Paris Convention for the Protection of Industrial Property

[2] Full text of the TRIPS Agreement (amended on January 23, 2017, Chinese)

[3] Update on the Well-known trade mark Registry Debate in Türkiye

[4] https://www.turkpatent.gov.tr/en/trade mark-fees

Authors: Amanda Yang, Xiaotong Men, Vanessa Wang