Trademark

*-T—Motion Decision on Acquiring Distinctive Character through Usage

There is a trademark nr.1995/164699 “T…..” on behalf of Deutsche Telekom AG registered previously for identical goods and again there are other trademarks registered for the same goods, formed by same letters, punctuation marks and words. Therefore it should be acknowledged that the sign “.T… MOTION.”, which is to be registered as trademark, has distinctive character with respect to same goods when compared to the expression “MOTION”, which belongs to a third party company (Siemens AG) and also it does not come into question that there is a likelihood of confusion among the consumers. Consequently it is not necessary to discuss whether a distinctive character through usage, regulated in the Trademark Decree Law art.7/final paragraph, has acquired or not.

In a previous case between the same parties, which was finalized, it was decided, “the dominant element “T” adds a distinctive character in the meaning of distinguishing the plaintiff’s goods from others and “T” has acquired distinctive character through use of the sign in several other trademarks of the plaintiff”. Although it is not a definitive judgement, it should be recognized that this material fact is strong evidence in the recent dispute between the parties. Therefore the judgement must be in favour of the plaintiff, taking into consideration the previous judgement, which is acknowledged as strong evidence between the parties.

Assembly of Civil Chamber of Supreme Court, 25.11.2009 Case No.2009/11-386, Decision No.2009/555

*Bonjour Patiseri Decision on Trademark Classification System

The parties of Nice Protocol may acknowledge the Nice Classification either as a main system or they can simply use it as a secondary source. In the countries that acknowledged Nice classification systems as a main system; the assessment is made according to their classes, whether goods and services are similar or not. In the latter countries, the assessment is made on case-by-case basis and variety of criteria is being used. In Turkey, depending on Turkish Patent Institutes communiqués, Nice classification system is recognized as main system. However, it should be mentioned that the fact that Turkish Patent Institute has recognized it as main system does not mean that it is legally binding, but it rather has a secondary function.

In the concrete case, the trademark of the plaintiff is registered in the commerce (pastry) class. The application of the defendant is for service classes. However, the services exist in the service class, such as “cafeteria, canteen and cocktail bars”, are similar to plaintiff’s trademark class “bakery” and this situation creates likelihood of confusion, which requires an evaluation in this case.

11th Civil Chamber of Supreme Court, 21.07.2005 Case No.2004/9414, Decision No.2005/7845

*Kapı&Pencere (Door & Window) Decision on the Principle that the Generic/Descriptive Signs shall not be Registered as a Trademark

It is comprehended that the defendant’s registered trademarks “Door Window” and “Window” on the 09 and 16 Class do not require any special intellectual effort and there is a tight relationship between the trademarks and the goods itself, which shows that the trademark is focused on a specific character of the goods and the magazine is mainly about advertising on door and window products and therefore these trademarks are used as a main element in the effort to display the type of the magazine. Therefore it is decided that these trademarks shall be invalidated since the registration of these expressions on behalf of the defendant is not possible according to the art.7/1-c of Trademark Decree Law, which regulates the absolute grounds for the refusal of the trademark.

Assembly of Civil Chamber of Supreme Court, 24.12.2008 Case No.2008/11-775, Decision No.2008/753

*The Iceberg Decision on Acquiring Distinctive Character via Usage

According to the previous version of the art.7/1-(b) of Trademark Decree Law under the title “Absolute Grounds for the Refusal of the Trademark Registration”, which was superseeded by Code, nr.5194, dated 22.06.2004, “trademarks identical or confusingly similar with a trademark registered earlier or with an earlier date of application for registration in respect of an identical or same type of product or services shall not be registered.” Last paragraph of art.7 of Trademark Decree Law states that “the paragraphs (b), (c) & (d) cannot be invoked to refuse the registration of a trademark, which has been used before the registration and has acquired through this usage distinctive character in respect of the goods and services for which it is to be registered.” Again according to last paragraph of art.42 of the Decree Law, “where the trademark having been used before the registration has acquired through this usage distinctive character in respect of the goods and services for which it is to be registered, the provisions of (b), (c) & (d) cannot be invoked to invalidate the registration.

The defendant’s registered trademark “IMAGE+ICE BOYS”, which is similar to plaintiff’s trademark “ICEBERG”, has registered on 23.05.2000. When this date is taken into consideration it would become explicit depending on the last paragraph of art.7 of Trademark Decree Law (superseeded by Law nr.5194), the paragraphs (b), (c) & (d) cannot be invoked to refuse or invalidate the registration of a trademark, which has been used before the registration and has acquired through this usage distinctive character in respect of the goods and services for which it is to be registered.

Although an identical or confusingly similar sign to the sign, subjected to registration application, is registered as a trademark on behalf of a third party, there is still a possibility for the registration to be accepted, despite the presence of an identical or confusingly similar. In order to achieve this, the defendant has to prove that the sign has been used for a considerable period of time across a widespread geographic area, accompanied by effective and extensive advertisement campaigns. Furthermore through this long period of use the mentioned sign must have acquired a well-known status that would prevent the confusion among the potential buyers of the goods and services regarding the exploitation area of the trademark. Lastly it has to be proven by the defendant that the market would not be disturbed by the existence of reiterated trademarks. A trademark, which could be registered by this process, would enjoy protection all around Turkey. Therefore it is necessary for the applicant to show that the sign, which is according to the art.7/1-(b) of Trademark Decree Law should be refused, has acquired distinctive character through this usage in Turkey.

Assembly of Civil Chamber of Supreme Court, 29.04.2011 Case No.2011/11-9, Decision No.2011/249

*Besler Decision on the Situation, where the Trademark is not being used as it is registered

It is explicit that the word “BESLER” is used in bigger size on the package of the goods and on plaintiff’s business cards. According to the art.9/2-a and d of Trademark Decree Law to put the sign on the goods or on the packages or use the sign on business documents and/or advertisements are considered to be the exclusive right of the trademark owner. Therefore the plaintiff/trademark owner has the right to request the prevention of such unauthorized uses. These findings were actually mentioned in an expert report, which has not taken into account for the judgement and it was proven that the defendant’s trademark has not being used as it is registered. Consequently, it is agreed upon that there is a violation of the trademark.

11th Civil Chamber of Supreme Court, 03.03.2008 Case No.2007/1097, Decision No.2008/2405

*Bellona Decision on Invalidation Claim on Grounds of Non-Use

Art.14 of the Trademark Decree Law regulates two possibilities regarding the obligation of put to use of a trademark. The first one is non-use of a trademark within a period of five years following the registration. The second one is to suspend the use of the trademark uninterrupted period of five years. This 5-year period is called grace period. As long as this 5-year period is not exceeded, there would be no sanctions against the non-use of the trademark. In other words, the trademark would not be repealed.

According to the art.14 and art.42 of Trademark Decree Law, even the registered or well-known trademarks may partially be repealed with respect to goods and services that are not being used. In other words, invalidation depending on the non-use clause and determining the scope of protection for well-known trademarks are two different things. If there is a trademark application by a third party or a third party starts to use a trademark, of which the sign is identical or similar to the signs located in the well-known trademark, for the goods and services, which were partially invalidated, than either the application will be assessed by Turkish Patent Institute (TPI) during the application process or it will be disputed before the courts. TPI or the courts will evaluate whether a registration of a well-known trademark in different goods and services on behalf of a third party is permissible or not. Furthermore it is also their jurisdiction to decide whether the use of the third party does infringe the trademark protection of the well-known trademark or not.

Assembly of Civil Chamber of Supreme Court, 09.02.2011 Case No.2010/11-695, Decision No.2011/47

*Lipideks Decision on Pharmaceutical Trademarks

The term “Lipit” is an element, of which the pharmaceutical product will cure. Therefore the supplements to this term are accepted as weak trademarks. Making small alterations can prevent the confusion among these trademarks. The fact that the pharmaceuticals must be sold with prescription or the fact that even small phonetical similarities would cause confusion for conscious consumers, such as doctors and pharmacists, who chose the products, on which the trademarks are actually being used, cannot be deemed as a case in here. Even when it is considered as a slim chance, that because of the negligence in writing the prescription there would be confusion for the assistants in a drug store, it is not right to drift apart from the objective criteria depending on these nominative possibilities. Therefore it may be stated that there is no confusion between Lipideks and Lipitax.

11th Civil Chamber of Supreme Court, 05.03.2007 Case No.2006/408, Decision No.2007/3827

*RG 512 Decision on Acting in Bad Faith in Invalidation of a Trademark

The dispute is about a trademark invalidation claim on grounds of existence of bad faith of the plaintiff, who has no registration or has not put the trademark in use in Turkey on the time when the defendant applied for registration of his trademark, on 18.20.2001. According to the Trademark Decree Law art.35/1 bad faith in registration application is a fundamental opposition clause. Moreover, to file invalidation case is also appropriate with the aim of the Decree Law. Although bad faith is not regulated as a fundamental opposition clause in art. 42 of the Decree Law, it is accurate to reach to the same conclusion based on the main principle that states bad faith shall not be protected. This principle is regulated as a fundamental principal in the art. 2 of Turkish Civil Code.

Assembly of Civil Chamber of Supreme Court, 16.07.2008 Case No.2008/11-501, Decision No.2008/507

*Arama Konferansı (Conference Call) Decision on Commercial Use of the Trademark in Good Faith

Since it is understood that the phrase “arama konferansı (conference call)” is perceived as a type of conference and defendant’s use of this phrase is out of the scope of Trademark Decree Law art.12, which determines the scope of honest practices in industrial or commercial matters, there is no trademark violation.

11th Civil Chamber of Supreme Court, 29.02.2008 Case No.2008/611, Decision No.2008/2338

*Regal Rator Decision on the Compensation of the Damage, when the Trademark, Which was Registered in Bad Faith, is Used Against the Genuine Right Owner

Prior to the registration of the defendant’s trademark, he has purchased these goods from the plaintiff. The defendant has announced on his website in 2006 that he is the distributor of these goods (motorcycles), which are produced by the plaintiff and thus stated that he is aware of the plaintiff’s genuine right ownership. It is against the principle of prudent merchant and bona fides to attempt for the registration of a trademark on behalf of himself, without any prior authorization. Nevertheless, he has prior knowledge of the trademark, as there used to be a commercial relationship between the parties. Registration in bad faith can be considered as a sole cancellation cause, which is why all the damages caused by this use shall be compensated. Moreover depending on the trademark right, the defendant also caused damages by preventing the import of the motorcycles, which were previously imported in Turkey. It should be noted that this trademark was registered in bad faith and clearly it exceeds the limits of utilization. These damages should also be compensated. Here the claim of exploiting a registered trademark shall not comprise unfair competition principle may not be considered.

11th Civil Chamber of Supreme Court, 11.07.2011 Case No.2010/785, Decision No.2011/8627

*Atılım Decision on Confusion

When an assessment on the basis of confusion between the plaintiff’s name and service trademark “Atılım” and the distinctive character of the defendant’s trade name “Atılım” is made, the presence of the confusion becomes explicit, since both the distinctive signs and the services are identical. Depending on the competition between the parties, it may also be stated that the expression used in the defendant’s trade name, which was registered afterwards, constitutes an unfair competition and an infringement to the plaintiff’s unregistered trademark. Even before the registration of the expression “Atılım”, depending on the violation of the priority right originating from the name of the university that the plaintiff owns and the unregistered trademark utilization, the expression of “Atılım” shall be cancelled from the defendant’s trade name.

Assembly of Civil Chamber of Supreme Court, 12.12.2007 Case No.2007/11-965, Decision No.2007/961

*Tamek Decision on Retail Service for Trademarks

It is accepted that a general registration in retail sector on class 35 subclass 8 (currently class 35 subclass 6), which encompasses the services of “bringing together variety of goods” shall not prevent the registration or registration application of the latter for the classes of goods on classes 1 to 34. The state of confusion in the de facto exploitation sectors of proprietor of a trademark is the exception of the mentioned rule.

11th Civil Chamber of Supreme Court, 28.03.2013 Case No.2012/6538, Decision No.2013/6137

*Requires Technical and Special Knowledge

Nestlé’s Red Coffee Cup Decision on the Necessity to Appeal to an Expert in Determining the Infringement of a Trademark Right, which In the concrete case Nazo 3-in-1 has found very similar to plaintiff’s registered and well-known trademark “Kırmızı Kupa (Red Coffee Cup) + Image”. Since in the front face of Nazo 3-in-1, there is a silvered, colour red, coffee cup full with coffee, on which the coffee steam can be seen and on the wrong side, where the consumer explanations are placed, same coffee cup can be seen. This packaging constitutes a likelihood of confusion that can mislead the consumer. As a result it was decided the exploitation of the defendant is a violation of plaintiff’s trademark right and also creates an unfair competition, since the defendant used a confusingly similar sign of the plaintiff’s trademark without any authorization. It should also be noted that there was no expert witness report in the course of the case.

According to the art.275 et seqq. of Civil Procedure Code, in such a case, where the resolution requires a special or technical knowledge, the court shall first decide to apply for an expert report and then reach a verdict accordingly.

Assembly of Civil Chamber of Supreme Court, 06.04.2011 Case No.2010/11-744, Decision No.2011/57

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