The most frequently encountered problems that trade mark right owners experience in Turkey are bad faith trade mark registrations and uses in the market.
Two recently issued final official decisions, one from Supreme Court and other from the Turkish Patent Institute's Appeal Board, reveal that strongly showing bad faith can bring success for right owners.
Turkish trade mark application number 2004/32695 for Barbour in classes 14, 25 and 43 was initially passed the official trade mark search over the prior similar applications and registrations, but was rejected by the Turkish Patent Institute when an opposition was filed by J Barbour & Sons Limited, which had the same trade mark but for different goods and services in classes 25 and 35. The decision was appealed by the applicant but rejected again (on June 11 2007) based on the grounds that Barbour was accepted as a known trade mark of the opponent when its advertisements and investments made are considered and, furthermore, the applicant acted in bad faith (under KHK 556, Article 35) due to the fact that several well-known marks had also been registered by the same applicant such as Cacharel, Seiko, Nokia and Givency.
On the other hand, there are many court decisions for the cancellation of trade mark registrations filed by the business partners or Turkish distributors of the foreign companies without the consent of the true rights owner abroad. To achieve success in such cases, the major point is to strongly prove the bad intent of the owner by submitting documents relevant to the business relationship between both parties such as a distributorship agreement, invoices, Customs clearances and correspondence.
Another important example of bad faith but tricky marketing was understood in an infringement case lodged by Reckitt Benckiser where the marks Kosla Oxi Action and Sude Oxygen Action were considered.
Reckitt Benckiser owns several device and word trade marks including Kosla and Oxi Action whereas the other party registered Sude as a trade mark and had an industrial design registration for a cylindrical packaging box to be used for its products. The preliminary injunction claim of Reckitt Benckiser was refused because both parties had valid registrations and the case required a detailed judgment.
Although Kosla and Sude were completely different trade mark registrations owned by each party in the class 3, the basic arguments were based on (1) trade mark infringement on Oxi Action because the defendant used that as a primary element by printing the "gen" in Oxygen larger and with different colours to attract customers' attention into Oxi Action and (2) trade dress infringement targeting confusingly similar use of "soap bubbles and pink background" by the defendant, with a claim of unfair competition. The defendant also underlined the fact that such general expressions were generic and could not be the monopoly of one company.
The Turkish IP Court of first instance decided on December 19 2007 that there was a clear trade mark infringement and unfair competition for the products having the confusingly similar labels and banned them from sale by also publishing the decision in the three most printed newspapers. This was appealed by the defendant and the Supreme Court ratified the decision of first instance court with the final writ being given on May 22 2008.
I believe an increasing number of such court decisions against bad faith trade mark registrations and uses enhance the trust of true right owners and investors in Turkey in line with the recent significant improvements in the economic and legal infrastructure. It is also important to stress the importance of a trade mark watch service in Turkey, where 70.000 trademark applications were filed last year.
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| Ersin Dereligil |
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