In a recent decision, the Court of Appeal (the CoA) ruled
that the well-known status of the GARANTİ mark for banking
services would prevent registration of the KUTUP GARANTİ
PLUS mark for different services.
In June 2012, a Turkish company, with the word KUTUP as the
main element of its commercial name, applied to register the
mark KUTUP GARANTİ PLUS in Classes 35, 37 and 40. The
opponent, a renowned company in the banking sector owning many
GARANTİ trade marks in several classes, opposed the
application. The opposition and the appeal filed were both
partially accepted by the Turkish Patent and Trademark Office
(the Office) and all services except "Services for assembling
materials (in the name of third persons)" in Class 40 were
removed from the list of the application KUTUP GARANTİ
The owner of the GARANTİ mark challenged this decision
by filing a cancellation action before specialised IP courts.
The first instance court said the following:
- An average consumer would think that the KUTUP
GARANTİ PLUS mark belongs to the opponent or is used
with the authorisation of the opponent or is a serial of its
well-known GARANTİ trade marks.
- It is highly possible that consumers think that the owner
of the KUTUP GARANTİ PLUS trade mark and the owner of
the GARANTİ trade mark are financially and/or
- "Services for assembling materials (in the name of third
persons)" in Class 40 are not identical to the services
covered by the opponent's earlier marks, but they are similar
- Registration of KUTUP GARANTİ PLUS for different
services would result in dilution of the opponent's
GARANTİ mark – well known for banking services
– and harm the distinctive character of the
As a result of the reasoning above, the first instance court
accepted the plaintiff's case and decided to cancel the KUTUP
GARANTİ PLUS mark in its entirety.
The owner of the KUTUP GARANTİ PLUS trade mark
application appealed this decision before the CoA. However, the
CoA rejected the appeal and approved the first instance
decision. This verdict is final and binding.
The decision of the IP court and CoA showcases a very broad
interpretation when it comes to protection of well-known trade
In order for the refusal ground to apply in Article 8/4 of
the Decree Law regarding the protection of well-known trade
marks i) the trade mark application must be identical or
similar to the well-known trade mark and ii) one of the three
conditions cited in the provision must be present.
We are of the opinion that the decision of the CoA can be
criticised in relation to both stipulations. The first reason
is because it is controversial to assert that the GARANTİ
and KUTUP GARANTİ PLUS trade marks are confusingly
similar. KUTUP has a distinctive meaning in Turkish which is
"pole" and moreover it is the core element of the commercial
name of the applicant company. The second reason is that the
plaintiff failed to prove that one of the three conditions
cited in the provision was available in the present case.
Indeed, the owner of the KUTUP GARANTİ PLUS mark is
trading white goods, whereas the owner of the GARANTİ mark
operates in the banking sector. However, the IP court and CoA
automatically concluded that KUTUP GARANTİ PLUS used for
different services would result in dilution of the opponent's
GARANTİ mark and harm the distinctive character of the
mark, without further examination of the relevant three
conditions. The courts have therefore given well-known trade
marks a much broader scope of protection.
Kore Şehitleri Cad. 17
Tel: + (90) (212) 354 00 00
Fax: + (90) (212) 274 20 95