Turkey: When is a well-known trademark likely to suffer dilution?
The Turkish Patent and Trademark Office has ruled that a third party attempt to register an imitation of the Johnnie Walker logo for use in the fashion and textile sector may dilute the logo.
In a recent case, Diageo Brands opposed the trademark application no. 2018/20205
covering classes 18, 25, 26 and 35, based on i) similarity with registered and well-known Johnnie Walker logos
and the special edition Jane Walker logo
ii) violation of copyright, and iii) bad faith.
Although the opposition was rejected by the office in the first instance, Diageo successfully appealed the decision, and the board decided on total refusal of the opposed application on January 30 2019.
Firstly, the board concluded that the opposed logo is confusingly similar to the registered and renowned Johnnie Walker logo because minor differences such as gender of the logo, type of hat, shoes, glasses, hair etc. do not create distinctiveness and differentiate the trademarks from each other.
Secondly, the board suggested that the application was filed in bad faith because the evidence shows that the news regarding Jane Walker was published on Turkish websites and the publication date is close to the application date of the opposed mark.
Finally, the board concluded that registration and use of the opposed mark may harm the distinctive character and reputation of the well-known Johnnie Walker logo and also cause its dilution, even though the opposed mark covers different goods and services.
This decision has a significant impact on trademarks composed of words and figurative elements because the board concluded that figurative elements of trademarks must be examined by themselves, separately from word elements and that conceptual similarity and serial mark impression must be considered over the gender difference of the human figures covered by the trademarks.
In addition, this is a landmark decision determining the scope of protection required for well-known trademarks and demonstrates that the board has changed its strict approach when it comes to well-known trademarks, at least those with long-lasting and extensive use both in Turkey and also around the world.
Despite its recent decisions, the board accepted in this case that although well-known status arises in a certain sector, well-known trademarks will be protected for all goods and services when there is possible dilution and harm to reputation.
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