Turkey: What role does distinctiveness play in bad faith assessment?

The 11th Civil Chamber of the Turkish Court of Appeals (CoA) has set forth in its decision dated November 18 2019 (2019/359 E. and 2019/7279 K.) that the later dated trademark application was filed in bad faith by taking into account the high level of recognition as well as the original and distinctive nature of the prior dated trademark, which has no meaning.

CoA has emphasised in its decision dated November 18 2019 (2019/359 E. and 2019/7279 K.) that the highly distinctive character of the well-known trademarks should also be taken into account when assessing the applications claimed to be filed in bad faith.

In the case between the parties, the plaintiff's attorney has requested the annulment of the decision numbered 2015-M-12344 issued by the Turkish Patent and Trademark Office and the Re-examination and Evaluation Board (REEB). The attorney has requested the invalidity of the trademark application in case of registration by claiming that the "ANL Choco Lexus" trademark application numbered 2014/6684 was filed in order to acquire unfair benefit from the well-known status of the "Lexus" trademark of the plaintiff company which is world-renowned and produces luxury vehicles. As a result, the trademark application was filed in bad faith. The allegations as to the existence of bad faith have been submitted and the plaintiff's attorney argues that the word "Lexus" is a phrase with a high level of distinctiveness which has no meaning in any language.

The defendant parties have claimed that there cannot be a likelihood of confusion between the trademarks since the goods and services under the trademarks are different, the well-known status of the trademark cannot be proven and "Lexus" trademarked cars are not sold in Turkey.

In the decision of the first instance court, the aforementioned REEB decision was annulled and the "ANL Choco Lexus" trademark numbered 2014/6684 was declared invalid. The court stated the following reasons:

• There is a similarity between the trademarks which leads to likelihood of confusion.

• The distinctiveness level of "Lexus" is high and a high level of recognition is gained from the use of the trademark. The public opinion created by the level of recognition and quality can be transferred to the defendant's trademark and provide unfair advantage

• It is likely that the distinction, the advertising power and the value of the luxury car trademark will decrease, and its reputation and distinctive character will be damaged with the use of the trademark in low-cost and ordinary products.

• The defendant company has already learned that the "Lexus" trademark is well-known, the latest being in 2011, since there were other disputes between the parties based on the "Lexus" trademark decided in the plaintiff's favour.

• It cannot be said that the application is in good faith.

Upon appeal of the decision by the defendants, the district court rejected the appeal by noting that even though the goods and services within the scope of the trademarks are different, the plaintiff's trademark enjoys a high reputation within the automotive industry. The "Lexus" phrase which has no meaning, has high originality and distinctive character and, when these facts are taken into consideration together with the level of the reputation of the ground trademark, it cannot be considered as a coincidence that the defendant company chose this sign to register. The application was therefore filed in bad faith.

In line with the decisions of the first instance court and the district court, the CoA has stated in its decision dated November 18 2011 (2019/359 E. and 2019/7279 K.) that the trademark application was filed in bad faith. It upheld the decision rendered by the district court, taking into account the fact that the "Lexus" phrase, which has no meaning, is original and highly distinctive and also considering the high level of recognition it receives.

The decision in question sheds light on the implementation of the provision "Trademark applications that are filed with bad faith are rejected upon opposition" in Article 6/9 of the IP Code (IPC). The CoA once again underlined that the distinctiveness of a well-known trademark should be taken into account during bad faith assessment. The decision also clearly shows that it is important for beneficiaries to choose highly distinctive phrases in trademark choices in order to benefit from more effective and broader protection in the future.

The authors would like to thank Utku Süngü for his contribution to the article.

Uğur Aktekin and Berrin Dinçer Özbey