Turkish IP office rules on similarity of figurative marks: Timberland’s tree emblem
Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX
Copyright © Legal Benchmarking Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

Turkish IP office rules on similarity of figurative marks: Timberland’s tree emblem

Sponsored by

gunpartners-400px.png
eminonu-4772596.jpg

Zeynep Seda Alhas and Dilan Sıla Kayalıca of Gün + Partners consider the Turkish IP office’s ruling on the opposition proceedings initiated by TBL Licensing, the owner of the Timberland trademark

Timberland is one of the most famous and prestigious footwear brands, especially known by its original waterproof ‘yellow’ boots, which have defined the brand since their invention in 1973.

Timberland is also the owner of the tree device mark shown below, which is broadly used on its products, including footwear and apparel, as well as on any kind of promotional material of the company.

NTimBoot.png
Timberland logo.jpg

Due to the value and good reputation of the brand, not only the design of the yellow boots but also the Timberland word and the tree device marks are frequently imitated by counterfeiters.

Trademark application and opposition

On November 27 2020, a real person filed the following trademark application before the Turkish IP office, seeking registration in classes 18, 25, and 35.

TBL logo.jpg

The font used for the “TBL” letters is close to the font of the “Timberland” word in the mark shown below, and it is combined with a tree device, and there are circles in both signs – embracing the entire composition in the opposed sign and connecting the tree device to the ground in the earlier trademark.

Timberland logo 2.png

Even though “TBL” is also one of the trademarks used by Timberland, the company had no trademark application or registration for “TBL” in Turkey at that time. Nevertheless, it holds multiple trademark registrations for the tree design shown below in several classes, including 18, 25, and 35.

Timberland logo.jpg

An opposition was filed based on the following arguments:

  • Likelihood of confusion against “Timberland” word marks and tree device marks (Article 6/1);

  • Genuine rights over “TBL” (Article 6/3);

  • Well-known status (Article 6/5);

  • Commercial name (Article 6/6); and

  • Bad faith filing (Article 6/9).

The decision and appeal

The opposition was rejected by the Trademarks Department, for all grounds raised in the opposition stage. Most notably, the department concluded that the parties’ trademarks are not confusingly similar to each other.

Upon further appeal, the Higher Board, consisting of three senior examiners, decided for the total refusal of the contested sign, because it determined that there is likelihood of confusion between the opposed application and Timberland’s tree device marks, pursuant to Article 6/1.

The board stated that there will be likelihood of confusion since the device element, which is the only element of Timberland’s earlier trademarks, and the device element in the contested sign are similar in respect of their overall appearance and the parties’ trademarks cover similar good/services. However, other opposition claims, including bad faith filing, had been rejected.

An alternative perspective

Gün + Partners disagrees with the reasoning of the board rejecting the bad faith filing allegation. It is indeed difficult to accept that it is a mere coincidence that the applicant combined the tree device with the “TBL” word, which is the abbreviation of Timberland, and furthermore sought registration for identical goods and services. In the firm’s view, the board should have concluded that the applicant intentionally acted against the principles of fair trade in an attempt to unfairly take advantage of the opponent, and filed the application in bad faith.

Even though the office presented a limited perspective as to the bad faith claim, it balanced the overall outcome by performing an examination broader than its standard, as to the similarity of the signs; and maybe by considering inwardly the other aspects effective in the current proceedings, such as that:

  • The word element “TBL” – which is the abbreviation of Timberland and the main element of the opponent’s trade name, TBL Licensing – was also used by the opponent as a trademark;

  • The goods and services are identical; and

  • The “Timberland” mark itself is well known in Turkey.

With its pros and cons, the office refused registration of the opposed sign and gave a good precedent as to the similarity of figurative elements in trademarks.

Following this matter, Timberland also filed a trademark application for the “TBL” word mark in Turkey and Gün + Partners believes that in this way, it will encounter fewer difficulties in enforcing its trademark rights over “TBL” in Turkey from now on, since Turkey is mostly a ‘first to file’ country, rather than ‘first to use’. Therefore, it is highly recommended to register all types of signs created and used by the trademark owners, both for defensive and enforcement purposes.

more from across site and ros bottom lb

More from across our site

Meet the esteemed judges who are assessing the first-ever Social Impact Awards
Lawyers debate whether the Supreme Court’s ruling helps maintain confidence in the trademark system
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The group of lawyers, which includes seven IP partners, say they were impressed by ArentFox Schiff's wide-reaching experience
Andy Sherman, general counsel at Dolby Laboratories, says the company will continue to make GE Licensing’s patents available through existing pools
CMS, which represents Nestlé, had been told to respond to a cancellation action by February 12 but filed its response a day later
Keith Bergelt, CEO of the Open Invention Network, explains why AI technologies were not part of an update to its cross-licensing project
Kirkland & Ellis partners explain how they secured the dismissal of a patent case in which the other side had lied under oath
Managing IP understands the association had been considering other options, including Madrid or Vienna, after concerns were raised over Dubai’s positions on various rights
Chris Marando tells Managing IP that he's excited to work on PTAB matters at Perkins Coie, which recently hired another lawyer from his former firm
Gift this article