The plaintiff in a recent case instituted a court action to cancel a Patent Institute decision to reject its trademark application on the basis of similarity and risk of confusion with the defendant's wellknown trademark.(1)

Facts

Konya Seker San Ve Tic AS launched a court action against the defendant, Unilever NV, and the Patent Institute to cancel the institute's earlier decision to reject its trademark application, following opposition from the defendant.

The court referred to the fact that the plaintiff's SWEETMAX trademark, for which registration was sought, was confusingly similar to the defendant's well-known MAX trademarks, registered for goods in Classes 29 and 30. The defendant claimed that the plaintiff's mark was confusingly similar to its trademark and that the subject application covered the MAX denomination entirely.

Decision

Through linguistic analysis of the plaintiff's mark, the court highlighted that the denomination 'sweet' (meaning 'nice dessert' in Turkish) provided no distinctiveness in terms of goods in Class 30. The court accepted that the defendant's MAX trademark was well-known in Turkey, not only for goods in Class 30, but also for other goods and services. Considering that the similarity between the trademarks gave the impression of a commercial relationship between the defendant and the plaintiff, the court stated that the plaintiff may have taken unfair advantage of the reputation of the defendant's trademark. The court added that the plaintiff's prior registered trademark, TORKU SWEETMAX, did not provide an acquired right for the denomination SWEETMAX; thus, the plaintiff had no prior and exclusive right in relation to the subject trademark which needed to be protected.

The court concluded that the plaintiff's mark was confusingly similar to the defendant's trademark due to their visual, phonetic and semantic characteristics, which created a potential risk of association. The court also stated that the plaintiff, which was active in the same sector as the defendant, had acted in bad faith due to the risk of affecting the reputation of the defendant's well-known trademark. The institute's decision and cancellation of the plaintiff's trademark application were approved and the plaintiff was ordered to pay costs.

For further information on this topic please contact Seda Ungur at Deris Attorneys At Law Partnership by telephone (+90 212 252 6122) or email (sungur@deris.com.tr). The Deris website can be accessed at www.deris.com.tr.

Endnotes

(1) Konya Seker San Ve Tic As v Turkish Patent Institute, Case 2012/183, Decision 2013/172 (Second Ankara Court of Intellectual and Industrial Rights, September 18 2013).

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