A recent court action was instituted for the cancellation of the defendant's trademark registration INFINITY due to its similarity and risk of confusion with the plaintiff's trademark INFINITY, which had been filed as the extension of an international registration through the World Intellectual Property Organisation (WIPO) and had a prior filing date, which the Turkish Patent Institute had not taken into consideration during the ex officio first examination stage due to a delay in notification through the WIPO.(1)

Facts

The court action constituted the first instance court's second round of evaluation after its first decision (in which the action had been accepted)(2) was cancelled by the Supreme Court(3) on formal grounds, stating that the court had not investigated the validity of the plaintiff's trademark by requesting the related official trademark file from the patent institute. As a result, the court of first instance:

  • re-evaluated the case;
  • requested the missing file on the plaintiff's trademark from the patent institute; and
  • issued the same decision after the resolution of the formal deficiency mentioned by the Supreme Court.

The plaintiff claimed that it was active in more than 100 countries and extensively used the trademark INFINITY together with its well-known MAGNUM trademark on chocolate products – on August 23 2007 it had filed a trademark application (60938/2008) for INFINITY through the WIPO (as an extension of International Registration 803282), which was only recently added to the patent institute's online records due to a delay in notification from the WIPO. The defendant's trademark – with a later application date of December 31 2007 – had been erroneously registered and should have been ex officio rejected by the patent office during the first examination stage, as both trademarks and their specifications were identical and there was a risk of confusion between them, and the defendant had acted in bad faith by filing an identical application despite the high awareness of its cited trademark.

The defendant claimed that its trademark had duly matured into registration following the patent office's ex officio examination and in the absence of any third-party opposition, its trademark could be differentiated from the plaintiff's, which is generally used together with the well-known MAGNUM trademark. Further, it argued that the consumer groups for the trademarks contrasted in terms of cultural and socioeconomic class, and that the writing type and font size of the trademarks were different.

Decision

In view of the evidence submitted and considering the expert's report, the court determined that the trademark MAGNUM was well known and that INFINITY had been extensively used by the plaintiff with this well-known brand since 2006 (ie, MAGNUM and INFINITY are associated with each other), but INFINITY was not a well-known brand. The court added that the trademarks were identical in respect of visual, phonetic and semantic aspects and covered identical goods in Classes 29 and 30. As a result, there was a risk of confusion between them. Further, the defendant was active in the same sector and should have been aware of the plaintiff's trademark which was used, promoted and advertised extensively in the Turkish market. Therefore, the defendant had filed the subject trademark in bad faith with the aim of taking unfair advantage from the advertisement power of the plaintiff's trademark. As a result, the court ruled for the cancellation of the defendant's trademark.

Comment

The above case shows that there can be serious delays in the registration of trademarks applied for through the WIPO and the institution of a court action may be needed to resolve the problem, which can take a long time to complete (eg, two years in the case in question). Moreover, this example illustrates that the Supreme Court is strict in its evaluation of the decisions of the court of first instance and checks and evaluates decisions even in respect of formal conditions.

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) Unilver NV vs Tayas Gida Sanayi Ve Ticaret AS, Case 2013/34, Decision 2013/92 (Fourth Istanbul Court of Intellectual and Industrial Rights, May 23 2013).

(2) Beyoglu Court of Intellectual and Industrial Rights, Case 2010/12, Decision 2011/56, March 1 2011.

(3) 11th Civil Department of the Supreme Court, Case 2011/8372, Decision 2012/15857, October 11 2012.

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