A third party has filed the trademark application no.2013/40967 for the denomination “BENFICA” as a word mark on May 4, 2013 aiming to obtain trademark registration in classes 25 and 35 (including the retail services for the sales of goods in classes 18, 24, 25, 26). The application has been published in the official bulletin dated January 13, 2014 for a period of three months for opposition purposes.
The opponent Sport Lisboa E Benfica filed an opposition against this application before the Turkish Patent Institute on the basis of genuine right ownership arisen from the prior use of “BENFICA” trademark prior to the protection date of the disputed trademark, the notoriety, trade name and the bad faith of the applicant party.
The opponent asserted that, Sport Lisboa E Benfica was founded in 1904 in Lisbon, Portugal and has many achievements beyond 110 year history of being one of the oldest sports club in Portugal, that SL BENFICA became champion more than thirty times in the Portuguese league and European Champions League Cup twice and UEFA Cup once and that SL BENFICA is active in many branches of sports besides football, such as basketball, handball, hokey, volleyball, athleticism, judo, rugby and tennis. The opponent further asserted that BENFICA trademark has been registered both in the home country and many jurisdictions such as Spain, Germany, France, Italy, Benelux in various classes.
The claims regarding the worldwide use and notoriety of BENFICA has been supported with many evidences including the history and achievements of the opponent party, related parts of “Captains of Industry Football Money League” report by Deloitte with regard to the commercial success of the club, trademark registration certificates, a document showing that the opponent is one of the three largest teams in Portugal, the document showing that the opponent has been recorded within the Guinness Book of World Records for the number of members and some visuals of their web-site.
According to the Article 8/3 of the Decree Law no.556; “Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade, the trademark applied for shall not be registered provided that; a) the rights to the sign were acquired prior to the date of filing of the application for registration of the trademark, or prior to the date of priority claimed for the application for registration, b) the sign confers on its proprietor the right to prohibit the use of a subsequent trademark”
The Article 8/4 also reads as “A trademark applied for which is identical or similar to a registered trademark or to a trademark application with a prior date of filing may be used for different goods and services. However, where in the case of a registered trademark or of a trademark application with a prior date of filing, the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark application with a prior date of filing, upon opposition by the proprietor of the prior trademark registration or application, the trademark applied for shall be refused even if it is to be used in respect of differing goods and services.”
Furthermore according to the Article 8/5, “Upon opposition by the holder of the relevant right, the trademark applied for shall not be registered if it contains the personal name, photograph, copyright, or any industrial property rights of third parties.”
Yet, the Article 35 of the Decree Law no.556 regulates that “Notices of opposition to the registration of trademark on the grounds that it may not be registered under the provisions of Articles 7 and 8, and notices of opposition on the ground that there exists bad faith in the application shall be submitted within three months of the publication of the application.”
Consequently the Turkish Patent Institute has accepted the opposition ruling that:
- In the view of notoriety of opponent’s trademarks, the registration of the disputed trademark application would lead to take unfair advantage from the well-known character of opponent’s trademarks and damage the distinctive character and reputation thereof,
- The application has been filed in bad faith taking into consideration that BENFICA is a well-known trademark worldwide.
And the Institute accepted the opposition and rejected the application.
The practical significance of the case is that even if the real right owner does not locally use its trademark on the goods or services for which the protection is sought, the Turkish Patent Institute has especially considered the worldwide well-known character of trademark (apart from the local awareness in Turkey) and the bad faith in connection with its well-known and distinctive character bearing in mind that the identical version of a well-known and distinctive trademark shall not be chosen as a coincidence.