A recent court action was instituted for cancellation of the defendant's trademark registration on the basis of its similarity and risk of confusion with the plaintiff's well-known trademarks, as well as the defendant's bad faith.(1)

Facts

The plaintiff claimed that the defendant's trademark registration HARLEM ORIGINAL DEVICE was confusingly similar to their well-known CONVERSE and ALL STAR trademarks – which consist of specialised star device and logo concepts – and especially to the trademark CONVERSE ALL STAR CHUCK TAYLOR DEVICE. The trademarks covered overlapping goods and, therefore, it was claimed that there was a risk of confusion or association between them. There were also risks, it was argued of:

  • taking unfair advantage of the reputation of the well-known trademarks;
  • harming the distinctive character of the mark; and/or
  • damaging the reputation thereof.

The court was asked to cancel the defendant's trademark registration and delete the related record from the trademark registry.

The defendant claimed that it had been using the subject trademark HARLEM ORIGINAL DEVICE for over seven years; as a result, the plaintiff had lost its rights by remaining silent during that period and the plaintiff's silence should be considered as consent. Further, the defendant argued that the samples of the trademarks did not show similarity and that it had not acted in bad faith with the subject trademark registration, and asked the court to reject the action. The court forwarded the file to a panel of experts for issuance of a motivated report. The experts' report was in favour of the plaintiff.

Decision

Following its evaluation of the evidence submitted, the experts' report and the contents of the file, the court determined the following:

  • The risk of confusion was evaluated by taking into consideration the perception of the average consumer, who would perceive the trademark as a whole and would not consider the different details thereof. Thus, the trademarks should be compared in their entirety, especially by taking into consideration the most dominant elements thereof.
  • There was a risk of confusion between the defendant's trademark and the plaintiff's trademarks regarding their design and overall look. This was due to the similarity between the goods covered in the trademarks subject to actual use by both parties, the method of use of the trademarks by both parties and the target consumer groups of both parties.
  • The small and insignificant differences in the defendant's trademark did not prevent the risk of confusion with the plaintiff's trademarks.
  • The plaintiff's trademarks fulfilled all of the criteria for being recognised as well known and had been registered in Turkey prior to filing of the defendant's trademark registration.
  • The defendant did not have a prior right in relation to the subject trademark which needed to be protected.
  • The defendant, which was active in the same sector as the plaintiff, did not act in accordance with the rule of being a prudent business and risked diluting the plaintiff's well-known trademark. Therefore, the defendant acted in bad faith in registering the subject trademark.

The court ordered the cancellation of the defendant's trademark HARLEM ORIGINAL DEVICE and deletion of the related entry from the trademark register, and ordered the defendant to pay the litigation costs. In the absence of an appeal filed by the defendant, the decision became final.

Comment

The court was convinced that the parties' trademark examples were confusingly similar, despite the differences in wording and appearance between the logos. Further, the court accepted the action on the basis of the plaintiff's claims, despite the institution of the court action on April 25 2013 (ie, almost five years after the defendant had registered its trademark on April 30 2008).

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

Endnote

(1) All Star Cv vs Altinbas Ayakkabi San Ve Tic Ltd Sti, Case 2013/259; Decision 2014/52 (Second Bakirkoy Court of Intellectual and Industrial Rights, March 12 2014).

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