WELL-KNOWN TRADEMARKS
“ THE DIFFERENCE BETWEEN THE RELEVANT TRADEMARK BEING WELL KNOWN THROUGHOUT THE WORLD AND STANDING OUT IN A CERTAIN SECTOR IS TAKEN UP ON THE BASIS OF THE SPECIFIC CASE”
• The nominal value of the trademark, for example, as shown in the annual financial statements
• The breadth of the portfolio of the goods and services of the registered trademark
• How long the trademark has been well known among consumers
• Whether there are any infringement actions against the trademark due to its well-known
character, whether it is imitated or used by third parties and, if so, whether this damages the well-known character of the trademark and the trademark owner
• Whether the trademark is open for infringement due to its classification (car, gum marks, etc.) or its consumer group (for doctors, children)
• Any documents that support the above statements and prove the well-known character of the trademark. In order for a trademark that is well-known, according to the meaning of the Paris Convention, to be protected in Turkey, it must not be registered in Turkey. Te Supreme Court consistently finds that a trademark is well known in Turkey if it is well known in any one of the countries that are party to the Paris Convention and if it is used or known in Turkey even if it is not registered in Turkey. On the other hand, a trademark’s registration in many countries or its use over a long time will not be considered sufficient on their own for recognition of the trademark.
Pursuant to the basic principle of both the Paris Convention and Decree Law no. 556, a registered trademark provides a limited protection to its
owner only for the goods or services for which it was registered. As a principle, a trademark must be used in the goods and services for which it was registered. In addition, registration or use of a trademark that is identical or confusingly similar to this mark for the same or similar goods and services for which it was registered is prohibited by accepting as a rule that such a registration or use would harm the reputation of the other trademark, impair its distinctive character or cause undeserved benefit.
A well-known trademark is used in relation to the classes for which it was registered, just as for other trademarks. On the other hand, as an exception to the basic principle, trademarks that are identical or indistinguishably similar to well- known trademarks are also subject to protection for goods and services that are not related to those for which the well-known mark was registered. In other words, the scope is expanded in terms of the extent of harming the reputation of the trademark. In line with this, if there is a possibility that situations that would harm the reputation of the trademark or impair its distinctive character could occur even if the trademark is used for non- related classes, there can be an infringement.
34 World Intellectual Property Review May/June 2010
www.worldipreview.com
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