TRADEMARKS IN TURKEY
“DISTINCTIVENESS, ORIGINALITY AND THE WELL- KNOWN NATURE OF THE CLIENT’S TRADEMARK WERE VERY STRONG ARGUMENTS TO PROVE THE BAD FAITH OF THE APPLICANT.”
In the Trademark Examination Guidelines published by the TPI, which guide applicants/ opponents and examiners during the examination of trademark prosecution, there are some examples of bad faith.
• Trademarks which include original, highly distinctive signs that are registered or used in Turkey or in foreign jurisdictions and that cannot be created or chosen coincidentally;
• When the applicant files applications for
well-known marks (of others) systematically, with the aim of pressing the rightful owner to sign an agreement or buy the mark from the applicant; and
• When the application is made exclusively with the intent of preventing competition by other people or undertakings.
Te commercial relationship between the parties, if any, is also taken into consideration.
It should be noted that when evaluating bad faith what matters is the filing date of the challenged application. Terefore, evidence and arguments about bad faith need to date back to before the filing date of the opposed mark.
Case study
In an actual case, we filed an opposition against a trademark application. Te client’s mark and the opposed mark are shown above.
Te similarity between the trademarks and the possibility of bad faith are very obvious. However, it was not enough to convince the examiner, and proof of the existence of bad faith had to be supported by correct arguments backed by evidence.
In the decision, the examiner stated the following points when granting a decision in favour of the opponent.
“It is determined that the subject application consists of the word ‘Kahsmir’, which is very similar to the word ‘Kashmir’, and the letter K. We also see that the same stylised letter K is used by the opponent and registered in the name of the opponent in foreign jurisdictions before the filing date of application.”
the subject Turkish 78
Özlem Futman has a Master’s degree in IP from Franklin Pierce Law Center and has experience in all aspects of IP prosecution, advice and litigation, where she represents multinational clients in trademarks, copyrights, industrial designs, domain names, licensing and passing off matters.
Damla Duyan has a Master’s degree in IP from the University of Strasbourg and has experience in all aspects of IP prosecution, where she represents multinational clients in trademarks, patents, industrial designs and domain names.
Client’s trademark Opposed trademark
Tis statement meets the first fact mentioned above in the Trademark Examination Guidelines. Distinctiveness, originality and the well-known nature of the client’s trademark were very strong arguments to prove the bad faith of the applicant.
Furthermore, in the decision, theTPI stated the following:
“Meanwhile, we noticed that the same applicant filed several other applications consisting of trademarks similar to those belonging to third parties that are used in the perfume industry. Terefore, the opponent’s argument as to the bad faith of the applicant is accepted and the subject application is refused.”
Other applications by the applicant which were also filed in bad faith strengthened our hand in proving the existence of bad faith. When we checked the other applications of the applicant it was clear that he was systematically trying
to register well-known trademarks in the same sector. Most probably, the aim of the applicant was to gain a profit by selling these trademarks to the rightful owners.
In conclusion, every case should be evaluated on its own merits when determining bad faith as there are no precise rules or provisions to prove the presence of bad faith, which is largely subjective. Te tricky part is to submit the right arguments and evidence and to convince the examiner that
the applicant is acting in bad
faith while keeping in mind that the bases of an opposition cannot be changed aſter the filing.
Özlem Futman is a founding partner at OFO Ventura. She can be contacted at:
ofutman@ofoventura.com.tr
Damla Duyan is a trademark and patent attorney at OFO Ventura. She can be contacted at:
dduyan@ofoventura.com.tr
World Intellectual Property Review Annual 2014
www.worldipreview.com
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