Broad level of protection for well-known marks confirmed

The Turkish Court of Appeals has upheld a decision of the IP Court in Ankara to overturn the Turkish Patent Institute's (TPI) refusal to register the mark RAFFAELLO (and device) (Case 2006/13212, December 12 2006).

Soremartec SA applied to register the mark RAFFAELLO (and device) for goods in Class 30 of the Nice Classification at the TPI. The TPI refused the application due to an earlier trademark registration for RAFAELLA registered for goods in the same class. Soremartec appealed to the IP Court in Ankara.

The IP Court upheld the appeal and overturned the earlier decision. It reasoned as follows:

• The two trademarks are confusingly similar for consumers despite differences in spelling since they are not in Turkish and the pronunciation by Turkish-speakers of both words is quite similar.
  
  
• In order to overcome the above grounds for refusal, Soremartec needed to prove that RAFFAELLO was a well-known trademark before the protection date of the cited trademark. If proven to be well known, the RAFFAELLO mark would be deemed to have acquired distinctiveness. Provisions of the Trademark Decree Law in relation to well-known trademarks are similar to those laid down in the Paris Convention for the Protection of Industrial Property. According to the Trademark Decree Law, in order to qualify as a well-known mark, a service mark or a trademark has to be known to the relevant sector of the public. Such a mark does not need to have been used in Turkey or registered at the TPI in order to qualify as a well-known trademark. 'Relevant sector of the public' means actual or potential consumers of the type of goods or services bearing the trademark, business circles in the relevant sector and persons involved in channels of distribution of the goods and/or services concerned. Other than in those areas, such a trademark does not have to be known qualitatively.
  
  
• Registration certificates, brochures, promotional materials, documents indicating advertising and publicity expenditure and other evidence submitted by Soremartec proved that RAFFAELLO (and device) is a well-known trademark, especially in the relevant sector. In addition, Soremartec had shown that the mark had been registered in many EU member states.

On appeal by the TPI, the Court of Appeal affirmed the IP Court's ruling.

Uğur Aktekin and Rana Ortan, Mehmet Gün & Co, Istanbul