Courts protect well-known US trademark never used in Turkey

Turkey

In a landmark decision, the Court of Appeal has upheld a first instance decision cancelling a trademark registration in the name of a Turkish company based on the bad faith of the defendant and the well-known status of the plaintiff's trademark.

The plaintiff is a famous US company which is the creator and first user in the United States of the original trademark at issue in this case. The plaintiff became aware of a trademark registration for its well-known trademark in Class 30 of the Nice Classification, covering products such as candies, sweets and chocolate products, in the name of a Turkish company. It was later found that the Turkish company had approached the plaintiff in 2000 to become a distributor of the plaintiff's goods in Turkey, but had had its application for distributorship refused due to the fact that the plaintiff had no intention of entering the Turkish market at that time.

Under Article 42 of Decree-Law No 556 on the Protection of Trademarks, a cancellation action may be filed within five years from the date of registration of a trademark. This time limit may be disregarded only in cases where it is proven that:

  • the contested trademark was registered in bad faith; and
  • the cited trademark was well known at the time of filing of the application.

In the present case, in 2009 the plaintiff filed an action for the cancellation of the Turkish company’s registration based on its genuine rights in the mark, the well-known status of its trademark and the alleged bad faith of the defendant.

In its defence, the defendant alleged that:

  • the prescribed period for filing a cancellation action had expired;
  • the plaintiff had lost its rights by remaining silent for 10 years;
  • the mark at issue was not well known in Turkey; and
  • it had not filed the application in bad faith.

However, the first instance court upheld the US company’s arguments that:

  • a bad-faith act should not be ignored for the sole reason that a certain time limit has expired; and
  • since its trademark had already reached the status of well-known mark in some member countries of the Paris Convention, it enjoyed the protection afforded to well-known marks, even if it was not widely known in Turkey.

The defendant’s registration was thus cancelled.

The defendant lodged an appeal against the decision of the first instance court, reiterating the same arguments. The Court of Appeal rejected the appeal and upheld the first instance court’s decision.

Arguably, this is a landmark decision with respect to trademarks filed in bad faith: the court ordered the cancellation of a trademark registered 10 years before the filing of the court action based on the bad faith of the applicant and on the well-known status of the plaintiff's trademark, which had been obtained predominantly outside of Turkey. It is noteworthy that the well-known trademark at issue had never been used in Turkey when the court action was lodged; the threshold for proving that it was well known in Turkey was very low once it had been demonstrated that the mark was well known within the United States.

Uğur Aktekin, Mutlu Yıldırım Köse and İrem Girenes, Mehmet Gün & Partners, Istanbul

Get unlimited access to all WTR content