Decision shows why mark owners must act quickly against bad-faith applications

In Turkey, like in many countries, local applicants sometimes seek to register famous foreign trademarks in their own name. Following the Court of Appeal’s precedent in this respect, once a party has secured a registration, it can continue to use the mark until the registration is duly challenged by the real rights owner and cancelled via a final court decision. Such proceedings can take two to three years until finalisation, but the applicant can enjoy the benefits of its registration during this period.

It is thus crucial for trademark owners to act swiftly as soon as they become aware of the application, so that they can bring the dispute to an end more quickly and incur less costs. This principle was recently illustrated in a case before the Turkish Patent Institute.

In 2011 a US company acquired rights in the US trademark LE WHIF (registered in 2008), covering inhalers with nutritional supplements for medical and non-medical purposes. Shortly after acquiring the mark, the company became aware that a Turkish individual had applied for the registration of the word mark LE WHIF for identical and similar goods.

When doing some research before proceeding with the opposition, the US company discovered that the applicant had a history of applying for the registration of famous foreign trademarks, such as VICTORIA’S SECRET, WIKILEAKS, HEIDI KLUM and PAUL FRANK, which clearly belonged to third parties. Noting that some of these trademarks were actually registered in the applicant’s name (as the real owners had not filed oppositions in time), the US company filed an opposition against the application for LE WHIF immediately. As the company had made some use of its trademark in Turkey, it based its opposition mainly on its genuine prior rights, as well as evident bad faith on the applicant’s part.  

In a detailed and reasoned decision, the TPI found in favour of the US company. The TPI stated as follows:

• The opponent had proved that it had genuine prior rights in the LE WHIF mark.
• The LE WHIF mark is highly distinctive and enjoys a high level of awareness among the public, so that its use on any class of goods/services, whether similar to the opponent’s goods or not, would create confusion.
• The applicant clearly aimed to profit unfairly from popular foreign trademarks, including the LE WHIF mark, when applying for registration of these marks in his own name. Accordingly, his bad faith was incontestable.

This decision is important for future reference in Turkey, as it emphasises once more that it is crucial for trademark owners to act quickly and gather evidence at the opposition stage.

Ceylin Beyli, CBL Law Office, Istanbul