KIDS ELD GARFI held to be confusingly similar to GARFIELD
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The Re-examination and Evaluation Board of the Turkish Patent Institute has upheld an appeal against a decision of the Directorate of Trademarks in which the latter had dismissed an opposition against the registration of the trademark KIDS ELD GARFI (August 26 2008).
Paws Inc, the owner of the well-known GARFIELD trademarks, opposed an application for the registration of the trademark KIDS ELD GARFI (Application 2006/36390). The opposition was dismissed and Paws appealed to the Re-examination and Evaluation Board.
In its petition, Paws argued that the mark KIDS ELD GARFI was confusingly similar to its earlier registered trademark GARFIELD, since the main element of the trademark applied for ('eld Garfi') was an anagram of the name Garfield. According to Paws, the letters of the name Garfield had been rearranged in order to conceal the similarity between the marks.
Paws further stated that the application should be rejected on the grounds that it owned copyright in the name Garfield. Garfield, a cartoon character created by Jim Davis in 1978, is protected under the Code of Intellectual and Artistic Works.
In addition, Paws argued that the application should be rejected as a whole - even with regard to the good and services that were not covered by the GARFIELD mark - on the grounds that:
- the GARFIELD mark is well known worldwide; and
- the application for the registration of KIDS ELD GARFI had been filed in bad faith.
The board first stated that the word 'kid' in the mark applied for had no distinctive character, as it is commonly used for goods aimed at children. Therefore, 'eld Garfi' was the main element of the trademark KIDS ELD GARFI. The board agreed with Paws that 'eld Garfi' was an anagram of the name Garfield, and thus concluded that the KIDS ELD GARFI mark was confusingly similar to the registered trademark GARFIELD.
Furthermore, the board took into consideration the fact that the name Garfield:
- is protected under copyright law; and
- is the name of a well-known comics character.
In light of the foregoing, the board rejected the application for the registration of KIDS ELD GARFI for all of the goods and services applied for.
The decision is significant in that it highlights the cumulative protection granted to the name Garfield - that is, it is protected by both the Trademark Law and the copyright legislation.
Begüm Beyhan and Ceylin Beyli, Mehmet Gün & Partners, Istanbul
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