TPI records UGG as well-known trademark

The Turkish Patent Institute (TPI) has accepted Deckers Outdoor Corporation's application for the recordal of its UGG mark as a well-known trademark.

Deckers had submitted comprehensive evidence to the TPI together with its application, including:
  • registration certificates;
  • affidavits;
  • pictures of Ugg boots worn by celebrities;
  • financial statements;
  • documents evidencing raids conducted against infringers in Turkey; and
  • a reasoned decision of the Fourth IP Court of Ankara stating that UGG is a well-known trademark (for further details please see "UGG recognised as well-known trademark").
Although the TPI did not specifically refer to the IP Court’s decision, it was taken into consideration by the TPI when deciding to accept the recordal application.

Turkey is one of the few countries that hold a separate list of well-known trademarks within the Trademarks Office. The decision of the TPI to record a trademark as well known is only binding on the TPI; however, TPI decisions regarding a trademark’s well-known status are regarded as evidence by the Turkish courts in cases where one of the parties claims that its trademark is well known. 

The protection resulting from the recordal of a trademark as well known is permanent under the current legislation, since the Decree Law 556 Pertaining to the Protection of Trademarks contains no explicit time limit in this respect. In addition, the recordal of a well-known trademark before the TPI has various practical advantages. For instance, in opposition proceedings before the TPI, the owner of a trademark that has been recorded as well known will not need to submit evidence and prove the well-known status of its trademark, unless otherwise asked by the TPI.

The draft Trademark Law 2010, which is now null and void after the parliamentary elections of 2011, included a provision requiring that applications for the recordal of well-known trademarks be filed before the IP courts, rather than the TPI. A similar provision might be included in the new draft law that is expected to come to the agenda of the Turkish Parliament during the present term.

Ugur Aktekin and Güldeniz Dogan, Mehmet Gün & Partners, Istanbul

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