'Two-way campaign' is more efficient approach for genuine rights owners
In emerging economies, it is both necessary and crucial for businesses to maintain and protect their IP rights to support their presence in the market. Sometimes, when a business applies for the registration of a trademark, it becomes aware that an earlier application has already been filed for an identical or similar trademark for identical or similar goods and services. In such cases, most applicants prefer to step back and first fight the application. However, a recent case involving two Turkish companies has showed that a ‘two-way campaign’ may be a more efficient approach for genuine rights owners, even if they are not the first filer of a trademark.
In 2010 the applicant, a long-established company with a 40-year history in shipping, chemicals and insurance, planned to file a trademark application for its company name and stylised logo for goods and services in various classes. During the application process, it became aware that a recently established company, which had the same company name, had already filed a similar trademark application for identical and similar goods and services. When seen side-by-side, the similarity between the trademarks (with the ‘B’ logo followed by the company name) is striking:
The applicant decided to fight a ‘two-way campaign’ - that is, it filed its trademark application first and then challenged the earlier trademark application based on its genuine rights over the trademark.
The Turkish Patent Institute (TPI) first rejected the applicant’s application provisionally and partially (with regard to the goods and services that were identical to those covered by the earlier application). However, the Re-examination and Evaluation Board revisited the decision, and the applicant’s opposition against the earlier trademark application - on the grounds of genuine rights ownership, earlier registered trade name and bad faith - was successful.
In a detailed and reasoned decision, the Re-examination and Evaluation Board held that it had been demonstrated that the applicant’s trademark and trade name had been present on the market for a considerable amount of time and were widely recognised in the relevant sector. Therefore, it was clear that the applicant was the genuine rights owner, even though it had filed its application after the other party.
The ‘two-way campaign’ is of particular interest to rights owners facing a similar scenario. If the applicant chooses to challenge the earlier application first, without filing an application for the registration of its own trademark, it may possibly face other applications by third parties. For better and more effective trademark protection in Turkey, trademark owners need to embrace this approach and immediately file their trademark application, so that third parties cannot step in.
Ceylin Beyli, CBL Law Office, Istanbul
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