Turkey: Intellectual Property

TAYAŞ GIDA SANAYİ TİCARET A.Ş. vs. TURKİSH PATENT INSTİTUTE and HASBRO INTERNATIONAL INC and UNILEVER N.V. Case No. 2008/350; Decision No. 2010/142 191 (2nd Istanbul Court of Intellectual and Industrial Rights, June 06, 2010)

TAYAŞ GIDA SANAYİ TİCARET A.Ş

TURKİSH PATENT INSTİTUTE
HASBRO INTERNATIONAL INC
UNILEVER N.V.

Plaintiff's trademark application ACTION MAX no. 2006/61911 covering class headings 29 and class 30 and defendants ‘several trademark registrations ACTION MAN and MAX covering goods in class 29 and in class 30.

Court action instituted for the withdrawal of TURKISH PATENT INSTITUTE final administrative decision based on opposition filed by the defendants on the grounds of risk of confusion with their famous trademarks, unfair competition and bad faith.

*The plaintiff claimed that; there is no risk of confusion due to the similarity between the trademarks ACTION MAX and ACTION MAN on the one hand and ACTION MAX and MAX on the other hand and that the registration of their trademark application ACTION MAX will not lead to taking unfair advantage of the reputation and distinctiveness of defendants’ respective trademark registrations and that for this reason the last administrative decision of the T.P.I. was baseless and requested the registration of its trademark ACTION MAX.

*The defendant TURKISH PATENT INSTIUTE asserted that; plaintiff’s trademark application ACTION MAX and the defendants’ respective famous trademarks are confusingly similar and requested from the Court to reject the action.

*The defendant HASBRO INTERNATIONAL INC asserted that; its registration trademark ACTION MAN is a world-wide well-known trademark, that acceptance to the registration of the trademark application ACTION MAX would cause likelihood of confusion and would take unfair advantage from its trademark registration and requested from the Court to reject the action.

*In the light of the evidences submitted by the parties and of the experts report which are mostly in defendants’ favor, The Court has retrained that:

• ACTION MAX denomination would create the same visual, phonetic and conceptual impression in the mind of the consumers and that the level of attention of the average consumers for the overlapping goods in class 29 and 30 are very low as they will purchase the goods without long consideration. Therefore, in case the denomination ACTION MAX is registered, the plaintiff would take unfair advantage from the image, reliability and reminiscence of the defendants’ trademarks and would thus be perceived as a part of the series mark of ACTION MAN and MAX.
• Defendants’ trademarks are well known trademarks and the use and registration by the plaintiff of the trademark ACTION MAX, even if used on differing products, would increase the sales of the plaintiff’s products and would cause undue transfer of the image and reliability of the defendants’ trademark without any cost and effort and moreover the use and registration of the trademark ACTION MAX would dilute and render commonplace the defendants’ trademarks and thereby would harm their distinctive character.
• As the parties operate in the same field of activity it is unconceivable that the plaintiff is unaware of the defendants’ respective registered trademarks that have recognition through extensive use and advertisement. The act of the plaintiff is not only prone to mislead the average consumer and in this respect cause likelihood of confusion but also aims to take unfair advantage from the recognition of the defendants’ trademarks. For this reason the act of the plaintiff constitutes an act of unfair competition within the meaning of the article 56 Turkish Commerce Law.

The Court has ruled to the rejection of the court action and rejection of the trademark ACTION MAX for registration.

Two trademark applications consisting of two elements each of which is confusingly similar to worldwide well-known trademarks belonging to the different companies has been considered as constituting an act of unfair competition.