The Turkish Patent Institute (TPI) has provided wider protection for a well known trade mark against an application filed for dissimilar
goods, considering that the application may be to the detriment of the
distinctiveness of the well known trade mark.
The applicant, Cevdet Akif Usta, applied
to register its trade mark (illustrated, right) before the TPI for goods in class 20; this application was published in the Official Trade
mark Bulletin on December 12, 2011.
Guccio Gucci S.p.A filed an opposition to the application and indicated
the trade mark application HUCCI includes the same
“U-C-C-I” letters which led to a visual and aural similarity with its own mark
which might cause a likelihood of confusion on the part of the public,
the well-known status of GUCCI trade marks should be
considered when examining the similarity of the marks, even though the goods
covered by the marks were dissimilar,
registration of the applied-for trade mark would be
detrimental to the distinctive character of the trade mark and take unfair
advantage of its reputation,
The TPI accepted the
opposition and stated that the trade mark application was visually and phonetically
similar to the well-known trade mark GUCCI ; even if the goods covered in the application
belonged to a different sector to those of GUCC, its registration would be detrimental
to the distinctive character of the well-known GUCCI trade mark.
By this means, even though GUCCI did not have registration or prior use
for “furniture, mirrors, picture frames; goods (not
included in other classes) of wood, cork, reed, cane, wicker, horn, bone,
ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for
all these materials, or of plastics” in class 20, the TPI provided broader protection for
GUCCI in order to prevent dilution of its distinctive character.
Consequently, this decision clearly establishes that
TPI provides wider protection for well known trade marks against applications
that cover totally different goods/services, considering that the use of well
known trade marks on dissimilar goods/services may cause dilution of the well
known trade mark.
thanks Selin Sinem Erciyas (Mehmet Gün & Partners) for supplying this