A third party application (no.2013/40967) was filed in Turkey to register the denomination BENFICA as a word trade mark in May of last year. The application targeted goods in Class 25 as well as services in Class 35 (including the retail service of selling goods in Classes 18, 24, 25 and 26). The application was published in the official bulletin in January of this year for a period of three months for opposition purposes.
The opponent, Sport Lisboa E Benfica, opposed this application before the Turkish Patent Institute on the basis of genuine right ownership arising from its own use of the “BENFICA” trade mark prior to the protection date of the disputed trade mark, the notoriety, trade name and the bad faith of the applicant.
Sport Lisboa E Benfica asserted that was founded in 1904 in Lisbon, Portugal, and had many achievements, being (at 110 years old) one of the oldest sports club in Portugal. The Benfica football team had won the Portuguese league championship more than 30 times, the European Champions League Cup twice and UEFA Cup once. SL Benfica was also active in many branches of sports besides football, such as basketball, handball, hockey, volleyball, athletics, judo, rugby and tennis. The opponent further asserted that the BENFICA trade mark was registered both in its home country and many jurisdictions such as Spain, Germany, France, Italy, Benelux, for goods and services in various classes.
The claims regarding the worldwide use and notoriety of BENFICA were supported with much evidence, including the history and achievements of the opponent party, related parts of Deloitte's “Captains of Industry Football Money League” report with regard to the commercial success of the club, trade mark registration certificates, a document showing that the opponent was one of the three largest teams in Portugal, and a document showing that the opponent was recorded in the Guinness Book of World Records for the number of members and some visuals of their website.
According to Article 8/3 of Decree Law no.556;
“Upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade, the trade mark applied for shall not be registered provided that; (a) the rights to the sign were acquired prior to the date of filing of the application for registration of the trade mark, or prior to the date of priority claimed for the application for registration, (b) the sign confers on its proprietor the right to prohibit the use of a subsequent trade mark”
Article 8/4 adds that
“A trade mark applied for which is identical or similar to a registered trade mark or to a trade mark application with a prior date of filing may be used for different goods and services. However, where in the case of a registered trade mark or of a trade mark application with a prior date of filing, the trade mark has a reputation and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trade mark or of the trade mark application with a prior date of filing, upon opposition by the proprietor of the prior trade mark registration or application, the trade mark applied for shall be refused even if it is to be used in respect of differing goods and services.”
Further, according to Article 8/5,
“Upon opposition by the holder of the relevant right, the trade mark applied for shall not be registered if it contains the personal name, photograph, copyright, or any industrial property rights of third parties".
Article 35 of Decree Law no.556 specifies that
“Notices of opposition to the registration of a trade mark on the grounds that it may not be registered under the provisions of Articles 7 and 8, and notices of opposition on the ground that there exists bad faith in the application shall be submitted within three months of the publication of the application.”
Consequently the Turkish Patent Institute accepted the opposition ruling that:
• In the view of the well known nature of the opponent’s trade marks, the registration of the disputed trade mark application would lead to the taking of unfair advantage of the well-known character of the opponent’s trade marks and damage their distinctive character and reputation,
• The application was filed in bad faith taking into consideration that BENFICA is a well-known trade mark worldwide.
The Institute thus rejected the application.
The practical significance of the case is that even if the real right owner does not locally use its trade mark on the goods or services for which the protection is sought, the Turkish Patent Institute has especially considered the worldwide well-known character of the trade mark (apart from the local awareness in Turkey) and the bad faith in connection with its well-known and distinctive character bearing in mind that the identical version of a well-known and distinctive trade mark shall not be chosen as a coincidence.
Source: Sema Salman, Counsel, NSN Law Firm, Istanbul, who kindly prepared this note for Class 46