Yasemin Aktas reports on an interesting opposition decision in Turkey.
In Turkish trademark practice, it is agreed that well-known marks need broader protection than ordinary marks. Turkey has various statutes extending the scope of protection of well-known marks to different goods/services where certain conditions exist. These include:
- Article 6(4) of the Industrial Property Code 6769 (the IP Code), recognizing Article 6bis of the Paris Convention, which sets out protection for unregistered well-known trade marks;
- Article 6(5) of the IP Code, adapted from Article 16(3) of the Agreement on Trade-Related Aspects of IP Rights (TRIPs), which sets out protection for registered well-known marks also for different goods/services
Under the Law of Literary and Artistic Works No 5846, the protection for copyrighted works subsists automatically and becomes enforceable. Copyright registration is possible for all types of work but it is not mandatory to obtain protection over a work in Turkey. Registration is optional.
Article 6/6 of the IP Code states that if an application for a trade mark contains the name, business name, photo, copyright, or IP rights of third parties it will be rejected. This grants protection to copyrighted works against trade marks.
In a recent case, the Turkish Trademark and Patent Office (TPTO) put copyright protection over well-known status protection. An opposition based on the well-known status of a registered logo mark and the opponent’s copyrights on the logo was accepted owing to the copyright protection only.
Grounds of opposition
The opponent, a famous American fashion brand, has been actively using its registered logo mark in Turkey for many years in classes 18, 25 and 35 and the well-known status of its mark has been recognised by the TPTO many times in opposition/appeal proceedings.
The opponent sought the refusal of a local application for a mark with a similar version of its well-known logo and covering different services in class 39 from land, sea and air transport services and electricity distribution services to water supply services. The opponent’s main grounds were “dilution by blurring” based on the recognised well-known status of their logo and their “copyrights” on the logo. The opponent’s copyright was not registered in Turkey, but it was in the US.
The PTO accepted the opposition grounds based on the copyright protection and entirely rejected the opposed application. But the dilution claims were rejected on the ground that registration of the opposed mark in class 39 would not cause any risk of dilution of the well-known logo, even though the signs are remarkably similar to each other.
Importance of copyright protection
This decision reveals that the PTO tends to be more protective of copyrights than well-known registered marks when the conflicting mark covers quite different goods/services. Well-known brand owners should always seek copyright protection, where possible.
Yasemin Aktas is a partner of OFO VENTURA and a member of MARQUES