“BT BULGARTABAC MM + DEVICE” vs. “MM”

Supreme Court of Appeal, 11^st Civil Department

Case No.: 2005/13829

Decision No.: 2007/573

Date: 22.01.2007

“BT BULGARTABAC MM + DEVICE” vs. “MM”

·         CANCELLATION OF REFUSAL OF PROTECTION

·         REQUEST FOR REGISTRATION

·         HOSTILITY

Holder of the trademark “bt bulgartabac mm + device”, the plaintiff filed a lawsuit against the refusal of protection decision of the Turkish Trademarks Office for its trademark application for Class 34 pursuant to Article7/b of the Decree law No. 556 due to another registered trademark “MM”.

The plaintiff claimed that the trademarks are not confusingly similar, that its trademark consists of four elements, that they are using this trademark to indicate the fact that their store is big, that they are not producing and manufacturing tobacco products and that there is not a likelihood of confusion between the trademarks on the consumers and requested that the refusal of protection decision be cancelled and the trademark be registered.

The Turkish Patent Institute, one of the defendants claimed that in both of the trademarks the element that first draws attention is “MM” and that the decision was right; and requested that the case be dismissed.

User of the trademark, the other defendant, claimed that the trademark “MM” does not belong to them but to Genossenschafts-Bund, that they are using it via a license agreement, that they should not be deemed to be the hostile party, actually the elements that the plaintiff added to the trademark do not provide the distinctiveness, and that the trademark has been used for 50 years in Turkey; and requested that the case be dismissed.

The court ruled that the case be dismissed, as the trademark “MM” does not belong to the user of the trademark “MM”, one of the defendants and it is used via license, defendant do not object to the registration of the other trademark, the hostility is not deemed to be on that defendant, the goods of 1st and 2nd subclasses of Class 34 that the plaintiff applied for registration are in the scope of the trademark “MM”, as in general vision the element that draws attention in both trademarks is “MM”, the other elements of the plaintiff’s trademark are faint, the writing cannot be read, considering the impression that relevant goods leave on targeted public the trademarks are similar to each other in respects of sound, vision, meaning and form, the decisions already taken are right.

Supreme Court of Appeal ruled that the decision of Ankara Civil Court of Intellectual and Property Rights is in compliance with the law and rejected the appeal.