TRADEMARK “İŞ” VERSUS. TRADEMARK “SL”

Supreme Court of Appeal, 11th Civil Department

Case No: 2007/1038

Decision No: 2008/2797

Date: 10.03.2008

Related Law / Article: Decree Law No. 556 Pertaining to Protection of Trademarks / Article 42, 61, 70

ESTABLISHMENT OF WELL-KNOWN TRADEMARK

PREVENTION OF INFRINGEMENT TO THE TRADEMARK 

ABTRACT: Even though plaintiff’s trademark is a well-known trademark, when there is no similarity between two trademarks in terms of form, phonetics, meaning and public impression, confusion and infringement are out of question.   

Plaintiff’s counsel claimed that the publication about the registration of Defendant Company for the trademark “SL” in classes 25, 34 and 35 in 2001 caused infringement and unfair advantage from the reputation of plaintiff’s trademark “İŞ” which was used as a means of publicity since1928 and registered. Furthermore, plaintiff’s counsel also stated that his client’s opposition was rejected by the Trademark Department and then Reexamination and Evaluation Board, and according to plaintiff’s counsel the decision was not right and his client’s trademark was a well-known trademark, hence the plaintiff’s counsel demanded and pleaded the rejection of defendant’s application according to provisions of Articles 7/1-b, 8/1-b and 8/4 of the Decree Law No. 556 Pertaining to Protection of Trademarks, the establishment of well-known trademark belonging to plaintiff, the decision of TPI to take the trademark to higher status of well-known trademarks and consequently the publication of it.

Defendants’ counsels advocated respectively that there was no similarity to cause confusion.

According to the scope of file, proofs and expert report, the court decided that there was no similarity in terms of form, phonetic, meaning and public impression, the similarity at first sight and leading to confusion were out of question, the words were organized in a different structure and could be read differently, the words came together with a specific writing and understanding and even though the trademark of plaintiff was a well-known trademark, unfair benefit from the well-known trademark could be out of question, the plaintiff used the trademark in its business documents since 1950, hence it could not be possible that defendant could intend to benefit from plaintiff’s trademark, defendant’s application to TPI was accepted and the trademark was labeled as well-known trademark, the reason of the same demand in this court was TPI’s decision to consider the said trademark as well-known trademark, since the court was left without a subject because of establishment of well-known trademark demand and other demands in relation with this, and there was no decision to take. Consequently, plaintiff’s counsel appealed the case.

Given that the information and documents in the case file and the evidences in the decision of the court being considered and evaluated, there were no improper features to the law; the appeal of plaintiff was rejected.