Turkish Trademarks “G…” versus “U …G…”

Supreme Court of Appeal, 11^st Civil Department

Case No.: 2007/2294

Decision No.: 2008/10147

Date: 18.09.2008

Related Law/Article: Decree Law No. 556 Pertaining to Protection of Trademarks/Article 8

                                      Code of Civil Procedure / Article 74

“G…” versus “U …G…”

·         CANCELLATION OF A TRADEMARK OF WHICH REGISTRATION PROCESS IS NOT COMPLETED

·         PRINCIPLE OF DEPENDENCE ON LAWSUIT CLAIMS

Upon the application made for trademark “U G”, holder of the trademark “G…” filed an opposition before Turkish Trademark Office.  Their opposition is rejected finally by Re-examination and Re-evaluation Board (REEB) of the TTO.

Holder of “G…”, the plaintiff claims that their trademark registered in classes 18, 24, 25, 26 has been used for long years and asks for cancellation of the other trademark “U G”.

T. Spor Ltd. Şti., the defendant asserts that the conditions for an invalidity action do not exist since the registration of their trademark has not been completed.

3^rd Ankara Court of Intellectual and Industrial Property Right, as although the plaintiff in their petition asked for the cancellation of the defendant’s trademark, since they mention in their petition about the decisions of the Trademark Department of the TTO and the REEB, the decision copy is placed annexed to the petition, they actually claim the cancellation of the said decisions, as the two trademarks are similar to each other and there is a possibility of confusion in the same groups of goods and services, partially accepts claims of the plaintiff and although the defendant’s trademark is not registered for class 35/8, rules that the decision of the REEB be partially cancelled with respect to classes 18, 25/5, 35/8 since TPE has published a remark saying that registrations for goods in classes 1-34 will also be protected in practice in class 35/8 for the applied-for goods.

The decision is appealed by the defendants (trademark holder and the TTO).

Supreme Court of Appeal rules that the court is decision be reversed as the claim of the defendant is only the cancellation of the trademark and that the interpretation of the claim in another way by the court does not comply with the law since the court should be dependent on the claim according to the Article 74 of Code of Civil Procedure and from the beginning date of the lawsuit to the end of the verdict, there is not a completed registration in the name of the defendant and cancellation of a yet non-registered trademark cannot be claimed.