Trademark infringement solved in the scope of unfair competition provisions

Supreme Court of Appeal, 11^st Civil Department

Case No.: 2007/6475

Decision No.: 2009/1170

Date: 03.02.2009

Related Law/Article: Turkish Civil Code / Article 2

                                 Turkish Commercial Code / Article 56, 57

·         Behaviors in conflict with good faith principles in unfair competition

·         The use of trademark in a way that leads confusion

·         Request to prevent infringement of trademark right and unfair competition

The plaintiff asserts that he established his company in 1979, registered the trademark “OR…” in his name in 1999, the defendant starts to use the wording of his trademark in his company title and that he also uses the said wording as a trademark on his goods, his trademark and the defendant’s company title is almost identical and requests that this infringing acts of the defendant be stopped, the unfair competition be prevented, the company title be removed from the register, the use of the trademark on the goods and for services, on the publicity means of the defendant be ceased.

The defendant claims that that there is no legal basis for directing hostility to him, he established his company in 2001, that his company title also constitutes the registered trademark of the plaintiff does not prove the infringement  alone, and that he has never used the said wording as a trademark and requests that the case be dismissed.

The court rules that since there is a use that leads to confusion as the defendant is using “OR ….. A.Ş.” in his company title, the claims of the plaintiff be accepted partially and consequently the wording OR… be removed from the company announcements and that since there is a lack passive hostility, other claims be rejected and the action filed against the real person defendant be rejected.

The decision is appealed by both the plaintiff and the defendant.

Article 56 of the Turkish Commercial Code prohibits every kind of commercial competition abuse.  Crossing of this line prescribed in the law occurs when there are abuses of economical competition in a way that is in conflict with good faith rules prescribed in the Article 2 of the Turkish Civil Code.  Leading to confusion by publicity means such as a name, title, trademark or sign should be deemed to be a behavior in conflict with good faith rules alone.

In this case, the trademark in question is identical with the company title and they are both used in the same industry.  It is clearly understood that the defendant by using the title “OR…” he is acting in bad faith aiming at making use of the fame of the said trademark after use of long years and the customer potential of the plaintiff.  Besides, since a shareholder of the defendant’s company is now a shareholder of the plaintiff’s company, it cannot be assumed that the defendant is not aware of the trademark.   

In conclusion, contrary to the rule of the court, supreme court rules that the company title be removed on the basis of trademark infringement.