Turkey: KLEENEX Case Summary - 2012

Last Updated: 15 June 2016
Practice Guide by Deris IP Attorneys

KLEENEX CASE SUMMARY

Jurisdiction: Turkey
Subject Heading: I.F. Famous and Well-known Marks
Case Name and Citation:

Kimberly Clark Worldwide Inc. vs Turkish Patent Institute; Case No. 2011/308; Decision No.2012/66 (1st Ankara Court of Intellectual and Industrial Rights, April 21, 2009 ) and Case no.2009/12693, Decision no.2011/14407 (11th Chamber of Supreme Court, October 25, 2011 notified beginning 2012)

Plaintiff: Kimberly Clark Worldwide Inc.
Defendant: Turkish Patent Institute
Marks Associated with Goods/Services:

Plaintiff's trademark registration no.143197 KLEENEX in classes 16 and 24

Nature of Case:

Court action instituted for withdrawal of TPI’s Higher Council’s decision no.2007-M-5979 rejecting the application for the acknowledgement of well-known status of KLEENEX.

Overview of Decision and Ruling:

*The plaintiff filed an application before the Turkish Patent Institute for the acknowledgement of well-known status of KLEENEX trademark. The Turkish Patent Institute rejected the well-known trademark application with its decision no.2007-M-5979 on grounds that KLEENEX trademark is not used in Turkey, that since most of the Turkish consumers do not see and purchase KLEENEX branded products in the market, they can not have any awareness with respect this trademark.

-The plaintiff asserted that they are operating in the related business area as from 1872, that they own various well-known trademarks such as KLEENEX, KOTEX, HUGGIES and SCOTT, that KLEENEX:
* was created in 1924 and being used in Turkey in 1971,
*was determined as the first brand in the field of “image intensity” and “reputability” in USA, West Europe, Japan, Soviet Union and Hong as a result of the investigation conducted by Landor Associates
*was ranked among 100 brands that changed the USA by Brand Marketing
*was also shown among the most valuable brands in many reports prepared by A.C. Nielsen, Interbrand and Business Week.

and that the defendant has referred to the well-known status of KLEENEX trademark in its decision with regard to the opposition filed against the trademark application no.98/7159 “CLEANEX ULUSLARARASI TEMIZLIK VE BAKIM SISTEMLERI VE SERVISLERI VE FUARI” in class 35.

-The defendant asserted that; there is not any court decision referring to the well-known status of KLEENEX trademark, that the sales figures and the other documents submitted to the file are not sufficient for acknowledging the well-known status of KLEENEX trademark, that as a result of the examination of the file, it has been decided that KLEENEX trademark was not associated with the goods. Therefore and since KLEENEX trademark was not used in Turkey, it was decided the rejection of well-known trademark application.

-The Court appointed a panel of experts for the evaluation of parties claims and assertions. The experts stated in their report that:

* the notoriety in Turkey shall be taken into consideration during the evaluation of well-known trademark application
* upon the evaluation of the file it has been understood that, KLEENEX is a well-known trademark in many countries abroad but in the mean time the denomination has become generic.
* the documents and the information submitted to the file are not sufficient to evidence the well-known character and use of KLEENEX trademark in Turkey.

-In the light of the evidences submitted by the parties and the experts’ report, the Court decided that there is not any document evidencing the local use of KLEENEX in Turkey and its awareness before Turkish consumers.

The Court ruled to the rejection to the action with its decision dated April 21, 2009.

-The plaintiff appealed before the Supreme Court requesting the withdrawal of the decision of the 1st Ankara Court of Intellectual and Industrial Rights.

-The Supreme Court issued a decision with the case no.2009/12693 and the decision no.2011/14407 by accepting the appeal of plaintiff on grounds that:
*The well-known trademark is not defined both in the Paris Convention and the Decree Law no.556 as the Paris Convention priorities that everybody does not need to effectively know the mark, but that the mark may be known.
*Furthermore the well-known character of a trademark does not depend on its use, registration or awareness in Turkey in that what is important is that the mark may be identified in Turkey.
*In the present case although KLEENEX branded products were not sold in Turkey, it should be accepted that KLEENEX was known by the sector importing and exporting the cleaning products.

-The Supreme Court has decided the withdrawal of the decision of the 1st Ankara Court of Intellectual and Industrial Rights.

-Upon which the file was forwarded to the 1st Ankara Court of Intellectual and Industrial Rights where the Court overturned from its initial decision and issued a new decision inline with the Supreme Court decision by accepting the well-known status of KLEENEX trademark.

-The defendant appealed further before the Supreme Court requesting the reconsideration of the decision. The appeal is still pending.

Importance of Case:

The decision is important due to the acknowledgment of well-known status of a trademark even if it is not used in Turkey and also shows the difference of approach between the practice of the Supreme Court and the First Instance Court.

Contributing Firm: Deris Attorneys At Law Partnership
This document is not intended to create an attorney-client relationship. You should not act or rely on any information in this document without first seeking legal advice. This material is intended for general information purposes only and does not constitute legal advice. If you have any specific questions on any legal matter, you should consult a professional legal services provider.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Contact the Author?
Click here to email the Author
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Other Turkey Advice Centres
Competition and Antitrust
Tax
Privacy and Data Protection
More Advice Centers
Useful Resources
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
Translation by Deris Patents & Trademarks Agency Limited
The national Turkey group for the International Association for the Protection of Intellectual Property.
Upcoming Events
This site provides access to information about meetings held at WIPO and related documents comprising a detailed meeting calendar and a powerful document search facility.
A calendar of past and future events held by the Turkish Patent Institute.
Information about events and classroom training, online training, the European qualifying examination, and other materials.
From the Annual Meeting to local forums, roundtables and digital learning, INTA's Programs and Events help you stay up to date on issues that affect your brands.
Tools
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions