Turkey: LUXOTICA Case Summmary - 2012

Last Updated: 16 June 2016
Practice Guide by Deris IP Attorneys


Jurisdiction: Turkey
Subject Heading: I.D.1. Similarity of Marks
Case Name and Citation:

TUFAN TÜZEY vs TURKISH PATENT INSTITUTE and LUXOTTICA GROUP S.P.A., Case No. 2011/28; Decision No.2012/14 (4th Ankara Court of Intellectual and Industrial Rights, February 14, 2012)

Plaintiff: TUFAN TÜZEY


Marks Associated with Goods/Services:

The plaintiff’s “ ” trademark application no.2009/43712 covering goods in classes 18 and 25.

Nature of Case:

Court action instituted for cancellation of the partial refusal decision of the Turkish Patent Institute regarding the trademark application upon acceptance of defendant’s (LUXOTTICA GROUP S.P.A.) opposition due the similarity with the plaintiff’s trademark no. 88/102828 in class 09, on the basis of likelihood of confusion.

Prior Decisions:

Upon defendant’s opposition, Turkish Patent Institute has refused the plaintiff’s trademark application in respect of classes 18 and 25.

Overview of Decision and Ruling:

The plaintiff has asserted that:

  • the defendant company, who opposed the subject trademark application, is an eyewear company, whereas the client is engaged in the textile sector,
  • the goods covered by the trademarks are different,
  • the cited trademark includes a device component such as an emblem,
  • the defendant company is not well-known in the eyewear sector such as the well-known trademarks Rayban, Bulgari and Versace, and the defendant company is not known to everybody even in the optical sector,
  • the trademark of the defendant has not been renewed in due time and therefore it has become invalid,

and therefore requested cancellation of the TPI’s refusal decision issued regarding the trademark application in question.

The TPI as the Defendant has stated that the subject court action is not justified and the TPI’s decision is in accordance with the laws and therefore has requested that the subject court action should be rejected.

The other defendant LUXOTTICA GROUP SPA asserted that:

  • the client company was established in 1961 and has stores/sales points worldwide,
  • the trademark applied for registration is indistinguishably similar with the defendant’s trademark
  • the subject trademarks are visually almost identical,
  • the device element of the defendant’s cited trademark is the secondary/complementary element thereof and there is no difference to avoid the risk of confusion between the trademarks,
  • the “spectacles” in Class 9 covered by the client’s trademark and the goods including “leather bag, key holder, umbrella, parasols…” in Class 18 covered by the subject trademark registration are related goods in respect of the clothing sector,
  • since the subject trademarks are almost identical, using both trademarks on similar goods will cause likelihood of confusion,
  • furthermore, the trademark of the client should be considered as highly well-known trademark,
  • the plaintiff acts in bad faith by intending to obtain registration for a worldwide registered trademark,
  • and requested that the subject court action be rejected.

In the reasoned decision issued by the court:

  • As stated in the expert’s report, it has been considered that “leather goods” in the sub-class 18.02 covered by the trademark applied for and the “spectacle cases” covered by the trademark of the defendant company are of the same kind since they can be both made of leather and the spectacles can be preserved in leather cases and carried in leather bags during travelling etc., and that the other goods differ from each other in terms of the nature of the goods, the place of use and sales, the time of use, the physical appearances and for not being used as an alternative of one another.
  • In visual comparison of the goods of the parties, it is stated that the trademark “” by the plaintiff is a word mark and the defendant company’s registered trademark is a combination of word and device elements, which shows that the trademarks of the parties are very similar in terms of verbal elements and pronunciation,
  • It is further stated that the subject words do not have a direct meaning in Turkish language however both words refer to the word “luxury”; the denomination “luxury” is descriptive for showing a value adding characteristic to goods, therefore the distinguishing power of the denomination as the subject of both trademarks is rather weak thus there exists a likelihood of confusion in terms of covering related goods however such a likelihood does not exist in terms of goods being capable of associated indirectly.
  • On the other hand, it is not possible to accept that the trademark of the defendant company is well-known, whereas covering many worldwide known trademarks under the same roof does not affect the reputation of a certain trademark, the reputation in other countries cannot be deemed to extend also in Turkey, the evidences submitted before the court are not sufficient for evidencing the reputation of the defendant’s trademark in Turkey and the level of distinctiveness provided by the wording “luxury” by reference is rather low.
  • Furthermore, it has been determined that no sufficient/valuable evidences have been submitted for supporting the claim that the plaintiff acts in bad faith.

In consideration of the explanations and evidences submitted to the file and the expert’s reports, the court has decided to partially accept the case by cancelling the TPI’s decision issued in respect of goods in Class 18. (18.01, 18. 03 and 18.04) and Class 25. (25.01, 25.02 and 25.03) and to reject the case in terms of other goods, in respect of which the TPI’s decision of refusal is upheld.

Importance of Case:

Despite the almost identical similarity between the trademarks, the Court has not accepted the likelihood of confusion claims of the defendants due to the difference between the covered goods.

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
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.
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.