Turkey: ADVANTAGE Case Summary - 2012

Last Updated: 21 June 2016
Practice Guide by Deris IP Attorneys

ADVANTAGE CASE SUMMARY

Jurisdiction: Turkey
Subject Heading: Similarity of Marks, Bad Faith, Well-known Trademark
Case Name and Citation:

HSBC BANK A.Ş. vs THE TURKISH PATENT INSTITUTE & ALCATEL LUCENT FR, Case No. 2010/44; Decision No.2011/233 (1st Ankara Court of Intellectual and Industrial Rights, December 13, 2011)

Plaintiff:

HSBC BANK A.Ş.

Defendant:

1- THE TURKISH PATENT INSTITUTE
2- ALCATEL LUCENT FR

Marks Associated with Goods/Services:

The trademarks of the plaintiff are “ADVANTAGE MALL DEVICE”, “ADVANTAGE”, “ADVANTAGE DEVICE”, “A ADVANTAGE”, “A ADVANTAGE MALL”, “ADVANTAGE YATIRIM DEVICE”, “ADVANTAGE TATİL DEVICE”, “ADVANTAGE ROUGE, “ADVANTAGE NAKİTPUAN”, “ADVANTAGE HESABI A DEVICE”, ADVANTAGE CAMPUS DEVICE”, “ADVANTAGE BLACK “, “ADVANTAGE BANKACILIK PAKETİ”, “ADVANTAGE AKILLI LİMİT,” ADVANTAGE TATİLPUAN”, “ADVANTAGE MİLPUAN”, “AVANTAJLI HESABIM” and are registered in all classes and all contain the word “ADVANTAGE”.

The defendant has applied under no: 2008/6497 for the registration of the trademark “TRANSFORMATION ADVANTAGE” in respect of the goods and services in classes of 09, 16, 38, 41 and 42.

Nature of Case:

Court action instituted for the withdrawal of TURKISH PATENT INSTITUTE final administrative decision which was ruled that “TRANSFORMATION ADVANTAGE” application of the defendant and the abovementioned well-known trademarks of the plaintiff are not similar to each other in their overall visual and phonetic aspects.

Prior Decisions:

The Plaintiff has filed an opposition against the TRANSFORMATION ADVANTAGE application on the basis of his prior well known ADVANTAGE indication bearing trademarks. However this opposition has been refused by the TPI on the basis that there is no likelihood of confusion between the trademarks. Following the refusal decision the Higher Council of the Turkish Patent Institute has again rejected the objection of the plaintiff and upheld that the trademarks in question are not confusingly similar and that the application of the trademark TRANSFORMATION ADVANTAGE should prosecute to registration.

Overview of Decision and Ruling:

In its petition the plaintiff asserted the following points:
- the subject ADVANTAGE INFORMATION trademark is confusingly similar to his prior well-known “ADVANTAGE MALL DEVICE”, “ADVANTAGE”, “ADVANTAGE DEVICE”, “A ADVANTAGE”, “A ADVANTAGE MALL”, “ADVANTAGE YATIRIM DEVICE”, “ADVANTAGE TATİL DEVICE”, “ADVANTAGE ROUGE, “ADVANTAGE NAKİTPUAN”, “ADVANTAGE HESABI A DEVICE”, ADVANTAGE CAMPUS DEVICE”, “ADVANTAGE BLACK “, “ADVANTAGE BANKACILIK PAKETİ”, “ADVANTAGE AKILLI LİMİT,” ADVANTAGE TATİLPUAN”, “ADVANTAGE MİLPUAN”, “AVANTAJLI HESABIM” trademarks which all contain the word ADVANTAGE as a characterizing element and cover all classes
- his above-mentioned trademarks are well known trademarks
- the defendant has acted in bad faith with the aim of taking unfair advantage from the reputation of his prior trademarks
- the registration of the TRANSFORMATION ADVANTAGE application would cause unfair competition and requested the cancellation of the Higher council decision which ruled that the trademarks in question are not confusingly similar,
therefore the TRANSFORMATION ADVANTAGE may mature into registration.

First Defendant the Turkish Patent Institute requested the rejection of the action by asserting that the trademarks in question are not similar; accordingly would not be a subject to a confusion before the consumers.

Second defendant asserted that the refusal decision of the Higher Council is justified, motivating the following points:
- there is no likelihood of confusion between the trademarks since the trademarks differentiate from each other in their overall phonetic and visual effects as well as the good and services covered by the trademarks are different
- the consumers whom the services are directed by his trademark are professionals
- the assertions that the registration of his trademark would cause unfair competition as well as it would cause a damage to the reputation of the plaintiffs’ trademarks are not grounded.

In the light of the evidences submitted by the parties and of the experts report which are in plaintiff’s favor, The Court has determined that:

- the application of the defendant covers the goods and services in the classes 09, 16, 38, 41 and 42. As for the plaintiff, the “ADVANTAGE MALL DEVICE” trademark is registered in all the classes from 1 to 45 for the purpose of protection and the other trademarks are registered in several classes covering classes 09, 16, 36, 38,41 and 42, in particular are directed to “Banking and Finance services” in class 36.

- the defendant’s trademark TRANSFORMATION ADVANTAGE is characterized in its entirety and not word by word, whereas the dominant element of the plaintiff’s trademarks is ADVANTAGE and they vary by the addition of complementary elements such as “mall”, hesabi”, “yatirim”, “milpuan”, “akilli limit”, “nakit puan”, Tatil Puan”, “tatil”, “hesabim” which all refer to services in the field of banking and finance where the plaintiff’s trademarks are used. Accordingly the ADVANTAGE indication has inherently a low degree of distinctiveness. In this respect the trademarks have a low degree of similarity in their overall aspects.

- the trademarks of the plaintiff are known for “Banking and Finance Services, in particular for credit cards services” but not for all the goods and services in classes from 1 to 45; however the stated “Banking and Finance, in particular credit cards services” services are not covered by the TRANSFORMATION ADVANTAGE trademark in class 36. To that end, the trademarks of the plaintiff has no high distinctiveness except the abovementioned services for which they are known. Furthermore the trademark of the plaintiff is known in the sector as ADVANTAGE +A LOGO but not as solely ADVANTAGE.

- potential consumers of the classes 09, 38, 41 and 42 do pay high attention in choosing products and services, accordingly the trademark does not lead to confusion on the part of consumers and there is no likelihood of confusion in respect of class 16 as well; there is no likelihood of association and it would not be deemed by the consumer that there is economic relationship between the holders of the trademarks.

- the goods and services covered by the application TRANSFORMATION ADVANTAGE is not in connection with “Banking and Finance, in particular credit cards services” services for which the plaintiff’s trademarks are known, accordingly there is no likelihood of association between the trademarks. Furthermore, by registration of TRANSFORMATION ADVANTAGE trademark, the defendant would not benefit from the known trademarks of the plaintiff and would not cause a damage to their distinctiveness and the reputation.

Importance of Case:

This decision is very important because with it, the court emphasized that in the evaluation of similarity; if one of the grounds is notoriety of prior trademarks, even though prior well known trademarks are registered in all classes from 1 to 45, the focus should be on the goods and services which the prior trademark is well-known for, not all the goods and services the same is registered for only purpose of protection. In view of this point, in the present case, due to the fact that there is a low degree of similarity between the trademarks in question, and there is not sufficient similarity between the specifications of the trademarks since the goods and services for which the plaintiff’s trademark is known for, do not overlap with the goods and services of the trademark of the defendant, it has been ruled that the trademarks are not confusingly similar with each other. Consequently, as much as the similarity of the signs, the similarity of goods and services are important for assessing confusing similarity since these two conditions for confusing similarity should be dependent as well as in balance with each other.

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.

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