The Turkish Patent Institute (TPI) has rejected a
trademark application filed by a local company based on the
opponent's genuine rights in the trademark arising from
extensive earlier use of the mark in other countries.
In the opposition proceedings, HANORAH Italia Srl – the Italian pioneer
in the cosmetics industry – requested the refusal of a local
application for the trademark HANORAH in Classes 3, 25 and 35 of
the Nice Classification. The opposition was based
the opponent's genuine rights in
the mark HANORAH, which had been used extensively by the opponent
and had become known in foreign markets prior to the filing of the
opposed application; and
the bad faith of the applicant, as it
was unlikely that the applicant would have created a trademark
identical to that of the opponent and intended to use or register
it for identical and similar goods and services without being aware
of the opponent and its trademark.
The opponent had not used the trademark locally, had no earlier
local application/registration, and did not enjoy any reputation in
the Turkish market before the filing date of the contested
trademark application. Further, there was no evidence proving the
bad faith of the applicant.
In order to successfully base an opposition on genuine rights in
the original trademark, the opponent is expected to prove the
extensive prior use of the trademark in the Turkish market. In
addition, a bad-faith claim against the applicant for the opposed
trademark must be supported by concrete evidence. More importantly,
the opponent is required to prove the reputation of its trademark
with solid evidence in order to claim protection on the basis of
the well-known status of its mark under Article 6bis of
the Paris Convention.
The argument based on the
applicant's bad faith was not accepted by the TPI on the ground
that there was "no" evidence supporting such argument.
Nevertheless, the examiner believed that it was unlikely that the
applicant would have created such a unique trademark and intended
to use or register it for identical and similar goods and services
without being aware of the opponent and its trademark. Therefore,
the examiner accepted the opposition based on the genuine rights of
the opponent in the trademark HANORAH and the well-known status of
that trademark without applying the usual requirements for
upholding an opposition based on such arguments.
The TPI's decision in this case is particularly important
for Turkish trademark practice, as it reveals that the TPI will
relax the requirements with regard to genuine ownership and
well-known status when the examiner is convinced of the
applicant's bad faith, even though it is not proven by specific
Originally published by World Trademark Review,
September 18 2015.
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