In two recent invalidation actions before the Istanbul Civil IP
Courts of First Instance, two local trademark registrations for
OLIVER PEOPLES have been invalidated on the basis of the reputation
of the mark OLIVER PEOPLES in other jurisdictions, the
plaintiff's genuine rights in the trademark arising from
extensive prior use in other countries, and the bad faith of the
In the actions (filed in late 2013), plaintiff
Oliver Peoples Inc - part of the
Luxottica Group, the world leader in the design, production and
distribution of premium eyewear - requested the invalidation of two
local registrations for OLIVER PEOPLES in Classes 9 and 14 before
the Civil IP Courts of First Instance in Istanbul. The claims for
invalidation were based on:
the plaintiff's genuine
rights in the mark OLIVER PEOPLES, which had been used extensively
by the plaintiff and had become known in foreign markets prior to
the defendants' local registrations; and
the bad faith of the
defendants, as it was unlikely that they would have created such a
unique trademark and intended to use or register it for
"sunglasses" without being aware of the plaintiff and its
The plaintiff had not used the mark OLIVER PEOPLES locally and
had no registration or reputation for the mark in the Turkish
market before the filing dates of the contested trademark.
Moreover, there was no specific evidence proving the bad faith of
In order to successfully base an invalidation claim on genuine
rights in the same trademark, extensive prior use of the
plaintiff's trademark on the Turkish market is normally
required. Similarly, a bad-faith claim must be supported by
evidence proving the alleged facts. More importantly, the plaintiff
is expected 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
However, the IP courts concluded that:
the trademark OLIVER PEOPLES
was unique and had a strong distinctive character for eyewear, for
which it had been used and registered by the plaintiff in other
it was unlikely that the
defendants would have created the same trademark and applied to
register it for "eyewear and accessories" without being
aware of the plaintiff's trademark.
Accordingly, both courts recognised:
the plaintiff's prior rights in, and the well-known status
of, the trademark OLIVER PEOPLES, without requiring prior use or
reputation of the mark on the Turkish market; and
the bad faith of the defendants in filing applications to
register the trademark OLIVER PEOPLES without the authorisation of
the genuine owner.
The court thus ordered the invalidation of the local
Both cases are significant for Turkish trademark practice: they
reveal that, where there is an original and highly distinctive
trademark, the Turkish IP courts are willing to grant broad
protection to a foreign trademark against bad-faith registrations
without requiring local use/registration or specific evidence of
the counterparty's bad faith.
Originally published in World Trademark
Review, July 29 2015.
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