IAR CASE SUMMARY TEMPLATE
|Subject Heading:||I.D.1. Similarity of Marks|
|Case Name and Citation:||
ROTHMANS OF PALL MALL LIMITED vs. MELFINSO S.A., Case no. 2009/35, Decision no.2011/63 (Beyoglu Court of Intellectual and Industrial Rights, March 31, 2011)
|Plaintiff:||ROTHMAN OF PALL MALL LIMITED|
|Marks Associated with Goods/Services:||
The Plaintiff’s trademark “ROTHMAN” registered in class 34. The defendant’s trademark “PORTMAN” registered in class 34.
|Nature of Case:||
The Plaintiff claims the invalidity of the Defendant’s registered trademark which is almost identical with its well-known trademark in Turkey and its trade name according to the articles 8/1 (b)1, 8/42 of the Decree–Law No: 556.
|Overview of Decision and Ruling:||
The plaintiff claims that its Company is one of the world leaders in the sector and its registered trademark “ROTHMAN”, which is the essential part of its Trade Name, filed before the Turkish Patent Institute is a well-known trademark in Turkey due to intense advertisement and promotion activities and the Defendant’s trademark “PORTMAN” registered with bad faith in class 34 benefits from the reputation of the Plaintiff’s trademark which is almost identical as visual and phonetic terms.
The defendants asserted that, the “PORTMAN” trademark first manufactured and registered in Bulgaria, that the trademark has been registered in 22 countries including Turkey in respect of Madrid Protocol and although plaintiff requested the cancellation of the registered trademark “PORTMAN” before the Bulgaria Patent Institute, the request was rejected and the decision has finalized and that there is no indication regarding that the plaintiff’s trademark is a well-known trademark in Turkey.
The Court decision states that, in light of the submitted declarations and evidences it is understood that; the Plaintiff’s trademark is a well-known trademark regarding well-known trademarks, application of the Court of Appeal3 will benefit from protection in the scope of the Decree Law number 556. Also stated that the Plaintiff’s trademark “PORTMAN” can be considered as confusingly similar to the Defendant’s trademark and therefore violate Article 7/1-b of 556 Decree Law.
Thus, the Plaintiff qualified to enjoy the right provided under Article 8/4 which refers to well know trademark and the Defendant could not use “ROTHMAN” trademark, which is almost identical with the Plaintiff’s trademark.
The Court has ruled to the cancellation of defendant's trademark No 2002/26260 “PORTMAN DEVICE” that infringes the well-known Trademark of the Plaintiff and deletion of the related records from the trademark registry and prevention of the use of these trademarks after the finalization of the cancellation and to charging the defendant to pay all the expenses for the litigation costs.
|Importance of Case:||
This decision is important because it establishes that the regulation provides protection to well-known trademarks against the use of identical or similar marks and in identical goods.
|Contributing Firm:||Deris Patents and Trademarks Agency|
1 Article 8: Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions:
b) Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing.
2 A trademark applied for which is identical or similar to a registered trademark or to a trademark application with a prior date of filing may be used for different goods and services. However, where in the case of a registered trademark or of a trademark application with a prior date of filing, the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark application with a prior date of filing, upon opposition by the proprietor of the prior trademark registration or application, the trademark applied for shall be refused even if it is to be used in respect of differing goods and services.
3 The decision of the 11.Chamber of the Court of Appeal dated 19.04.2002, Docket No: 2001/9903 – Decision No: 2002/3699