Jurisdiction: Turkey
Subject Heading: Infringement of Trademark Rights, Unfair Competition, Request for Compensation
Case Name and Citation:

BULGARI S.p.A. and vs. Musa Vergili and Ver-De Kuyumculuk Sanayi ve Ticaret Ltd. Şti., Case No. 2011/151; Decision No. 2012/42 (4th Istanbul Court of Intellectual and Industrial Rights, March 22, 2012)

Plaintiff: BULGARI S.p.A.
Defendant(s): 1- Mr. Musa Vergili
2- VER-DE KUYUMCULUK Sanayi ve Ticaret Ltd. Şti.
Marks Associated with Goods/Services:

Plaintiff's trademark reg. BVLGARI no. 92205 covering goods in classes 3,9,14,16,18,25 and 34.

Nature of Case:

Court action instituted for the stopping of infringement of trademark rights, the prevention of unfair competition as well as determination of material, moral damages as well as damages for harming the reputation.

Overview of Decision and Ruling:

*The plaintiff claimed that he is the owner of the Turkish Trademark BVLGARI no. 92205 covering goods in classes 3,9,14,16,18,25 and 34, the trademark is also included in his company title, that the trademark is well known and that the defendant is infringing his trademark rights by manufacturing and selling counterfeit jewelry products. Such counterfeit jewelry products have been confiscated at the premises of the defendant and a penal court action is pending against the defendant company.

*The plaintiff has instituted a court action against Verde Kuyumculuk and Mr. Musa Vergili asking for both the destruction of the seized products as well as molds, the stopping of any infringement and compensation for the loss of income, as well as a preliminary injunction against the release of the seized products.

*The defendant Mr. Musa Vergili asked for the rejection of the court action as his act of manufacturing and sale of the products has not materialized since the products were not put on the market either in wholesale or retail, claiming that the defendant’s damage claims are very high and the act of counterfeiting goods has not been retained for penalty within the penal court action instituted separately.

*The court action was originally instituted before the Beyoğlu Court and after the closure of this court, has been transferred to the 4th Istanbul Court.

*In light of the evidence submitted by the parties both within the scope of this action as well as the penal action instituted before the 1st Penal Court of First Instance and of the experts report dated March 14, 2011, which are mostly in plaintiff’s favor, The Court has determined that:

  • The plaintiff is the owner of a registered trademark covering goods including “jewelry”, that defendant’s unauthorized use of the plaintiff’s trademark on jewelry goods constitutes infringement of trademark rights and unfair competition in the meaning of Articles 9, 61 and 62 of Decree Law No. 556.
  • the experts report shall be accepted and that the material damages caused by the unfair use of plaintiff’s trademark by the defendant has been calculated on basis of license fee and the amount of hypothetical license fee amounts to 115.500.- TL,
  • the defendant has used the well known trademark on low quality counterfeit jewelry goods, thereby has infringed the trademark rights of the plaintiff and in accordance with Article 62 of Decree Law No. 556, and considering the economic and social conditions as well as content of business activities of the defendants, the plaintiff has the right to claim moral damages in amount of 2000.- TL.
  • the experts report has determined that the defendant’s use of the well known trademark is on low quality goods and according to Article 68 of Decree Law No. 556 shall constitute a ground for determination of 2.500.- TL damages occurred for harming the reputation of the plaintiff’s trademark.
  • the 114 ring molds and 102 rubber molds used for the manufacturing of counterfeit jewelry products are only produced and used to print the BVLGARI trademark on the products, therefore in accordance with Article 62/1-e of Decree Law No. 556, the court shall decide on the seizure and destruction of these molds.
  • that the allegations of Mr. Musa Vergili against the claims shall be refused, since despite the fact that he has been acquitted from smuggling during the penal court action regarding BULGARI counterfeit jewelry products confiscated in his premises, the penal court action has no effect on this present court action regarding the stopping of infringement and prevention of unfair competition of plaintiff’s trademark rights and as he is the actor of the actual infringement, claims against him shall be upheld.

The Court has ruled to:

  • the acceptance of the action including claims regarding the requested amounts for material and moral damages,
  • the determination that defendants' use on the denomination BVLGARI constitutes infringement of Bulgari's BVLGARI trademark as well as unfair competition as a means of obtaining unfair advantage from the reputation of this trademark.
  • stopping and prevention of repetition of this trademark infringement and unfair competition
  • stopping the use, sales, manufacturing, distribution of the BVLGARI branded products and the tools (molds) used for producing the counterfeit products subject to this action
  • seizure of these products and molds and destruction of molds after finalization of this decision, deletion of the marks on the products
  • payment of compensation for material damages (100.000-TRY) + moral damages (2.000.-TL-) + damages for harming the reputation (2,500.-TL-) together with their rediscounted interests as of the institution of the action until the decision day by the defendants jointly.
  • publication of the decision in one of the most three well-known newspapers in Turkey after its finalization.
Importance of Case:

The decision is important in three aspects:

  • First, the decision has ordered a relatively high compensation amount when compared with the general practice in the trademark infringement actions.
  • Secondly, the decision ordered moral damages together with damages for harming the reputation, which is a landmark decision since until this decision the Courts did not order for both moral damages and damages for harming the reputation.
  • Third, despite the decision of the penal court absolving the accused; the specialized court has decided that in the civil action that the defendants’ acts constitute infringement of trademark rights and decided on compensation of damages. This shows that the courts have ordered decisions on the same subject matter without affecting each other.
Images/Description: BVLGARI
Contributing Firm: Deris Attorneys At Law Partnership