Jurisdiction: Turkey
Subject Heading: I.F. Famous and Well-known Marks
Case Name and Citation:

CONVERSE INC. vs ARA SAAT ELEKTRONIK ITHALAT TIC. LTD. STI., Case No. 2007/102; Decision No.2009/191 (4th Istanbul Court of Intellectual and Industrial Rights, October 21, 2009)





Marks Associated with Goods/Services:

Plaintiff's well-known trademark no111005 “CONVERSE” covering goods in classes 18 and 25 and defendant’s trademark registration no.2005 09369 “CONVERSE” in classes 9 ,14 and 16.

Nature of Case:

Court action instituted for cancellation of defendant’s trademark registration no.2005 09369 “CONVERSE” on the basis of its similarity and risk of confusion with plaintiff’s well-known trademark and defendant’s bad faith.

Overview of Decision and Ruling:

*The plaintiff claimed that they are the right owner of the registered trademark CONVERSE in Turkey since 1979 which is a well-known trademark that defendant’s registration has been filed in bad faith and therefore shall not be protected and requested from the Court to order the cancellation of defendant’s registration no. 2005 09369 “CONVERSE” and stopping the use and advertisement of this trademark by the defendant.

*The defendant alleged that; plaintiff’s trademark is not well-known since it is not listed among the WIPO’s or TPI’s well-known trademarks list; the trademarks cover different goods in their specifications and requested from the Court to reject the action.

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

-the defendant’s trademark no.2005 09369 CONVERSE covers goods in classes 9, 14 and 16 whereas plaintiff’s prior trademark registration no.111005 covers goods in classes 18 and 25

-in the experts report it has been stated that; plaintiff’s trademark is well-known; use of this trademark by the defendant will lead to taking unfair advantage of the reputation and distinctiveness of plaintiff’s trademark; even in case of use of the subject trademark by the defendant on goods and services different than the ones for which plaintiff’s trademark is registered, there is the risk of harming the distinctive character and reputation of plaintiff’s trademark and destroying the main function of plaintiff’s trademark (showing the source of the product).

-being placed in the well-known trademarks list of the TPI is not mandatorily requested for acceptance the well-known status of a trademark and such lists are considered by the Courts as discretionary proofs; plaintiff’s trademark CONVERSE is well-known in Turkey (in accordance with Article 6 bis of the Paris Convention) as of the application date of defendant’s trademark as a result of plaintiff’s extensive advertisement and marketing activities and their local trademark registration with an old date, several legal actions instituted by the plaintiff in Turkey in 1995-1996 for prevention of the unfair competition occurred by use of CONVERSE branded products by third parties including compensation requests; the CONVERSE trademark is worldwide well-known since 1997; therefore defendant’s subject trademark is directly reminiscent of plaintiff’s clothing and footwear products even it is used on different products and there is risk of dilution of plaintiff’s trademark, taking unfair advantage of plaintiff’s trademark, harming its distinctive character as well as risk of confusion/association with the plaintiff company and their well-known trademark;

-on the other hand since use and advertisement of a registered trademark does not constitute a trademark infringement or unfair competition until it is cancelled, defendant’s use and advertisement on CONVERSE branded products cannot be prevented until the finalization of this decision.

The Court has ruled to the partial acceptance of the court action by cancellation of defendant’s trademark registration no.2005 09369 CONVERSE and by rejection of plaintiff’s request of prevention of defendant’s use and advertisement on this trademark which continues to be valid until the finalization of this decision.

Importance of Case:

Defendant’s trademark identical to plaintiff’s worldwide well-known trademark was rejected even in respect of different classes and despite the fact that plaintiff’s trademark was not listed among the well-known trademarks list of the TPI at the date of court’s evaluation.

Contributing Firm: Deris Attorneys At Law Partnership