Jurisdiction: Turkey
Subject Heading: Famous and Well-known Marks, Bad Faith, Prior Use
Case Name and Citation:

JELLY BELLY CANDY COMPANY vs. TURKISH PATENT INSTITUTE and ARAN CANDY LIMITED Case No. 2010/162; Decision No. 2011/288 (1st Ankara Court of Intellectual and Industrial Rights, December 06, 2011)





Marks Associated with Goods/Services:

Defendant's trademark application GOURMET BEANS no. 2008/50328 covering mainly confectioneries in class 30 and plaintiff’s indication THE ORÝGÝNAL GOURMET JELLY BEANS is used for identical goods.

Nature of Case:

Court action instituted for the withdrawal of TURKISH PATENT INSTITUTE final administrative decision based on opposition filed by the plaintiff on the grounds of risk of confusion with their famous trademark, unfair competition and bad faith.

Overview of Decision and Ruling:

*The plaintiff asserted that; there is risk of confusion due to the similarity between the trademark GOURMET BEANS and THE ORIGINAL GOURMET JELLY BEANS and that they acquired the right to the trademark through use before the date of application of the trademark GOURMET BEANS and that their trademark is well-known within the meaning of the Paris Convention and that lastly the defendant has filed the application in bad faith and that for this reason the last administrative decision of the T.P.I. was groundless and requested the definitive rejection of the trademark GOURMET BEANS from registration.

*The defendant TURKISH PATENT INSTIUTE asserted that the last administrative decision was in conformity with the law and practice and requested from the Court to reject the action.

*The defendant ARAN CANDY LIMITED asserted that; the plaintiff did not use the indication ORIGINAL GOURMET JELLY BEANS in Turkey and therefore can not claim that it has acquired the right to the trademark through prior use and that it could not properly evidence that the indication THE ORIGINAL GOURMET JELLY BEANS is a well-known trademark and that the defendant can not be considered as acting in bad faith as the plaintiff was aware of the use of trademark GOURMET BEANS in many jurisdictions for several years and that the aim of defendant is not preventing the use and registration of the plaintiff’s trademark in Turkey since they did not oppose it during the opposition period as they are of the opinion that the trademark can not be considered as confusingly similar.

*In the light of the evidences submitted by the parties and of the experts report, The Court has determined that:

- The plaintiff does not have any prior right in the meaning of article 8/3 of the Decree Law no. 556 on the protection of trademarks due to lack of use of the plaintiff’s alleged trademark before 02.05.2008 in Turkey i.e. date of the application of GOURMET BEANS trademark.

- The plaintiff’s indication can not be deemed as a well-known trademark in the sense of article 7/1(i) of the Decree Law no. 556 which refers to the Article 6 bis of the Paris Convention due to insufficient evidence substantiating this fact.

- although the experts report duly mentioned that the bad faith should be assessed by the court, the motivated decision stated that the defendant could not give a proper explanation as to why they choose to use and register the trademark GOURMET BEANS and that the reason for selecting such indication may be to prevent the plaintiff to enter to the Turkish market with its well-known trademark or to benefit from its reputation if the plaintiff was to initiate the commercialization and promote its well-known trademark in Turkey in the future.

The Court has ruled to the acceptance of the court action and rejection of the trademark GOURMET BEANS to registration.

Importance of Case:

Although it is clearly determined that the plaintiff’s trademark is unknown to the local consumer for lack of use in the country and is not deemed as a well known trademark for insufficient evidence, the court action has been nevertheless accepted on ground that the trademark application has been filed in bad faith as the explanation for choosing such trademark was not found convincing.

Contributing Firm: Deris Attorneys At Law Partnership