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

E.I DUPONT DE NEMOURS AND COMPANY vs SAFA TARIM A.Ş. Case No. 2007/238; Decision No.2011/130 (3rd Istanbul Court of Intellectual and Industrial Rights, May 25,2011)





Marks Associated with Goods/Services:

Plaintiff's registered trademark GRANSTAR no.90479 covering class 05 and defendant’s trademark registration “GRANLAND” no: 2004 00353 covering class 05

Nature of Case:

Court action instituted for cancellation of defendant’s trademark registration no. 2004 00353 on the basis of its similarity and risk of confusion with plaintiff’s trademark and stopping and preventing the use of the trademark with the similar packages causing confusion among the consumer with plaintiff’s goods and constituting unfair competition.

Overview of Decision and Ruling:

*The plaintiff claiming that:
- they are the right owner of the registered trademark GRANSTAR trademark in Turkey which contains an active substance already protected by patent right in its name;
- defendant’s registration GRANLAND is confusingly similar with its registered trademark and also used with a confusingly similar package,
- target consumer of both trademarks are peasants,
and therefore due to the high risk of confusion between the trademarks and the packaging of the goods causing unfair competition requested from the Court to order the cancellation of defendant’s registrations and stopping the use of this trademark and of the packaging by the defendant.

*The defendant asserted that although the trademark GRANSTAR is registered in the name of the plaintiff, the product sold under GRANSTAR trademark is licensed in the name of DUPONT PRODUCT S.A in Turkey and there was no opposition filed to the application GRANLAND and asked for the rejection of the action.

In the expert’s report submitted to the Court, it has been stated that:
- the common part of the subject trademarks is GRAN denomination,
- the additional elements STAR and LAND have no visual and/or phonetically similarity and therefore the trademarks are dissimilar when considered in their entirety,
- there is no similarity between the trademarks in the meaning of Article 7 and/or 8 of the Turkish Decree Law no:556 on the protection of trademarks,
- the packages are confusingly similar and since the first using subject package is the plaintiff, defendant’s use would cause unfair competition.
*In the light of the evidences submitted by the parties and the expert’s report The Court has determined that:
- the trademarks initiating with the same GRAN denomination are not confusingly similar as a whole thanks to the additional STAR and LAND denominations but,
- the use of similar packages for the similar goods would cause an unfair competition between the parties in the frame of the Article 54 of the Turkish Code of Commerce,

and therefore the Court has decided:
- that the decision be published in a newspaper having nationwide coverage,
- that the action for the cancellation of the defendant’s trademark registration no:2004 00353 be rejected,
- that the action unfair competition be favourably received in that the use by the defendant of packaging be stopped and prevented.

Importance of Case:

Although the trademarks are not confusingly similar, the Court has decided to stop and prevent the use of the defendant’s packages causing unfair competition.

Contributing Firm: Deris Attorneys At Law Partnership