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

TOYOTA JIDOSHA KABUSHIKI KAISHA (TOYOTA MOTOR CORPORATION) vs HAYAT KIMYA SANAYII A.S, Case No. 2007/14; Decision No.2009/23 (Beyoglu Court of Intellectual and Industrial Rights)





Marks Associated with Goods/Services:

Plaintiff's well-known trademark “LEXUS” covering classes 07, 12 and defendant’s trademark registration no.2002/31430 “LEXUS” covering classes 03, 05 and 16.

Nature of Case:

Court action instituted for the cancellation of the defendant’s trademark registration no.2002/31430 “LEXUS” on grounds that the defendant unfairly benefits from the reputation of the world wide known LEXUS trademark, harms the distinguishing character thereof and the trademark is registered in bad faith.

Overview of Decision and Ruling:

*The plaintiff asserted that they are one of the largest automotive companies in the world and their LEXUS branded automobiles are categorized and produced as “luxurious” automobiles distributed in more than 170 countries around the world, that their LEXUS trademark has been first registered in Turkey on 1989 under reg. no. 114602 “LEXUS” covering goods in class 12 and following this registration the reg. nos. 2000/01946, 2000/0194 “LEXUS LS400” and “LEXUS LS430” trademarks covering goods in classes 07, 12 and reg. no. 2003/18232, 2004/40445, 2005/06538 “LEXUS RX400H”, “LEXUS RX350” and “LEXUS LS600H” trademarks covering the goods in class 12 have been registered; the LEXUS trademark is well-known in the sense of Article 6 bis of the Paris Convention and that it is not possible to consider that the defendant is unaware of this trademark and the reputation thereof. The defendant’s identical registration LEXUS covering classes 03, 05, 16 has been filed with bad faith therefore shall not be protected.

Based on these assertions, the plaintiff requested from the Court to order the cancellation of the defendant’s registration no. 2002/31430 “LEXUS” and to prevent the assignment thereof to third parties until the finalization of the court proceedings.

*The defendant asserted that the court action has been filed after the statutory period has lapsed, that the plaintiff’s trademark is not well-known as the criteria of Article 6 bis of the Paris Convention have not been met, the plaintiff’s trademark is not registered in Turkey, that the LEXUS trademark is not known by everybody in Turkey as an automobile brand and requested from the Court to reject the action.

*In the light of the evidences submitted by the parties, the Court has determined that:

- The plaintiff’s trademark LEXUS is well-known and the court action may be filed without being subject to the statutory time period in that the plaintiff may request the cancellation of the cited LEXUS trademark at any time as the trademark owner;

- Since the plaintiff’s LEXUS trademark has been first registered on 1989 before the Turkish Patent Institute whereas the defendant’s LEXUS trademark has been registered on 2002 and the “LEXUS” does not have any meaning in Turkish and the defendant could not bring any concrete evidence that the LEXUS trademark has been created by their side, it is not possible to retain that the defendant is unaware of the plaintiff’s well-known trademark. Thereby the court rules that defendant obtains the LEXUS registration with bad-faith;

-The defendant will lead to taking unfair advantage of the reputation and distinctiveness of plaintiff’s trademark considering the classes for which the trademark of the defendant is registered (03/05/16), it is undisputable that the likelihood of confusion exists in terms of the cosmetic products and odor repellents under the scope of the LEXUS trademark. It has also been granted that the use of the worldwide notorious automobile brands on perfumery and other cosmetic products, soaps, deodorants, odor repellents used in cars, writing and education products have become an ordinary practice of commercial life.

-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).

With the given reasons the Court has ruled to accept the court action by ordering the cancellation of defendant’s trademark registration no.2002/31430 LEXUS and the prevention of the assignment thereof to third parties until this decision is finalized.

Importance of Case:

Defendant’s trademark identical to plaintiff’s worldwide well-known trademark was cancelled even in respect of different classes and despite the fact that plaintiff’s trademark was not accepted as well-known before the date of court’s evaluation.

Contributing Firm: Deris Attorneys At Law Partnership