Jurisdiction: Turkey
Subject Heading: I.D.1. Similarity of Marks
Case Name and Citation:

BIRLESIK GIDA SANAYI VE TICARET LIMITED SIRKETI vs KRAFT FOODS SCHWEIZ HOLDING GMBH & the Turkish Patent Institute, Case No. 2009/143; Decision No.2011/281 (1st Ankara Court of Intellectual and Industrial Rights, December 13, 2011)




2- the Turkish Patent Institute (TPI)

Marks Associated with Goods/Services:

Plaintiff's trademark application no.2007/46603 “MORINEK (with a meaning of PURPLE COW in Turkish)” covering goods in class 29 and defendant’s trademark registrations no.2004 29870 “DEVICE ”, no.154590 “MILKA HAPPY COWS” and no.175529 “DEVICE ” registered in class 30.

Nature of Case:

Court action instituted for cancellation of the TPI’s decision of refusal of the trademark application no.2007/46603 upon acceptance of defendant’s (Kraft Foods) objection.

Prior Decisions:

Defendant’s (Kraft Foods) opposition filed against plaintiff’s application was accepted by the Trademark Department of the TPI and the subject application was rejected. Applicant’s objection filed against this refusal decision was rejected by the Higher Council of the TPI where the first decision was approved. Therefore the applicant has filed the subject court action for cancellation of the TPI’s decision as the final legal step.

Overview of Decision and Ruling:

The plaintiff claimed that use of a color cannot be monopolized by one company; lilac and purple are different colors; that none of the trademarks of the defendant shown as grounds for the opposition are similar to their application consisting only of the word element MORINEK; that defendant’s cited trademarks cover different goods in class 30 than the goods in class 29 of the application; that none of defendant’s cited registrations are well-known and therefore they should be protected only in respect of goods covered in their specifications; that their main field of activity is cheese manufacturing whereas defendant’s main field of activity is chocolate manufacturing, therefore there is not a risk of confusion between the trademarks before the related consumers; that the denomination MORINEK is used by their end as the modern definition of innovation and requested from the Court to order for the cancellation of the TPI’s decision and registration of their application.

The defendant TPI claimed that; the decision subject to this action is in accordance with the related law and established practice and requested from the Court to reject the action.

The other defendant Kraft Foods claimed that their trademark family consisting of the word MILKA, the lilac color and purple cow figure are well-known; that the MILKA trademark is registered since 1901; that the concept consisting of the purple cow figure and Alps is being used on MILKA branded product packages since its first production date; that their lilac color is registered as a color trademark in Europe as well as in Turkey; that according to the results of several searches most of the consumers identify the lilac color with MILKA branded chocolates; that the first advertisement of MILKA with the lilac cow was introduced in 1973 and is being used since that day; that the trademark MILKA is recorded before the TPI as a well-known trademark; that they own acquired rights on the denomination MORINEK on the basis of their prior use; that the lilac color is original and distinctive in respect of the goods on which the trademark is used; that the denomination describes their trademark consisting of purple cow figure; that plaintiff’s trademark would lead to association with their trademarks; that both of the trademark cover fast moving consumer goods subject to daily use; that the primary material used in chocolate production is milk product and therefore milk products are similar/connected to chocolate products; that the usage area of well-known trademarks in the food sector may extend in the course of time and requested from the Court to reject the action.

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

Plaintiff has applied for the subject trademark in respect of food products where defendant’s all trademarks are well-known due to longstanding extensive use of MILKA with lilac color and purple cow figure in Turkey and Europe, especially for chocolate, cacao and similar products; milk and milk products are complementary and similar to chocolate, cacao and ice cream products of which main material are milk and milk products; furthermore “dried fruits and nuts” are also used in production of chocolate and therefore can be considered as complementary goods; the target consumer group of both of the goods consist of children and both kind of goods are sold in the same markets in near shelves and have common distribution channels; the main and only component of plaintiff’s trademark is the Turkish description of defendant’s device trademark; since defendant’s MILKA trademark is well-known together with its purple color and purple cow figure, there is risk of confusion and association between the trademarks and their holders; plaintiff’s trademark is similar to defendant’s trademarks consisting of purple cow figure, purple color and/or the English denomination cow; registration of plaintiff’s application may lead to risk of obtaining unfair advantage from the reputation of defendant’s trademarks, may harm their reputation or damage their distinctive character in respect of all goods in class 29 covered in the application due to the high and strong notoriety level of defendant’s trademark and decided that the plaintiff is trying to obtain a word trademark registration for defendant’s well-known device trademark.

The Court has ruled to the rejection of the court action by approving the TPI’s decision of refusal of plaintiff’s application no.2007/46603 “MORINEK” upon acceptance of defendant’s opposition and to charging the plaintiff to pay all the expenses for the litigation costs.

Importance of Case:

Plaintiff’s application was rejected although the defendant does not own any trademark registration for the Turkish denomination MORINEK or for its English version PURPLE COW and despite of different goods in classes 29 and 30 and different main field of activities of the parties (cheese and chocolate products). The Court has decided that even use of such denomination as a trademark by a third party on a different sub category of goods in the food sector would lead to risk of confusion and association between the trademarks.



Contributing Firm: Deris Attorneys At Law Partnership