LUXOTICA Case Summmary - 2012

TUFAN TÜZEY vs TURKISH PATENT INSTITUTE and LUXOTTICA GROUP S.P.A., Case No. 2011/28; Decision No.2012/14 (4th Ankara Court of Intellectual and Industrial Rights, February 14, 2012)

1- TURKISH PATENT INSTITUTE
2- LUXOTTICA GROUP S.P.A.

The plaintiff’s “ ” trademark application no.2009/43712 covering goods in classes 18 and 25.

Court action instituted for cancellation of the partial refusal decision of the Turkish Patent Institute regarding the trademark application upon acceptance of defendant’s (LUXOTTICA GROUP S.P.A.) opposition due the similarity with the plaintiff’s trademark no. 88/102828 in class 09, on the basis of likelihood of confusion.

Upon defendant’s opposition, Turkish Patent Institute has refused the plaintiff’s trademark application in respect of classes 18 and 25.

The plaintiff has asserted that:

• the defendant company, who opposed the subject trademark application, is an eyewear company, whereas the client is engaged in the textile sector,
• the goods covered by the trademarks are different,
• the cited trademark includes a device component such as an emblem,
• the defendant company is not well-known in the eyewear sector such as the well-known trademarks Rayban, Bulgari and Versace, and the defendant company is not known to everybody even in the optical sector,
• the trademark of the defendant has not been renewed in due time and therefore it has become invalid,

and therefore requested cancellation of the TPI’s refusal decision issued regarding the trademark application in question.

The TPI as the Defendant has stated that the subject court action is not justified and the TPI’s decision is in accordance with the laws and therefore has requested that the subject court action should be rejected.

The other defendant LUXOTTICA GROUP SPA asserted that:

• the client company was established in 1961 and has stores/sales points worldwide,
• the trademark applied for registration is indistinguishably similar with the defendant’s trademark
• the subject trademarks are visually almost identical,
• the device element of the defendant’s cited trademark is the secondary/complementary element thereof and there is no difference to avoid the risk of confusion between the trademarks,
• the “spectacles” in Class 9 covered by the client’s trademark and the goods including “leather bag, key holder, umbrella, parasols…” in Class 18 covered by the subject trademark registration are related goods in respect of the clothing sector,
• since the subject trademarks are almost identical, using both trademarks on similar goods will cause likelihood of confusion,
• furthermore, the trademark of the client should be considered as highly well-known trademark,
• the plaintiff acts in bad faith by intending to obtain registration for a worldwide registered trademark,

and requested that the subject court action be rejected.

In the reasoned decision issued by the court:

• As stated in the expert’s report, it has been considered that “leather goods” in the sub-class 18.02 covered by the trademark applied for and the “spectacle cases” covered by the trademark of the defendant company are of the same kind since they can be both made of leather and the spectacles can be preserved in leather cases and carried in leather bags during travelling etc., and that the other goods differ from each other in terms of the nature of the goods, the place of use and sales, the time of use, the physical appearances and for not being used as an alternative of one another.
• In visual comparison of the goods of the parties, it is stated that the trademark “” by the plaintiff is a word mark and the defendant company’s registered trademark is a combination of word and device elements, which shows that the trademarks of the parties are very similar in terms of verbal elements and pronunciation,
• It is further stated that the subject words do not have a direct meaning in Turkish language however both words refer to the word “luxury”; the denomination “luxury” is descriptive for showing a value adding characteristic to goods, therefore the distinguishing power of the denomination as the subject of both trademarks is rather weak thus there exists a likelihood of confusion in terms of covering related goods however such a likelihood does not exist in terms of goods being capable of associated indirectly.
• On the other hand, it is not possible to accept that the trademark of the defendant company is well-known, whereas covering many worldwide known trademarks under the same roof does not affect the reputation of a certain trademark, the reputation in other countries cannot be deemed to extend also in Turkey, the evidences submitted before the court are not sufficient for evidencing the reputation of the defendant’s trademark in Turkey and the level of distinctiveness provided by the wording “luxury” by reference is rather low.
• Furthermore, it has been determined that no sufficient/valuable evidences have been submitted for supporting the claim that the plaintiff acts in bad faith.

In consideration of the explanations and evidences submitted to the file and the expert’s reports, the court has decided to partially accept the case by cancelling the TPI’s decision issued in respect of goods in Class 18. (18.01, 18. 03 and 18.04) and Class 25. (25.01, 25.02 and 25.03) and to reject the case in terms of other goods, in respect of which the TPI’s decision of refusal is upheld.

Despite the almost identical similarity between the trademarks, the Court has not accepted the likelihood of confusion claims of the defendants due to the difference between the covered goods.