Summary:
A trademark application may be refused even if it does not contain identical or similar word elements of a registered well-known trademark, due to the reputation of the earlier trademark and the way of use of this trademark, based on the grounds of damage that may be caused to the reputation of this trademark, within the context of the association that may be evoked by the arrangement and writing styles of the signs.
Legal Justification:
The opposition filed on the grounds of the likelihood of confusion of trademarks and the goods and services covered thereby due to identity or similarity thereof, the likelihood of association due to reputation, earlier use, and the bad faith of the applicant was accepted primarily on the grounds of the likelihood of association due to reputation under Article 6 (5) of the Industrial Property Law No.6769.
Law No. 6769 , Article 6 (5): "A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character of the repute of the earlier trademark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark."
Background of the Subject:
The opposing party, Arçelik Incorporated Company (Arçelik), has been a leading, environmentalist, innovative and technologically superior company in durable goods sector in Turkey since 1955, and has a wide product range consisting of white goods, built-in products, electronic products, small household appliances, fitted kitchens, central heating boilers, air conditioners and system air conditioners. Furthermore, it offers products and services in more than 130 countries with its many trademarks, specifically Arçelik and Beko.
Arçelik has more than 100 registered trademarks, the
oldest of which is dated 1982, with both plain text and different
logos, and the significant ones in this concrete case are their
registered trademarks containing 
logo and style. In addition, the use of the
trademark on a black background 
is also of critical significance in this
concrete case.
Below is the image of the opposed trademark application numbered 2019/76513 containing the phrase "BEYAZ EŞYA EVİMDE (WHITE GOODS (i.e MAJOR APPLIANCE) IN MY HOME)", for which a registration application was filed for Class 35:
Opposition Process:
An opposition was filed before the Turkish Patent and Trademark Office(TPTO) by Arçelik against the said trademark application within the framework of Article 6 of the Industrial Property Law on the grounds of the likelihood of confusion, likelihood of association due to reputation, earlier use and bad faith.
In the opposition, it was claimed that the opposing party has ownership of right over both the trademark registrations and the use of the trademark, based on the stylized writing of the application and the perception created by the colors that were used. In addition, it has been claimed that the expression "beyaz eşya evimde (white goods (i.e major appliance) in my home)" used in the trademark application subject to the opposition refers to the field of the reputation of the opposing company and that this situation makes the likelihood of association of the trademarks by the consumers inevitable. In this context, it was also clearly stated that the application subject to opposition intends to take advantage of the reputation of Arçelik.
The said opposition was rejected by the Trademark Opposition Section of the TPTO on the grounds that none of the claims were justified. Then the opposing party filed an opposition before the Re-examination and Evaluation Board for re-examination of the said opposition.
Final Administrative Decision:
With its decision dated 21.08.2020, the Re-examination and Evaluation Board evaluated the stylized writing of the phrase "beyaz eşya evimde (white goods (i.e major appliance) in my house)" in white and red on a black background, and the colors used, and the emphasis made on the white goods sector, wherein the trademarks that are the ground for opposition are well-known, within the framework of the conceptual perception created by the application. In this context, the Board has come to the conclusion that the application will evoke association with the well-known "ARÇELİK" trademarks in the perception of the average consumer, that the trademarks will point to the same commercial resource, and that it will take unfair advantage of the reputation of the well-known "ARÇELİK" trademarks.
Furthermore, based on the information and documents submitted regarding the use of the ARÇELİK trademark, it has been determined that even if the application does not include the ARÇELİK trademark, it cannot be created accidentally with regard to its stylized writing, and that the applicant intends to take unfair advantage of the reputation of "ARÇELİK" trademark in the market.
In this framework, a decision was made to refuse the trademark application containing the phrase "BEYAZ EŞYA EVİMDE (WHITE GOODS (i.e MAJOR APPLIANCE) IN MY HOME)" for the entire Class 35 for which the said trademark was requested to be registered.
Conclusion:
The decision, which is the subject of the examination, is a significant decision for not only showing what a strong and reputable trademark ARÇELİK is especially in Turkey; but also for showing that the latter application cannot be registered in case the arrangement style or the stylized writing of an application evokes an association with a reputable trademark and in this context, if there arises a likelihood of damage to the reputation of the well-known trademark, even if there is no similarity between the word elements of the trademarks.
Moreover, this decision also brings along the prediction that actions of taking unfair advantage of the reputation of well-known trademarks can be prevented more quickly and effectively especially before the Turkish Patent and Trademark Office, and gives hope to other trademark owners who have reached the level of reputation recognized by the public.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
