Can a trademark application be regarded as malicious because of an obligation regarding the trade name? After the Decision of Reversal of the Turkish Court of Cassation, Ankara 1st Civil Court of Intellectual and Industrial Property Rights says: "Yes!"
Mak-el Mühendislik v Bodrummakel Pazarlama Mühendislik, Ankara 1st Civil Court of Intellectual and Industrial Property Rights, Merit No 2021/255 E, 2021/370 K, dated 16 November 2021
Ankara 1st Civil Court of Intellectual and Industrial Property Rights (court of the first instance) complied with the decision of reversal of the 11th Civil Chamber of the Turkish Court of Cassation (CoC) (Merit No. 2020/1360 E, 2021/4186 K, dated 28 April 2021). In the mentioned decision, it was stated that the trademark application should have been deemed malicious and rejected/invalidated in respect of all classes due to the non-fulfillment of an obligation of a protocol, which ends the commercial relationship among the parties, regarding the trade name.
The action was related to the invalidation of the final decision of the Reexamination and Evaluation Board of the Turkish Patent and Trademark Office.
The basis of the action was Article 6/1 stipulating that "an application for a trademark registration shall be refused upon an opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to the identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered", Article 6/9 stipulating that "trademark applications filed in bad faith shall be refused upon opposition", and Article 25 stipulating that "if one of the conditions mentioned under Articles 5 or 6 exists, invalidation of a trademark shall be decided by the court", of the Turkish Industrial Property Law no. 6769.
Thus, the likelihood of confusion as well as malicious trademark applications, regulated under Article 6 of Turkish Industrial Property Law no. 6769, are regarded not only as relative grounds for refusal in trademark registration but also for invalidation of a trademark.
Course of Events
The defendant, Bodrummakel Pazarlama Mühendislik, filed a trademark application for "Bodrummakel Mühendislik Pazarlama", the slogan "Yasami Kolaylastiriyoruz" & "device" under no. 2012/24605 on 15 March 2012 in respect of all the goods and services in classes 11, 37, and 42. The application was published, and the plaintiff filed an opposition to this publication on the grounds of their trademark "Makel & device" registered in respect of "the services of installation, maintenance, and repair of heating, cooling and sanitary installation" under class 37 and further on the grounds of bad faith.
The images of the contested trademarks are provided below:
The Plaintiff's Trademark
The Defendant's Trademark Application
Turkish Patent and Trademark Office found the trademarks confusingly similar, partially accepted the opposition, and decided to exclude from the trademark application "the services of installation, maintenance, and repair of heating, cooling and sanitary installation" under class 37.
The plaintiff filed an action for the invalidation of the decision before the court of the first instance. As a result of the judgment, the trademarks were found to be similar also for the goods "appliances for heating and steam generation installations (including solid, liquid, gas, and electric stoves, ranges); installations for air-conditioning and ventilating, sanitary installations, water softening apparatus, water purification apparatus, water purification installations, wastewater purification installations" in class 11, and the decision was taken to remove the mentioned goods from the defendant's application. The reasoned decision of the court was appealed by both parties and the CoC initially upheld the decision of the court of the first instance as it was.
The decision was again appealed by the parties and at this stage (namely, the rectification phase), the CoC rendered the decision of reversal. In the decision of reversal, it was stated that instead of changing the main component of the trade name "mak-el" as stipulated in the protocol serving to end the commercial relationship among the parties, filing a new trademark application by the defendant that still contains this phrase as the main component is both contrary to the protocol and the rule of good faith. It was further stated in the same decision that the essential element in the defendant's trademark application is the imitation of the plaintiff's trademark and that this is an indication of bad faith.
The court of the first instance complied with the decision of reversal of the CoC and decided to accept the case as a whole and invalidated the final decision of the Reexamination and Evaluation Board of the Turkish Patent and Trademark Office and the registration of the trademark in respect of all the classes.
Current Status of the Case
Since the court of the first instance complied with the decision of reversal and thus amended its previous decision, the defendant again filed an appeal before the CoC, this meaning that the decision has not yet been finalized.
The grounds of the decision of reversal of the Turkish Court of Cassation are surprising as it is believed that the CoC, contrary to its precedents, interpreted the events quite broadly while assessing the existence of bad faith.
First and foremost, it is observed that the fact that trademark and trade name are different concepts were not taken into account when interpreting bad faith in the current case. There is indeed a protocol that terminates the commercial relationship among the parties; however, there is no provision or regulation in the protocol regarding the trademark and/or the trademark uses. As a second note, it is obvious that the defendant changed the essential element of the trade name "mak-el" in accordance with the provision in the protocol. Thus, the lack of a provision in the protocol prohibiting the use of the essential components of the trade name as a trademark and yet not taking this matter into account in the course of the examination process leaves the impression that the case was interpreted too broadly.
Further to these, it is believed that the scope of registration of the plaintiff's trademark and the legislation in force at the time was not taken into account by the CoC and the court of the first instance as required. The Decree-Law no. 556 dated June 24, 1995, on the Protection of Trademarks was in effect when the trademark application was filed and the proceedings were ongoing. The first sentence of paragraph 4 of Article 8, in which the well-known trademarks are regulated in the now annulled Decree-Law, stipulates that "unless there is a well-known trademark involved, a trademark filed for registration that is identical or similar to a registered trademark or to a trademark with an earlier application date may be used for different goods and services". Both in the opposition phase before TURKPATENT and the proceedings carried out by the court of the first instance before CoC's decision of reversal, the goods and services that are identical or similar to the plaintiff's trademark registration were excluded from the trademark application. Therefore, at the stage of the decision of reversal, the remaining classes in the trademark application that is the subject of the lawsuit are related to classes that are disparate from the scope of the plaintiff's trademark registration. Since the well-known character or the genuineness of the plaintiff's trademark "makel", which is common in both trademarks, has not been proven, considering the defendant's trademark application as malicious in disparate classes further indicates the criticized broad interpretation.
Another point showing that a broad interpretation has been made regarding malicious intent is the assumption that the phrase "makel" in the trademark application is an imitation of the trademark belonging to the plaintiff. When the visuals of the trademarks are evaluated as a whole, even though the component "makel" is common, it is a very strained inference to claim that this phrase in the trademark application is an imitation of the plaintiff's trademark.
The trademarks are included in the scope of industrial property rights and have crucial importance among intangible goods. In accordance with the precedents of the Turkish Constitutional Court on the subject, trademark right is included in the property right protected pursuant to article 35 of the Turkish Constitution of 1982. Therefore, it is considered essential for the courts to make narrow interpretations when deciding on fundamental rights. Otherwise, the property rights of individuals will be damaged, and even further, the principle of the narrow interpretation of the provisions that bring exceptions to a right regulated by the European Convention of Human Rights, to which Turkey is a party, will be contradicted. When evaluated together with these explanations, it is thought that the broad interpretation of bad faith by the CoC and later by the court of the first instance is open to criticism.
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