Ca.Ot.Gr. v Er.Ça., Ankara 5th Civil Court of Intellectual and Industrial Property Rights,
Merit No 2023/143 E, Decision No. 2023/430 K, Decision Date: 13 October 2023

The Ankara 5th Civil Court of Intellectual and Industrial Rights, in addition to the issues specified in Article 6/1 of Law No. 6769 on Turkish Industrial Property Law, which concerns the likelihood of confusion, and Article 6/5, which relates to well-known trademarks, taking into account the developments in the specific dispute, ongoing disputes between the parties, and with a highly accurate interpretation, has ruled that the defendant's registration of a new trademark despite being aware of the plaintiff's trademarks constitutes bad faith, thus declaring the trademark registration null and void.


Legal Context

The action was related to the invalidation of trademark registration.

The action was founded on several articles of the Turkish Industrial Property Law no. 6769, namely Article 6/1, which emphasizes refusal of trademark registration in cases where confusion among the public is likely due to similarity with earlier trademarks and the goods or services involved; Article 6/5, highlighting rejection of trademark applications that resemble earlier registered trademarks regardless of goods or services, potentially exploiting the reputation of the earlier trademark; Article 6/9, addressing refusal of applications filed in bad faith; and Article 25, stipulating court decisions for trademark invalidation if conditions under Articles 5 or 6 are met.

Hence, the likelihood of confusion, well-known trademarks, and bad faith trademark applications, which are regulated under Article 6 of the Turkish Industrial Property Law No. 6769, are accepted not only as relative grounds for refusal of trademark registration but also as valid grounds for invalidation of a trademark.


Course of Events

The Claimant is the owner of the CASA trademark, which has been active in Turkey for more than 40 years in furniture, accessories and other related fields and is also a well-known trademark in Turkey. The Respondent is the proprietor of the Baby CASATI trademark No. 2020/19947 and has registered it in Turkey in its name.

The plaintiff based its case on grounds such as similarity, well-knownness, the priority right and, in particular, the claim that the trademark subject to the lawsuit was registered in bad faith.

The plaintiff, particularly with respect to allegations of bad faith, also provided a timeline as follows:

  • A lawsuit was filed through the Ankara 2nd Intellectual and Industrial Rights Court's file (Merit No. 2015/328E., Decision No. 2017/32K.), for the annulment of the decision of the TURKPATENT Re-Examination and Evaluation Board regarding the trademark registration filed in the name of the defendant that includes the essential element CASATİ,
  • In the case mentioned in the preceding paragraph, it was understood that the exact same phrase of the trademark subject to this lawsuit (Baby Casati) was registered in the name of the defendant in 2012, and a separate lawsuit was initiated through Ankara 2nd Intellectual and Industrial Rights Court's file (Merit No. 2017/462E., Decision No. 2019/37K.), for the purpose of declaring this trademark null and void,
  • It was alleged that the defendant made the trademark application subject to this lawsuit after a subsequent period following the judgments of the afore-mentioned First Instance Courts, claiming that these actions were malicious and requesting the invalidation of the trademark registration due to bad faith grounds.

The defendant, in their defense, argued that there is no general resemblance, whether visual, auditory, semantic, conceptual, or otherwise, among the trademarks in question; it is necessary to prove the use of the trademarks in all classes for which they are registered, the defendant has been using the trademark in question peacefully and continuously for many years without any confusion arising due to the prolonged and undisputed use of the trademark, thus claiming the absence of bad faith; there is a class difference between the trademarks in question and the sectors in which they operate are different; the targeted consumer base is conscious and possesses a level of attention and perception to discern the differences between the marks; the allegations of the recognition of the plaintiff's mark and the dilution of the well-known mark cannot be substantiated, and therefore, requested the dismissal of the lawsuit.


The reasoning of the Decision of the Court within the Scope of Bad Faith:

It is observed that the Court of First Instance has examined the dispute in question in a very detailed and meticulous manner. The reasoned decision also refers to the decisions of the 11th Civil Chamber of the Turkish Court of Cassation, The Grand Chamber of Civil Chambers of the Turkish Court of Cassation, and even the European Court of Justice (ECJ) on bad faith.

The relevant decision defines a bad faith trademark application as follows: "... the use of the rights obtained by a person through registration, without the intention to use them in accordance with their intended purpose according to the legal order, in a manner contrary to law and morality and for other purposes not approved by the legal order."

Again, in the reasoned decision, reference is made to the KOTON vs STYLO KOTON (C-104/18P) decision of the European Court of Justice, indicating accurately that "any claim of bad faith requires a general assessment based on all relevant objective facts of the specific case."

In the reasoned decision, it is also seen that the Court of First Instance referred to the decision of The Grand Chamber of Civil Chambers of the Court of Cassation during the bad faith assessment phase and paid special attention to the situation where the applicant knew or should have known that the same or similar trademark was being used by someone else. (Merit No. 2008/11-501E., Decision No. 2008/507K.)

Following these general grounds, the Court proceeded to evaluate the dispute and found that there had been litigation between the parties prior to the present case, that the decisions rendered by the courts of first instance predated the application date of the disputed trademark, that one of the cases subject to cancellation was directly related to the phrase baby casati, and that the previous trademarks in dispute were not in the same class as the trademark in the present case, but were in similar classes.

After these determinations, the registration of the disputed mark has been considered as being made in bad faith for the following reasons:

Awareness of the Plaintiff and its trademarks:

In the reasoned decision, it was emphasized that the defendant applicant was aware of the plaintiff's registered trademarks and the goods and services covered by them (including the goods for which the plaintiff's trademark was found to be well-known by judicial decisions) and that the defendant did not choose the disputed trademark application at random.

Contravention of commercial honesty rules:

Another reason observed in the court decision under review for considering the defendant's registration as being made in bad faith is the contravention of the rules of commercial honesty.

In this context, the decision states: "The defendant acted with the intention of circumventing the consequences of the judgments established by the first instance courts between the plaintiff and the defendant before the application date of the disputed mark, and the defendant's intention to obtain said registration is not in accordance with the rules of commercial honesty."


Current Status of the Case

The respondent has filed an appeal before the Turkish Regional Court of Appeals (RCoA), which means that the judgment is not yet finalized.


Practical Significance

The concept of bad faith, which is explicitly included among the grounds for relative refusal with the Turkish Industrial Property Law No. 6769, which entered into force on 10/01/2017, and which is also regulated as one of the grounds for invalidity of the trademark, is a concept with a high legal quality, which has a subjective aspect and therefore should be evaluated meticulously and carefully in disputes.

In practice, especially in civil cases, the role of expert examination and its impact on the decisions made by the Courts is well known to all stakeholders involved in the cases. At the dispute resolution stage, as it is a purely legal issue and outside the duties and responsibilities of experts, experts on the issue of bad faith rightly and generally either leave the matter to the court judge without any examination and evaluation or summarize the facts in the case file and prefer not to make a detailed evaluation on the subject. At this point, the assessment of bad faith generally emerges as an issue that judges must personally assess in almost every case.

In assessing the issue of bad faith, judges must spend considerable time examining the allegations and supporting evidence in dispute and then making a legal assessment. This is because when making a decision, it is necessary to evaluate the facts not only in terms of intent but beyond that, within the framework of objective rules.

According to the general principle arranged in the Turkish Procedural Law No. 6100, as is also stated in almost all decisions of the Turkish Court of Cassation (See 11th Civil Chamber of Turkish Court of Cassation, Merit No: 2019/5187 E., Decision No: 2020/3833 K., Decision Date: 5 October 2020, See also 11th Civil Chamber of Turkish Court of Cassation, Merit No: 2011/1562 E., Decision No: 2011/5464 K., Decision Date: 5 May 2011, See also The Grand Chamber of Civil Chambers of the Court of Cassation, Merit No: 2017/11-66 E., Decision No: 2019/480 K., Decision Date: 18 April 2019.) and even the Court of Justice of the European Union (CJEU), (Judgment of 11 June 2009, Chocoladenfabriken Lindt & Spr¨ungli, C-529/07, EU:C:2009:361, para 53. Judgment of 27 June 2013, Malaysia Dairy Industries, C-320/12, EU:C:2013:435, para 36.) each case must be evaluated within its circumstances. (See. N Berkay Kirci, 'Malicious Trade Marks in the Turkish Legal System: The Villains of Trade Mark Law' (2021) 16 Journal of Intellectual Property Law & Practice 1273, 1276 ( accessed 7 February 2024.)

Thus, addressing each instance concurrently with its objective and subjective aspects rather than limiting malicious trademarks by classification is believed to be more adequate. During the evaluation, 'account may also be taken of the commercial logic underlying the filing of the application for registration of the sign and the chronology of events leading to that filing.' (Judgment of 12 September 2019, Koton Mağazacilik Tekstil Sanayi ve Ticaret AS v European Union Intellectual Property Office, C-104/18 P, EU:C:2019:724, para 25.) (Kirci (n 1) 1276.)

Both probably due to the difficulty of proving bad faith and the justifications in the literature regarding the limitation of trademark right, which is comprised within the scope of property right, it is observed that the courts act very cautiously when rendering decisions about malicious trademarks. The excessively cautious approach of the courts when addressing the issue of bad faith is often causing crucial irreversible loss of rights, encouraging people with malicious intent and, consequently, ends up with an increase in illicit trade. (Kirci (n 1) 1283.)

The judgment of the Ankara 5th Civil Court of Intellectual and Industrial Property Rights, which is the subject of the study, shows that when all the facts related to the dispute are examined in detail, and when the decisions and principles determined by courts and institutions such as the CJEU are taken into consideration, decisions in accordance with procedure, law and equity can be established.

Moreover, an in-depth examination of the malicious trademarks results in a rich elaboration of the reasoning of the decision. The detailed and comprehensible formulation of the reasoning makes a significant contribution to the increase in precedent decisions on bad faith and the development of case law on this issue.

In addition to the points being conveyed, such decisions contribute to the punishment of individuals who act unlawfully, circumventing the mandatory provisions of the law and/or court decisions, and serve as a crucial key to transitioning to a system where malicious behaviors are not rewarded.

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.