Trademark Infringements Through Dilution Of Trademarks

INTRODUCTION

Due to the strategic importance of the trademark, the necessity of protecting them has emerged, however within the doctrinal sphere for many years, trademark protection has only been considered from the perspective of “possibility of confusion of the trademark” due to the trademark's function of indicating the source. However, besides from referencing, trademarks have many functions, especially in commercial life, and one of the most important assets for companies is the reputation and strong trademark image of the trademarks they have created. 

In order to prevent the distinctive character and image of the trademark from being damaged; it has been accepted that the “dilution”, which can be defined as the damage to the distinctive character of the trademark, the use of the identical or similar of a well-known trademark in the identical, similar or different goods or services without a justified reason, the damage by the gradual decrease in the connection between the trademark and the goods/services bearing the trademark in the eyes of the consumer, or the existence of a serious possibility in this direction, will also constitute a trademark infringement and regulations regarding dilution have been included both in the international law and in the domestic law of many countries. 

A. LEGISLATIVE FRAMEWORK REGARDING THE DILUTION OF THE TRADEMARK

Within the framework of Turkish law, the regulations regarding the dilution of the trademark are included in Industrial Property Law No. 6769 (“IPL”), and the trademarks that have priority for registration within the scope of Article 6/5 of the IPL are protected against the same or similar trademark applications, even if they are in different classes of goods or services, against cases where an unfair advantage may be obtained, the reputation of the trademark may be damaged or its distinctive character may be damaged due to the level of recognition it has reached in Turkey. 

In this respect, in the preamble of the same article explicitly refers to the concept of dilution, and the dilution of well-known trademarks and obtaining unfair advantage from well-known trademarks are regulated in line with the Convention on Trade-Related Intellectual Property Rights and the EU Trademark Regulation No. 2015/2424. Unlike the current regulation, the applicant has been given the opportunity to claim that he has justified reasons for making an application, and it is stipulated that the protection under the paragraph will be provided regardless of whether the goods or services are the identical, similar or different, if the conditions are met.

However, within the scope of Article 7/2-c of the IPL; regardless of whether it is in the same, similar or different goods or services, it is stipulated that the trademark owner can prevent the use of any sign that is identical or similar to the registered trademark and that it will gain an unfair advantage from the reputation of the trademark due to the level of recognition it has reached in Turkey, or that it will damage its reputation or damage its distinctive character, without a justified reason.

In this regard, in accordance with both international regulations and IPL regulations, to protect a trademark against dilution; it can be said that all of the following conditions must be met.

• Recognition of the Previous Trademark: The trademark must have reached a certain level of recognition in the eyes of the consumer. Recognition means that the goods or services bearing the mark are recognized by a wide range of people within the target audience. In the General Motors decision regarding the determination of recognition, it was decided that in order to benefit from the protection against dilution, the goods and/or services bearing the trademark must be known to a wide range of the consumer group to which they are directed.

• Connection Between Signs of the Parties: The trademark that claims to be dilution must be somehow associated with the previous trademark and a mental connection must be established in the consumer's mind. Although there is no legal regulation within the scope of Turkish law regarding this issue, in a decision made by the Supreme Court, it was stated that the necessary connection cannot be established between the “DERBY” trademark registered for razor blades and the “DERBYTECH” trademark to be used in the agricultural and industrial sectors, since the sectors are very different from each other, pointing to the connection between the party signs.

• Registration or Application Status of the Prior Trademark:  The trademark must either be registered or have started the registration process.

• Trademark Use in Relation of Later Sign: Use of trademark is defined as “Use of any sign identical with, or similar to the registered trademark, irrespective of being for identical, similar or different goods or services” and pursuant to Article 7/2-c of the IPL, while both parties' signs must be trademarks in relation to registration obstacles, but regarding trademark infringement, it has been stipulated that only the previous sign must be a trademark, and provided that the previous sign is a trademark, later uses do not have to be trademarks and can be any sign.

B. TYPES OF DILUTION

In Article 6/5 and 7/2-c of the IPL, regulates two different types of infringement as (i) damaging to the distinctive character of the well-known trademark (blurring), (ii) damaging of the reputation of the well-known trademark (tarnishing).

a. Blurring

Dilution by blurring is defined as “damaging to the distinctive character of a trademark, the gradual loss or dissipation of the trademark's identity and its place in the minds of the public, in other words, the gradual loss or dissipation of the selling power of the trademark due to the use of a trademark in relation to non-competing goods/services”. The use of well-known trademarks in different goods and services by third parties will diminish the commercial image of the trademark in the eyes of the consumer, reduce its sales power, make the trademark ordinary and erode its advertising power and distinctiveness over time.

It should be noted that as the recognition of the trademark increases, the possibility of its distinctive character being damaged will also correspondingly increase.

One of the most important examples of this situation is in the Tiffany & Co v Boston Club Inc case, where it was decided that the use of Tiffany trademark by the defendant as a restaurant name, would make the trademark less and less likely to bring to mind the plaintiff's jewelry, which would destroy the uniqueness of the trademark, its level of impressiveness and the reputation it created and thus the trademark had been diluted.

When the Supreme Court precedent is examined, it is stated in a decision that the registration of the plaintiff's registered “CLIPPER” trademark in the name of the defendant for different goods and services will greatly damage the distinctive character of the trademark, its level of recognition and its high advertising power; in other words, the trademark would no longer only evoke the plaintiff's lighter and would lead to dilution of the trademark.

b. Tarnishing

Dilution by tarnishing is defined as “the result of the association that arises from the similarity between the well-known trademark and the diluted trademark and damaging to the reputation of the well-known trademark“, and when examining whether the reputation of the trademark has been damaged, it is necessary to carry out an examination by taking into account the goods covered by its registration, rather than the classes of goods and services, and the reputation of the trademark should be damaged as a result of uses such as seeking to attract the customers of the previous well-known trademark..

For example, in the case of the Coca-Cola, it was stated that the posters with the phrase “Enjoy Cocaine“, whose typeface and colors are the same as the “Coca-Cola” trademark, may create a false perception that the products bearing the trademark contain cocaine and that the plaintiff company is responsible for the poster, which will cause damage to the reputation of the trademark. In addition, it was stated that other undertakings would refrain from making agreements with the company and therefore the previous trademark owner may suffer financial losses. 

However, in the RADO decision established by the Supreme Court, it was ruled that although there was no unethical use, the relevant trademark is a well-known trademark in the watch industry, and registering it for different goods and services, including cleaning products, would damage the reputation of the trademark.

Therefore, if the image and reputation created by the trademarks are tarnished either through unethical uses or through use of the later trademark in different products that create a contrast with the prior trademark, or due to the providing inadequate and low-quality services by the later trademark may result in consumers transmitting their negative experiences and perceptions about this later trademark to the previous well-known trademark and thus dilution by tarnishing may be claimed and the registration of the trademark may be cancelled in the cases that previous well-known trademark is damaged.

C. CONCLUSION

The distinctive character and reputation of well-known trademarks are protected by including regulations regarding the trademark dilution in the legislation, therefore deeming it significantly important in trademark law. Accordingly, under Turkish Law, relevant provisions of the IPL include regulations regarding the dilution and mainly regarding the dilution by blurring and tarnishing.

While dilution by blurring refers to the decrease in the sales power of a trademark and the loss of the trademark's identity as a result of the use of a trademark in different goods or services; whereas dilution by tarnishing refers to the damage to the well-known trademark as a result of the association arising from the similarity between the well-known trademark and the diluted trademark and damaging to the reputation of the well-known trademark. 

With these regulations, it is aimed to protect the distinctive character and reputation of the trademarks, and as the trademark owners are offered the opportunity to protect their trademarks effectively it can be said that it is very important in terms of protecting the rights of the trademark owners and maintaining the trademark values.

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.