Turkey: Intellectual Property

BEŞLER TEKSTİL SANAYİ VE TİCARET LIMITED ŞİRKETİ vs SAINT GOBAIN ISOVER SOCIETE ANONYME the Turkish Patent Institute, Case No. 2009/218; Decision No.2011/266 (1st Ankara Court of Intellectual and Industrial Rights, October 29, 2011)

BEŞLER TEKSTİL SANAYİ VE TİCARET LIMITED ŞİRKETİ

1- SAINT GOBAIN ISOVER SOCIETE ANONYME
2- The Turkish Patent Institute (TPI)

Plaintiff's trademark application no. 2007/49733 “IZOBER” covering goods in classes 17 and 19 and defendant’s trademark registrations no. 99/014381 “ISOVER DEVICE” covering goods in classes 17 and 19 and no. 2007/04194 “ISOVER MULTI-COMFORT HOUSE” covering goods in classes 17,19, 20 and 37.

Court action instituted for the withdrawal of the TPI’s decision of refusal of the trademark application no. 2007/49733 upon acceptance of defendant’s (Saint Gobain Isover) opposition.

Defendant’s (Saint Gobain Isover) opposition filed against plaintiff’s application was not accepted by the Trademark Department of the TPI and therefore the defendant has appealed against this refusal decision before the Higher Council of the TPI where the objection was accepted and the subject application has rejected. Therefore the applicant has filed the subject court action for cancellation of the TPI’s decision as the final legal step.

The plaintiff claimed that; there are many trademarks with the prefixes “IZO” and “ISO” which stands for “İZOLASYON” (isolation in Turkish) written in yellow ,that the denomination “BER” is in black, that the products under the name of IZOBER has won many awards and therefore there is not a case of taking unfair advantage of the well known status of the defendant’s ISOVER trademarks; that defendant’s cited registrations can be considered as a well-known trademarks abroad but the subject trademarks are not used or well-known in Turkey and requested from the Court to order for the cancellation of the TPI’s decision.

The defendant TPI asserted that; the decision subject to this action is in accordance with the related law and established practice and requested from the Court to reject the action.

The other defendant company asserted that; both trademarks are confusingly similar in respect of articulation, that both trademarks covered the identical goods, that the plaintiff’s trademark can take unfair advantage from the well known status of the defendant’s trademark and that the risk of confusion between the trademarks in respect of the some consumers is sufficient enough to accept risk of association between the trademarks and requested from the Court to reject the action, thus maintaining the TPI’s decision of refusal.

The Court has determined that;

The plaintiff has filed for the denomination “IZOBER” in the name of BEŞLER TEKSTİL for the goods covered in the classes 17 and 19 and the defendant has opposed against the subject application which was initially rejected and therefore the defendant has appealed against the subject decision before the Higher Council of TPI. In the evaluation of the Higher Council, TPI has decided that there is risk of confusion and association between the subject application and the defendant’s registered “ISOVER” and “ISOVER MULTI-COMFORT HOUSE” trademarks. It has been decided that although there is risk of confusion between the trademarks, it is not sufficient to accept the bad faith claim of the applicant. As for the experts report, it has been stated that in the comparison of the defendant’s trademarks and the subject application, the goods covered in the defendant’s trademarks can be considered as identical/ similar to the goods covered in the specification of the subject application.

However, the goods “Building/construction/road construction and similar purpose materials, construction elements, buildings made of movable materials, poles, barriers (including doors and windows made of wood and synthetic materials) manufactured and shaped from concrete, gypsum, earth, clay, sand, natural stone, artificial stone, wood, plastic or synthetic materials, Metal, mechanic and non-luminous traffic signs for roads, Monuments, statues made of concrete, stone or marble, Non-metal prefabricated swimming pools, Aquarium sands” can not be considered as similar to the goods covered in the specification of the defendant’s trademarks. In the view of the denominations “IZOBER” and “ISOVER” , since the letters “s” and “z” are similar in phonetic aspects, the pronunciation of the denominations are confusingly similar as well. There is risk of confusion in respect of visual aspects and the denominations are also similar in semantically due to fact that the subject denominations have no meaning for the consumers. In the plaintiff’s application, the subject word consist of “IZO” stands for “IZOLASYON” (isolation in Turkish) but the second denomination can be considered as confusingly similar to defendant’s trademark as it can be chosen to be very different from the denominations of the defendant’s trademark. The similarity conditions of the article 8/1 of the Decree Law no 556 have been met in the subject case and the trademarks can be considered as confusingly similar to each other and also the goods covered in both trademarks are overlapping except for the goods Building/construction/road construction and similar purpose materials, construction elements, buildings made of movable materials, poles, barriers (including doors and windows made of wood and synthetic materials) manufactured and shaped from concrete, gypsum, earth, clay, sand, natural stone, artificial stone, wood, plastic or synthetic materials, Metal, mechanic and non-luminous traffic signs for roads, Monuments, statues made of concrete, stone or marble, Non-metal prefabricated swimming pools, Aquarium sands”.

The Court has partially accepted the court action by withdrawing the TPI’s decision of refusal thus accepting for registration the plaintiff’s application no. 2007/49733 “IZOBER” in respect of the goods namely “Building/construction/road construction and similar purpose materials, construction elements, buildings made of movable materials, poles, barriers (including doors and windows made of wood and synthetic materials) manufactured and shaped from concrete, gypsum, earth, clay, sand, natural stone, artificial stone, wood, plastic or synthetic materials, Metal, mechanic and non-luminous traffic signs for roads, Monuments, statues made of concrete, stone or marble, Non-metal prefabricated swimming pools, Aquarium sands” and rejecting other requests for the cancellation of TPI’s decision in its entirety.

Plaintiff’s application was rejected in respect of the goods that are also covered in the defendant’s trademarks. The Court accepted that use of denomination that is confusingly similar to defendant’s trademarks for the remaining goods would lead to risk of confusion and association between the trademarks as well.