- The Trademarks Department granted broader protection to the well-known SINGER mark, refusing an application including the term 'Singer' in Class 1
- The decision examined the conditions for dilution of a well-known mark under Article 6/5 of the IP Code
- The well-known status of the SINGER mark, as well as the word and graphic elements in the application, played a role in deciding on the applicant's bad faith
The Trademarks Department has decided that the application for SINGER KUMAŞ VE PUNCH YAPIŞTIRICISI, meaning 'Singer Fabric and Punch Adhesives', diluted the well-known SINGER mark and had been filed in bad faith.
Background
On 6 September 2022 a Turkish individual filed an application to register the trademark depicted below in Class 1:
Following its publication in the Official Trademarks Bulletin, the owner of the well-known trademark SINGER filed an opposition against this application based on the following grounds:
- a likelihood of confusion;
- dilution due to the well-known status of the SINGER mark; and
- the bad faith of the applicant.
Decision
The Trademarks Department accepted the opposition and refused the registration of the contested application in a decision dated 14 March 2023.
The Trademarks Department found that 'Singer' was the dominant element of the contested application, and that it was written in a red colour, like the well-known SINGER trademark. Further, fabric and punch adhesives ('kumaş ve punch yapıştırıcısı' in Turkish) were related to the goods for which the well-known SINGER mark is used; indeed, the owner of the well-known SINGER mark sells punch needles.
Therefore, the Trademarks Department concluded that the contested application may take unfair advantage of the well-known SINGER trademark or be detrimental to its distinctive character or reputation under Article 6/5 of the IP Code. The Trademarks Department also stated that the applicant had not acted in good faith when filing the contested application due to above-mentioned reasons.
The decision has now become final as the applicant did not appeal.
Comment
The Trademarks Department's decision is notable as it examined the conditions under Article 6/5 of the IP Code concerning dilution of a well-known trademark and refused an application seeking registration for different goods. The well-known SINGER mark is used primarily for sewing machines in Class 7 and is not registered in Class 1 in Turkey. The Trademarks Department considered the relationship between the goods applied for in Class 1 and the goods for which the well-known SINGER mark is used, and concluded that dilution might occur. The presence of the element 'Fabric and Punch Adhesives' also seemed to play a role in the Trademarks Department's decision.
The decision is also valuable in that the applicant's bad faith was evaluated at the Trademarks Department's level; the Patent and Trademark Office's approach to bad-faith applications is strict and usually requires solid evidence of bad faith, and such claims are evaluated more thoroughly at the Higher Board level.
First published by WTR in 24.09.2023.
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.
