We, as Ankara Patent, as an indication of great importance attached by us to intellectual property rights of our clients, are carefully pursuing their legal struggles against infringement of their intellectual property rights both in Türkiye and in the international arena. In this article, we are going to explain in details the legal proceedings pursued by us upon and due to infringement in Türkiye and Europe of the rights of our client arising out of its HEPSİBURADA trademark. We wish you pleasant reading!
A great many of reputed trademarks are facing bad faith acts of infringement on the rights associated to them in geographies where their level of reputation is low or even they are not yet protected by registration. Though such acts are unfortunately recorded too often in the Turkish market, similar cases or acts may be encountered also in the other regions of the World such as Asia or Europe. Legal processes aiming to eliminate said infringements of rights and the probability of success of the trademark owner therein, of course, vary depending upon many different variables like the level of distinctiveness of trademark, and level of reputation of trademark in the geography of infringement, and proof of bad faith of counterparty and/or specific laws and regulations of the geography of infringement pertaining thereto.
A similar event has recently been experienced by HEPSİBURADA, leading e-commerce brandof Türkiye who is quite active in the Turkish market since more than 20 years and the first and – for now – sole Turkish company quoted and listed in NASDAQ, and as a result, thanks to the plantiff's strong trademark strategy and intensive legal action plan, HEPSİBURADA trademark registered by a bad faith applicant in EUIPO (European Union Intellectual Property Office) has been nullified and cancelled, and bad faith act of the applicant has been finally determined by a judgment of the European Union Court of Justice (CJEU) General Court.
In this article, we intend to explain the details of the whole process from the very beginning and the judgment of CJEU General Court which is fairly important for well-known trademarks and bad faith trademark registration acts.
A trademark registration application has been filed for hepsiburada.com word sign with an application number of 017941312 to EUIPO in the name of D-Market Elektronik Hizmetler ve Ticaret Anonim Şirketi (D-Market) for the classes 35, 38 and 42 on August 10, 2018.
Against the aforesaid trademark registration application, an opposition has been filed based on the hepsiburada trademark, which is already registered under number 017151796 on December 15, 2017, for goods and services in classes 21 and 35 at EUIPO."
Parallel to that opposition process, a request for invalidity based on bad faith was filed before EUIPO on November 6, 2019, by D-Market who is the creator and rightful owner of the HEPSİBURADA trademark cited in the opposition, under registration number 017151796.
Another important point required to be underlined here is that the same trademark owner has also a domain name of www.hepsiburada.life, and is dealing with e-commerce activities through this domain name within the borders of EU in Turkish language. Though HEPSİBURADA word sign is used with a different logo within that internet website, consumers are clearly tried to be misled and misdirected by such expressions as "Hepsiburada European Online Sales Site" which is also written in Turkish..
Another important point is that the founders and managers of Alpak B.V., the bad faith applicant, are Turkish citizens. This fact makes it impossible for the registration owner to be incognizant of HEPSİBURADA trademark, one of the most well-known and reputed trademarks of Türkiye. Besides, there are also trademarks registered in EUIPO in the name of the same applicant, but indeed registered in Türkiye in the name of different companies.
While the legal process continued in EUIPO as described in the preceding paragraphs, intensive legal proceedings have been initiated also on national basis in Türkiye. For the sake of integrity of information given herein about the legal processes in EUIPO and EU courts, the legal proceedings handled in Türkiye will be separately mentioned in details at the end of this article.
While the legal proceedings continued concurrently in Türkiye, in March 2021, EUIPO Cancellation Division, also examining the claims and applications for invalidity, decided to reject the application for a declaration of invalidity. In said decision, it is argued that the level of reputation of HEPSİBURADA trademark in Europe is not adequate, and there are not adequate findings proving that the applicant was cognizant of "HEPSİBURADA" trademark at the time it filed a trademark registration application, and thus, there are not adequate evidences as to bad faith of the applicant in respect of the subject application. In our opinion, it is unequivocally obvious that the related EUIPO decision is an incomplete decision not based upon a detailed investigation as to merits of the case. Said decision has not ever dealt with such arguments as to the director of the applicant being a Turkish-origin person, and existence of expressions and phrases trying to mislead consumers in www.hepsiburada.life internet page belonging to the same company, and the internet site's being fully in Turkish language.
Exactly at this point, we have faced difficulties in proving that registration of an exactly same trademark by a different applicant is indeed a bad faith act no matter to which extent the level of distinctiveness of the subject trademark is high, under circumstances where a trademark which is extremely well-known and reputed on national basis is not known and reputed in different other markets, and has a limited range of use or even is not ever used therein.
However, that decision has been appealed in EUIPO Board of Appeal on various grounds particularly including the explicitly clear bad faith and intention of the applicant as proven by evidences, and that it is impossible for applicants to be incognizant of the well-known HEPSİBURADA trademark at the time of application.
In the related petition of appeal, it is argued that HEPSİBURADA trademark is an extremely strong and well-established trademark created by D-Market, and is so very well-known and reputed in Turkish consumers, as proven once more by many evidences, and also that Alpak B.V., managed by directors who are Turkish citizens, has acted in bad faith in filing its registration application for that trademark, and it is impossible for them to be incognizant of HEPSİBURADA trademark as of the date of application, and finally that such arguments are further proven by the fact that use of the subject trademark takes aim at Turkish consumers.
Although Alpak B.V claimed in its response petition that the term 'HEPSİBURADA' is a commonly used phrase and composed of the English words 'Everything Here', the EUIPO Board of Appeal accepted all appeal claims filed by D-Market in January 2023 and decided to invalidate the HEPSIBURADA trademark under registration number 017151796.
Before entering into details of the decision of EUIPO Board of Appeal, we would like to state that during the aforesaid process, Alpak B.V. has transferred its contested HEPSIBURADA trademark, no. 017151796 to Dendiki B.V. Thereupon, D-Market has argued that the intention underlying said transfer of trademark was to slow down the legal process in Türkiye, and at the same time, to try to make the legal process pending in Europe more complicated, and has submitted some additional testimonies and evidences with a view to demonstrating the organic links between subject companies by indicating that directors and officers of Alpak B.V. and Dendiki B.V. belong to the same family. Therefore, we are hereinafter going to name the trademark owner as Dendiki B.V. (former Alpak B.V.).
In its related decision, EUIPO Board of Appeal states that the documents filed to EUIPO Cancellation Division already prove the bad faith act of Dendiki B.V., and so, Cancellation Division's disregarding such documents is an error, and the documents initially submitted to support the claim of cancellation clearly demonstrate that Dendiki B.V. was aware of HEPSİBURADA trademark, and thus, the acts of Dendiki B.V. are not honest.
In addition, the EUIPO Board of Appeal stated that Dendiki B.V.'s commercial activities with this trademark being in the e-commerce field, having a manager of Turkish origin, along with D-Market's recognition in Türkiye and being a leading e-commerce provider since 2013, leave no doubt that Dendiki B.V. and its managers were aware of the 'HEPSİBURADA' trademark. Furthermore, it is also clearly stated in the decision of EUIPO Board of Appeal that the intentions and acts of Dendiki B.V. do in no case have a commercial logic or aim at a fair competition in market, but on the contrary, they are obviously in "bad faith", and that purpose of the applicant is to make use of reputation of the trademark, and to constrain D-Market from trading in the European Union zone.
Most importantly, it is expressed by the Board of Appeal that D-Market's activities are developing in EU market since 2016, and its products are being delivered in many member states since that date, and what a coincidence that an application for the subjected trademark just then and at that time.
However, said decision of EUIPO Board of Appeal is brought forward by Dendiki B.V. to the European Union Court of Justice (CJEU) General Court. In its bill of claims, Dendiki B.V. argued:
- That HEPSİBURADA trademark has a low level of trademark protection, and is a part of normal daily language in Turkish language, and HEPSİBURADA trademark is directly related to and associated with the underlying services in the minds of Turkish-speaking consumers; and
- That HEPSİBURADA trademark owned by D-Market is known and reputed only in Türkiye, and does not have such a reputation within the borders of EU, and www.hepsiburada.com web site is only in Turkish language; and
- That D-Market's arguments that its HEPSİBURADA trademark is already being used within EU borders are basically unsustainable, and D-Market is not active in EU; and
- That they are not, and are not required to be, cognizant of HEPSİBURADA trademark; and
- That they do not have any intention as to preclude D-Market from using its trademark, and they use HEPSİBURADA phrase only to indicate that their web site is in essence a sales platform offering different products; and
- That "first come first serve" rule is valid and application in trademark registration.
In response to these arguments, D-Market has continued to stress out its arguments and replies expressed and submitted also before start of legal proceedings. They may be summarized as follows:
- HEPSİBURADA trademark is one of the trademarks created by D-Market, having already reached a high level of distinctiveness, and the highest level of reputation within the borders of Türkiye.
- As Turkish language is not commonly used within the borders of the European Union, HEPSİBURADA is seen as a genuine and created trademark.
- It is contradictory to defend that HEPSİBURADA phrase is not distinctive, but anyhow to try to register the same in its own name and to try to prevent registration of it in the name of D-Market.
- HEPSİBURADA trademark is being used by D-Market also within the borders of the European Union since the year 2017. Besides, the strategy of expansion of a trademark abroad may vary according to many different factors.
- The fact that HEPSİBURADA trademark is well-known and reputed in Türkiye, but is not known much in EU does not alone prove the bad faith act of the applicant. However, it is unreasonable for a Turkish citizen to be incognizant of HEPSİBURADA which is one of the most well-known trademarks of Türkiye. What's more, it is also proven by the fact that Dendiki B.V. introduces itself as "Hepsiburada European Online Sales Website" also in its online sales website serving in Turkish language.
- In presence of bad faith, the "first come first serve" principle is not valid.
As a result of its detailed investigations, CJEU General Court has fully dismissed the action by its judgment no. T-172/73 of February 21, 2024, and has upheld the decision of EUIPO Board of Appeal as to nullification and cancellation of HEPSİBURADA trademark no. 017171796. One of the most important points stated in the related judgment of CJEU General Court is that HEPSİBURADA trademark's not being well-known and even not being registered within the borders of the European Union is by no means related to the assessment of bad faith, and that its reputation in Türkiye is required to be taken into consideration in the assessment of bad faith, and also that bad faith of trademark owner (Dendiki B.V.) must be assessed and examined independently from the distinctive character of "HEPSİBURADA" word sign. Furthermore, it is also expressed in the judgment that the alleged weakness of distinctiveness of HEPSİBURADA phrase is not needed to be discussed because this phrase is the common content in both of the subject trademarks.
As a result of examination of all evidences and testimonies filed in the course of proceedings, it is concluded that the disputed application filed for registration of HEPSİBURADA trademark cannot be said to aim at honest and fair trade in the market, and the applicant in fact tries to make unfair use of reputation of the well-known HEPSİBURADA trademark, and the application is aimed at preventing D-Market's entry into the EU market and for these reasons, such determinations of EUIPO Board of Appeal are also approved and upheld, and it is held that the trademark owner has filed the subject trademark registration application in bad faith.
One of the most important achievements for all trademark owners of this legal proceeding which continued for a fairly long time is that the registration by a third party of a trademark which is exactly same as a trademark not well-known in the geography of trademark dispute may also be considered and treated as a bad faith act by judgments of CJEU General Court, because in line with increase in reputation of trademarks and parallel rise in their commercial value, the bad faith acts affecting them also increase in parallel thereto, and this in turn becomes an overcostly process both in terms of timing and economically for trademark owners trying to protect their trademarks. We hope that particularly an increase of such court judgments taken in international platforms will pave the way for prevention of bad faith trademark registrations to some extent at least.
Dendiki B.V. is still entitled to file an appeal against said judgment in the European Union Court of Justice. Accordingly, our readers will be informed about any development that may change the consequences of said judgment.
As mentioned in the preceding paragraphs herein, while the processes continued in the European Union, parallel legal proceedings were initiated also in Türkiye. Therefore, for the sake of integrity, we deem it necessary to briefly mention about said proceedings as well.
The legal action initiated in the name of D-Market against the related domain name owners is heard in the specialized courts of Intellectual and Industrial Property Rights in Ankara. The subject matter of the litigation is focused on whether or not the defendant has committed any acts infringing on "HEPSİBURADA" trademark rights of the plaintiff or causing confusion with the plaintiff's domain name, and whether or not these acts at the same time constitute acts of unfair competition against the plaintiff, and accordingly, whether or not the claims for determination of trademark right infringement and unfair competition acts, for cessation and prevention of infringement, for stoppage of use of "HEPSİBURADA" phrase as a trademark by the defendant in all channels, for prevention of access to the defendant's http://www.hepsiburada.life internet site, and for prevention of acts which constitute unfair competition are acceptable and well-based. In reliance upon expert reports and other findings and examinations, the First Instance Court has held and judged to uphold the action by coming to the conclusions that the plaintiff party has the right to prevent the defendant party's acts infringing on its trademark rights in reliance upon its trademarks duly registered in Türkiye, and that use by the defendant party of its www.hepsiburada.life domain name and "hepsiburada" phrase contained in that domain name as a trademark in fact creates commercial effects in Türkiye, and that such trademark uses of the defendant party leading to commercial effects in Türkiye are by no means based on a legitimate ground valid in Türkiye, and that such trademark uses of the defendant party pave the way for infringement of "HEPSİBURADA" trademarks owned by the plaintiff party, and so, said acts of the defendant party also constitute an act of unfair competition against the plaintiff party. Thereupon, the defendant party has applead the decision of First Instance Court before Regional Court of Justice. The case file is still being reviewed in the Regional Court of Justice. (Judgment no. 2022/108 in case file 2020/333 of Ankara 5th Civil Court for Intellectual and Industrial Property Rights)
Concurrently, a complaint is filed to Bakırköy Public Prosecutor's Office against domain name owners for start of criminal investigations and criminal action against officers of the suspect company which infringes on the intellectual rights associated to HEPSİBURADA trademarks and www.hepsiburada.com domain name registered in the name of the complainant, arguing that the suspects commit phishing (identity theft) by creating in www.hepsiburada.life e-commerce site an impression as if they are a branch of www.hepsiburada.com site owned by D-Market, and by doing so, they commit two different major fraudulent crimes, namely "fraud by use of information systems as a tool" as described in subparagraph (f) of article 158 of the Turkish Criminal Code, and "fraud by making use of facilities provided by press and media organs" as described in subparagraph (g) of the same article, and as a result, the indictment has been admitted by the court. Thereafter, in the criminal proceedings, the acts of infringement of the suspects on trademark rights are proven, and the Criminal Court held and judged to punish the suspects, but to defer the announcement of the verdict. The suspects filed an appeal against the Criminal Court's judgment, but their appeals are rejected, and the Criminal Court's judgment has become final. (Judgment no. 2023/242 in case file 2021/527 of Bakırköy Criminal Court for Intellectual and Industrial Property Rights)
As a conclusion, these final judgments taken as a result of all these legal proceedings are fairly important for the well-known trademark owners. Particularly considering the efforts and costs spent for strategies adopted by trademark owners in the course of creation of trademarks and then for protection of them, the existence of legal remedies which may prevent bad faith trademark registration applications builds up trust for trademark owners, and at the same time, plays a role encouraging further growth of trademarks.
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.
