IAR CASE SUMMARY TEMPLATE
|Subject Heading:|| I.F Famous and Well-Known Marks
I.D.1. Similarity of Marks
|Case Name and Citation:||Cancellation of the refusal decision of the Higher Board of Turkish Patent Institute (4th Ankara Court of Intellectual and Industrial Rights, Case no.2011/38, Decision no.2011/339, October 17, 2011)|
|Plaintiff:||TURK TELEKOMUNIKASYON A.S.|
|Defendant:||TEKNOTEL ELEKTRONIK MUH. SAN. VE TIC. LTD. STI.|
|Marks Associated with Goods/Services:||The Plaintiff’s trademark registration nos. 2008/39907, 2008/39828, 2008/40788, 2006/58328 TT DSL, TT ADSL, TT AILE KART covering classes 09 and 42 and TT covering class 38. The Defendant’s registration no. 2009/18777 TTS covers the goods/services in classes 09 and 42.|
|Nature of Case:||Cancellation action based on likelihood of confusion due to similarity of Marks and on the notoriety of plaintiff's trademark.|
|Nature of Case:||The plaintiff Turk Telekomunıkasyon A.S. instituted a court action against Teknotel Elektronık Muh. San. ve Tıc. Ltd. Stı. and the Turkish Patent Institute for the cancellation of the final decision of the Higher Board of TPI regarding the refusal of the opposition filed in the name of the plaintiff against the “TTS” trademark application, for the goods in classes 09 and 42 on the grounds that; the defendant’s “TTS” trademark is confusingly similar with the plaintiff’s prior well-known “TT” trademark and other “TT DSL”, “TT ADSL”, “TT AILE KART” trademarks, registered for the goods in class 09, 38 and 42 in the sense of 556 Decree Law, Article 8/1 (b)1 and 8/42 based on “likelihood of association”, “confusion”, “notoriety”.|
|Prior Decisions:||Not relevant|
|Overview of Decision and Ruling:||
The court decides that although the trademark “TTS” and “TT DSL”, “TT ADSL”, “TT AILE KART” trademarks are not similar, since “TTS” has been found slightly similar to the “TT” trademark registered in class 38 which is well-known in the telecommunication sector, the decision of the Higher Board of TPI has been partially cancelled with respect to the related goods/services covered in classes 09 and 42 namely as; “Antennas, satellite antennas, amplifiers and parts thereof… Scientific and industrial examination, research services; engineering services…” due to the possible likelihood of association between the trademarks.
The Court accepts that “TTS” and “TT DSL”, “TT ADSL”, “TT AILE KART” trademarks are not similar.
Furthermore, although the similarity degree between “few letter combination” trademarks are found to be low, the TTS and TT trademarks have still been evaluated as slightly similar. Nevertheless since the subject trademarks does not cover any common goods/services the minor similarity per se has not been accepted strong enough to cause confusion among consumers. Within this evaluation, the Court grants that the subject trademarks will not cause any likelihood of association unless there is common or related goods/services or fame of the plaintiff’s trademark.
Within this frame, it has been determined that the “TT” trademark of the defendant is well-known in the telecommunication sector and thereby although the trademarks TT and TTS have not been found similar enough to cause a direct confusion, due to the effect of the notoriety of the TT trademark, the usage of the TTS trademark in respect of telecommunication services, namely as “Antennas, satellite antennas, amplifiers and parts thereof… Scientific and industrial examination, research services; engineering services…” goods /services has been granted to cause unfair advantage of the fame of the TT trademark as well as unfair competition.
As a result, the Court rules the partial cancellation of the TTS trademark with respect of telecommunication services, namely as “Antennas, satellite antennas, amplifiers and parts thereof… Scientific and industrial examination, research services; engineering services…” goods /services due to the usage and registration thereof causing unfair advantage of the notoriety of the TT trademark as well as damaging the level of the distinctiveness of the well-known character thereof.
|Importance of Case:||This decision is important because it establishes that trademarks which bears even a slight similarity may still cause confusion due to the notoriety of the well-known character of the prior trademark.|
|Contributor Firm:||DERIS PATENTS & TRADEMARKS AGENCY|
1 Article 8: Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions:
b) Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing.
2 Article 8/4 :A trademark applied for which is identical or similar to a registered trademark or to a trademark application with a prior date of filing may be used for different goods and services. However, where in the case of a registered trademark or of a trademark application with a prior date of filing, the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark application with a prior date of filing, upon opposition by the proprietor of the prior trademark registration or application, the trademark applied for shall be refused even if it is to be used in respect of differing goods and services.