IAR CASE SUMMARY TEMPLATE
|Subject Heading:||I.D.1. Similarity of Marks
I.E. 1. Bad Faith
|Case Name and Citation:||INFINITY v. INFINITY (INFINITY CASE)
Case No: 2010/12
Decision No: 2011/56
(Beyoglu Court of Intellectual and Industrial Rights, March 1, 2011)
|Defendant:||TAYAS GIDA SANAYI VE TICARET A.S.|
|Marks Associated with Goods/Services:||
The Plaintiff’s trademark INFINITY1 (essential part of the trade name of the Plaintiff) covers the goods in classes 29 and 30. The defendant’s trademark “INFINITY”2 registered in classes 29 and 30.
|Nature of Case:||
The Plaintiff claims the invalidity of the Defendant’s registered trademark which is identical with its INFINITY trademark in Turkey and its trade name according to the articles 7/1 (b)3 of the Decree–Law No: 556, and which has been mistakenly/unjustly registered due to an error between the records of WIPO and TPE.
|Overview of Decision and Ruling:||
The Court states that the Plaintiff’s “INFINITY” trademark has been used as from 2003 in Turkey and determines that the “INFINITY” trademark which is identical with the INFINITY trademark has been registered with bad faith and is invalid. In its decision The Court did not accept the argument of the Defendant who claims the difference of the relevant consumers.
The IP Court considered that there was a risk of substantial confusion between the trademarks. In its opinion, considering the prior use of the Plaintiff’s INFINITY trademark, the bad faith of the defendant by filing the INFINITY trademark is obvious. Thus, the case has been ruled in favor of Unilever.
|Importance of Case:||
This decision is important because it establishes that the regulation provides protection to trademarks based on the prior use thereof in the sector.
This decision is important because it establishes that the likelihood of confusion possibly created by the overall impression conveyed by word–picture or three-dimensional marks usually will not be overcome by the presence of differing word elements.
|Images/Description:||INFINITY / INFINITY (word marks)|
|Contributing Firm:||Deris Patents and Trademarks Agency|
1 Application No: 2008 /60938
2 Registration No: 2007 70227
3 Article 7: Following signs shall not be registered as a trademark:
b) trademarks identical or (almost) identical to the point of being indistinguishably similar to a prior trademark registration or application in respect of good(s) or service(s) whether identical or of identical nature/type...