|Case Name and
Kimberly Clark Worldwide Inc. vs Turkish Patent Institute; Case No. 2011/308; Decision No.2012/66 (1st Ankara Court of Intellectual and Industrial Rights, April 21, 2009 ) and Case no.2009/12693, Decision no.2011/14407 (11th Chamber of Supreme Court, October 25, 2011 notified beginning 2012)
|Overview of Decision
*The plaintiff filed an application before the Turkish Patent Institute for the acknowledgement of well-known status of KLEENEX trademark. The Turkish Patent Institute rejected the well-known trademark application with its decision no.2007-M-5979 on grounds that KLEENEX trademark is not used in Turkey, that since most of the Turkish consumers do not see and purchase KLEENEX branded products in the market, they can not have any awareness with respect this trademark.
-The plaintiff asserted that they are operating in the related business area as from 1872, that they own various well-known trademarks such as KLEENEX, KOTEX, HUGGIES and SCOTT, that KLEENEX:
* was created in 1924 and being used in Turkey in 1971,
*was determined as the first brand in the field of “image intensity” and “reputability” in USA, West Europe, Japan, Soviet Union and Hong as a result of the investigation conducted by Landor Associates
*was ranked among 100 brands that changed the USA by Brand Marketing
*was also shown among the most valuable brands in many reports prepared by A.C. Nielsen, Interbrand and Business Week.
and that the defendant has referred to the well-known status of KLEENEX trademark in its decision with regard to the opposition filed against the trademark application no.98/7159 “CLEANEX ULUSLARARASI TEMIZLIK VE BAKIM SISTEMLERI VE SERVISLERI VE FUARI” in class 35.
-The defendant asserted that; there is not any court decision referring to the well-known status of KLEENEX trademark, that the sales figures and the other documents submitted to the file are not sufficient for acknowledging the well-known status of KLEENEX trademark, that as a result of the examination of the file, it has been decided that KLEENEX trademark was not associated with the goods. Therefore and since KLEENEX trademark was not used in Turkey, it was decided the rejection of well-known trademark application.
-The Court appointed a panel of experts for the evaluation of parties claims and assertions. The experts stated in their report that:
* the notoriety in Turkey shall be taken into consideration during the evaluation of well-known trademark application
* upon the evaluation of the file it has been understood that, KLEENEX is a well-known trademark in many countries abroad but in the mean time the denomination has become generic.
* the documents and the information submitted to the file are not sufficient to evidence the well-known character and use of KLEENEX trademark in Turkey.
-In the light of the evidences submitted by the parties and the experts’ report, the Court decided that there is not any document evidencing the local use of KLEENEX in Turkey and its awareness before Turkish consumers.
The Court ruled to the rejection to the action with its decision dated April 21, 2009.
-The plaintiff appealed before the Supreme Court requesting the withdrawal of the decision of the 1st Ankara Court of Intellectual and Industrial Rights.
-The Supreme Court issued a decision with the case no.2009/12693 and the decision no.2011/14407 by accepting the appeal of plaintiff on grounds that:
*The well-known trademark is not defined both in the Paris Convention and the Decree Law no.556 as the Paris Convention priorities that everybody does not need to effectively know the mark, but that the mark may be known.
*Furthermore the well-known character of a trademark does not depend on its use, registration or awareness in Turkey in that what is important is that the mark may be identified in Turkey.
*In the present case although KLEENEX branded products were not sold in Turkey, it should be accepted that KLEENEX was known by the sector importing and exporting the cleaning products.
-The Supreme Court has decided the withdrawal of the decision of the 1st Ankara Court of Intellectual and Industrial Rights.
-Upon which the file was forwarded to the 1st Ankara Court of Intellectual and Industrial Rights where the Court overturned from its initial decision and issued a new decision inline with the Supreme Court decision by accepting the well-known status of KLEENEX trademark.
-The defendant appealed further before the Supreme Court requesting the reconsideration of the decision. The appeal is still pending.