Jurisdiction: Turkey
Subject Heading: I.D.1. Similarity of Marks
Case Name and Citation:

SANYS GROUP CD.LTD. vs TURKISH PATENT INSTITUTE and DAIMLERCHRYSLER AG Case No. 2011/355; Decision No.2012/69 (4TH Ankara Court of Intellectual and Industrial Rights, February 14, 2012)





Marks Associated with Goods/Services:

The plaintiff’s “” trademark application no.2006/27393 covering goods in class 12.

Nature of Case:

Court action instituted for cancellation of the refusal decision of the Turkish Patent Institute regarding the trademark application upon acceptance of defendant’s (Daimlerchrysler AG) opposition due the similarity with the plaintiff’s trademarks nos. 99/016976, 133179, 101798, 177954, 126507 and 2004/05891
on the basis of likelihood of confusion.

Prior Decisions:

Turkish Patent Institute has refused the plaintiff’s trademark application ” in respect of goods in class 12.

Overview of Decision and Ruling:

The plaintiff has asserted that:

  • there is no similarity between the subject device trademark and accordingly there is no likelihood of confusion,
  • the subject trademark is registered for the goods in Class 12 in China, Nepal, Australia, Syria, Korea, Laos, Hungary, Mexico, Taiwan and many countries signatory of Paris Convention,
  • despite the defendant’s trademarks are registered for the goods in classes 1-28, they are actually used only on goods consisting of automobile,
  • however, the defendant’s trademark covers only the construction vehicles and building equipment included in Class 12,
  • since automobile is an expensive product and it requires the consumers to spare a long time for evaluation, there is no any likelihood of confusion in terms of goods,
  • and therefore requested cancellation of the TPI’s decision about the trademark applied for.

The TPI as the Defendant; has stated that the subject court action is not justified and therefore has requested that it should be rejected.

The other defendant DAIMLERCHRYSLER AG asserted that:

  • the subject trademark application is similar with its the above mentioned device trademarks,
  • the star device trademarks are associated with defendant’s “Mercedes” trademark and enjoy highly reputation, are used on vehicles with “Mercedes” brand and are protected widely in accordance with Paris Convention,
  • possible registration of the subject application will cause a wrong impression in the eye of the relevant consumers that there is a relationship between the plaintiff and the defendant companies,
  • by rendering information about the defendant company, it is not possible to consider that the plaintiff is unaware of the reputation of the trademarks of the defendant in the world and in Turkey,
  • the plaintiff acts in bad faith,
  • the subject trademarks may create connotation and may be perceived as series of trademarks before the consumers,
  • and requested that the subject court action should be rejected in that the TPI’s decision issued regarding the trademark application in question as the subject of the court action is justified.

In the reasoned decision issued by the court;

  1. About the similarity it is stated as follows:

    • There is no disputes that the subject trademarks cover identical listing of goods,
    • The application trademark is a device trademark comprised of three segments inside a circle in the appearance of a triangle/star,
    • Four of the cited trademarks of the defendant company are device trademarks in the appearance of a triangle/star inside a circle,
    • Although the trademarks are not identical, the parties’ trademarks are very similar in terms of device element, moreover, the triangle form inside a circle constitutes the essential component of the subject trademarks, furthermore, the trademarks of both parties comprise the white lines rendering the feeling of shine and the segmented structure inside a triangle,
    • On the other hand, considering the trademarks as a whole, it cannot be expected from the consumers to make comparison of the trademarks by placing them side by side. Namely, when a significant part of the average group of consumers being aware of the defendant’s trademarks with device elements meet the application trademark with device element as similar to the device elements of the defendant on the goods from the same kind, they

      • will immediately establish an association between two trademarks under the effect of the recollection of the prior trademarks in their minds,
      • may assume that the application trademark is a series of the trademark of the defendant,
      • may assume that the Mercedes company has initiated a new business of construction machinery, motorcycles and bicycles with a new trademark after automobiles, trucks and buses, therefore the likelihood of confusion is very high,
    • The fact that the target group of consumer acts more knowledgeably because it purchases expensive goods, will not affect the result, therefore the rejection of the subject application is justified.

  2. About the notoriety it is stated as follows:

    • In the concrete event as the subject of the case, as stated in the expert report, the defendant company’s registered device trademarks which are used on luxury automobiles together with a worldwide trademark “Mercedes” since many years,
    • The history of the company is over one hundred years, it has won many competitions and awards, it is one of the most reputable automotive companies in the world, still sells millions of cars annually, the subject device element is an original and highly distinguishing sign in terms of the goods for which it is registered,
    • The application trademark with device element is very similar with to the defendant’s trademarks and seeks for registration for almost identical goods,
    • The likelihood that the application trademark will damage to the high level of distinctiveness of the defendant’s well-known trademark and unfairly benefit the applicant is very high.

In considerations of the explanations and evidences submitted in the file and the expert reports, the court has decided that the case shall be rejected and the refusal decision of TPI as the subject of the case shall be upheld in that the trademark applied for shall be rejected.

Importance of Case:

Although the device components of the trademarks as the subject of the case are not identical, the Court has retained that the similarity of the trademarks in respect of similar goods under the same class would lead to risk of confusion and association between the trademarks on the basis of the reputation enjoyed worldwide by the defendant’s device trademarks.



Contributing Firm: Deris Attorneys At Law Partnership