ADVANTAGE CASE SUMMARY
|Subject Heading:||Similarity of Marks, Bad Faith, Well-known Trademark|
|Case Name and Citation:||
HSBC BANK A.Ş. vs THE TURKISH PATENT INSTITUTE & ALCATEL LUCENT FR, Case No. 2010/44; Decision No.2011/233 (1st Ankara Court of Intellectual and Industrial Rights, December 13, 2011)
HSBC BANK A.Ş.
1- THE TURKISH PATENT INSTITUTE
|Marks Associated with Goods/Services:||
The trademarks of the plaintiff are “ADVANTAGE MALL DEVICE”, “ADVANTAGE”, “ADVANTAGE DEVICE”, “A ADVANTAGE”, “A ADVANTAGE MALL”, “ADVANTAGE YATIRIM DEVICE”, “ADVANTAGE TATİL DEVICE”, “ADVANTAGE ROUGE, “ADVANTAGE NAKİTPUAN”, “ADVANTAGE HESABI A DEVICE”, ADVANTAGE CAMPUS DEVICE”, “ADVANTAGE BLACK “, “ADVANTAGE BANKACILIK PAKETİ”, “ADVANTAGE AKILLI LİMİT,” ADVANTAGE TATİLPUAN”, “ADVANTAGE MİLPUAN”, “AVANTAJLI HESABIM” and are registered in all classes and all contain the word “ADVANTAGE”.
The defendant has applied under no: 2008/6497 for the registration of the trademark “TRANSFORMATION ADVANTAGE” in respect of the goods and services in classes of 09, 16, 38, 41 and 42.
|Nature of Case:||
Court action instituted for the withdrawal of TURKISH PATENT INSTITUTE final administrative decision which was ruled that “TRANSFORMATION ADVANTAGE” application of the defendant and the abovementioned well-known trademarks of the plaintiff are not similar to each other in their overall visual and phonetic aspects.
The Plaintiff has filed an opposition against the TRANSFORMATION ADVANTAGE application on the basis of his prior well known ADVANTAGE indication bearing trademarks. However this opposition has been refused by the TPI on the basis that there is no likelihood of confusion between the trademarks. Following the refusal decision the Higher Council of the Turkish Patent Institute has again rejected the objection of the plaintiff and upheld that the trademarks in question are not confusingly similar and that the application of the trademark TRANSFORMATION ADVANTAGE should prosecute to registration.
|Overview of Decision and Ruling:||
In its petition the plaintiff asserted the following points:
First Defendant the Turkish Patent Institute requested the rejection of the action by asserting that the trademarks in question are not similar; accordingly would not be a subject to a confusion before the consumers.
Second defendant asserted that the refusal decision of the Higher Council is justified, motivating the following points:
In the light of the evidences submitted by the parties and of the experts report which are in plaintiff’s favor, The Court has determined that:
|Importance of Case:||
This decision is very important because with it, the court emphasized that in the evaluation of similarity; if one of the grounds is notoriety of prior trademarks, even though prior well known trademarks are registered in all classes from 1 to 45, the focus should be on the goods and services which the prior trademark is well-known for, not all the goods and services the same is registered for only purpose of protection. In view of this point, in the present case, due to the fact that there is a low degree of similarity between the trademarks in question, and there is not sufficient similarity between the specifications of the trademarks since the goods and services for which the plaintiff’s trademark is known for, do not overlap with the goods and services of the trademark of the defendant, it has been ruled that the trademarks are not confusingly similar with each other. Consequently, as much as the similarity of the signs, the similarity of goods and services are important for assessing confusing similarity since these two conditions for confusing similarity should be dependent as well as in balance with each other.