MAX vs. MAXDEN Case Summary - 2011

UNILEVER N.V. vs YENI MAGAZACILIK A.S. & T.P.I., Case No. 2010/212; Decision No.2011/145 (Ankara 2nd Court of Intellectual and Industrial Rights, June 23, 2011)

Plaintiff's MAX trademarks especially registered in classes 29 and 30 and defendant's trademarks “MAXDEN” no.2008 61364 registered in classes 29,30 and 32

Court action for cancellation of the TPI’s decision¹ of partially rejection of the application MAXDEN and for total cancellation of the trademark MAXDEN on the basis of similarity/likelihood of confusion and notoriety of plaintiff's trademark MAX according to the Articles 8/1 (b)² and 8/4.³

The opposition filed by the plaintiff against the subject trademark MAXDEN was partially accepted by the TPI in respect of “Ice cream, edible ice” only. The objection filed by the plaintiff against the application for its cancellation in respect of remaining goods was rejected by the Higher Council of the TPI. Therefore the plaintiff has instituted a court action against the TPI (as decision maker) and the applicant (as trademark holder) for cancellation of the TPI’s decision and for totally cancellation of the subject trademark.

The plaintiff claimed that; MAX is a well-known trademark by supporting such claim with related documents/ information, that defendant’s MAXDEN trademarks are confusingly similar to their worldwide known MAX trademark in their overall in respect of visual and phonetic aspects due to their creation by addition of the syllable “DEN” to plaintiff’s well-known MAX trademark, that specifications of the trademarks are overlapping/directly connected and both of the trademarks are being used in the same sector where consumers might be confused by the first impression of the trademarks. And requested from the Court the cancellation of defendant’s trademark registrations for MAXDEN.

The defendants TPI and YENI MAGAZACILIK A.S. claimed that the trademark MAXDEN cannot be considered as confusingly similar to plaintiff’s MAX trademark. And that the plaintiff’s MAX trademarks are not well-known. Even if plaintiff’s trademark MAX should be accepted as well-known, this would not change the result in respect of risk of confusion evaluation. And requested from the Court the rejection of the court action.

In the light of the evidences submitted by the parties and of the expert report, the Court has determined that:

• In a similarity evaluation the trademarks should be evaluated in their overall together with their distinctive elements but not separately and only in respect of their identical elements.
• The main element of the plaintiff’s trademarks is MAX and that this denomination is distinctive enough,
• The defendant’s trademark consists of addition of the syllable “DEN” to plaintiff’s trademark MAX and such difference is not sufficient for differentiation of the trademarks from each other.
• specifications of the trademarks are overlapping/directly connected,
• The use of MAXDEN for identical goods would lead to a wrong impression before the average consumer that MAXDEN belongs to MAX trademark series.
• The goods covered by the trademarks have same distribution channels and can be considered as substitute goods.
• Even if it could be understood that these trademarks are different from each other, the trademarks would lead to a wrong impression that the owners of these trademarks are administratively or economically connected to each other,
• The MAX trademark has obtained a well-known status in view of the strong advertising activities and long term usage which is not limited with the sector it is used in,

In the light of the above mentioned the court has ruled to the cancellation of the TPI’s decision and the totally cancellation of defendants trademark no.2008 61364 “MAXDEN” even in respect of remaining goods and to the deletion of the related records from the trademark registry and prevention of the use of these trademarks after the finalization of the cancellation and to charging the defendant to pay all the expenses for the litigation costs.

The Court has acknowledged the high level of distinctiveness and notoriety of the trademark MAX and has been convinced that the defendant can take advantage from the reputation of plaintiff’s well-known MAX trademark and that this can damage the distinctiveness of the plaintiff’s trademark.