ECHO Case Summary - 2012

Yamabiko Corporation. vs Barbaros Ozer; Case No. 2011/308; Decision No.2012/66 (4th Istanbul Court of Intellectual and Industrial Rights, March 22, 2012)

Plaintiff's trademark no.2011/51144 “ECHO” covering goods in classes 7 and 8 and defendant’s trademark registration no.2006 29461 “ECHO” in classes 7 and 8.

Court action instituted for the assignment of defendant’s trademark registration no.2006 29461 “ECHO” to the plaintiff or to its cancellation on the basis of distributorship between the parties and the bad faith of defendant.

*The plaintiff Yamabiko Corporation operating in the field of chainsaws as from 1963 claimed that; they are the real right owner of ECHO trademark, that their trademark application was ex-officio rejected by the Turkish Patent Institute due to the prior ECHO trademark registration in the name of defendant Barbaros Ozer, that the defendant was their former distributor and that therefore the trademark registration was filed in bad faith.

*The defendant asserted that; as the action was not instituted within the deadline of 5 years, the plaintiff shall evidence the bad faith; that they promoted ECHO trademark and that plaintiff shall evidence their ownership on ECHO trademark.

*In light of the evidence submitted by the parties, the Court determined that:

-there was distributorship between the parties in the years 2006 and 2007, that the plaintiff is the real right owner of ECHO trademarks, that the plaintiff is using their ECHO trademarks in various countries including the home country Japan.

-the defendant should obtain the authorization of the trademark owner and have a valid ground for the registration of conflicting trademark on their behalf in accordance with Article 17 of the Decree Law no.556. However in the present case the defendant could not evidence such authorization and the valid ground. Therefore it has been decided the assignment of ECHO trademark to its real right owner, Yamabiko Corporation.

-on the other hand since the use of a registered trademark shall not constitute a trademark infringement until it is cancelled upon a finalized court decision, the Court has rejected the plaintiff’s claim for trademark infringement.

The Court ruled to the partial acceptance of the court action by the assignment of defendant’s trademark registration no.2006 29461 ECHO to the plaintiff and by rejecting plaintiff’s claim for the prevention of manufacturing, sales and promotion of ECHO branded products until its assignment to the plaintiff.

-the defendant appealed before the Supreme Court and their appeal is pending.

The decision is exemplary for the assignment of a third party registration to the real trademark owner and the bad faith retained on the basis of distributorship agreement.