Overview of Decision
and Ruling:
|
The plaintiff has asserted that:
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;
- 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.
- 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.
|