I.D. Similarity of Marks
ETI GIDA SANAYI VE TICARET A.S. instituted an action against the Turkish Patent Institute for the withdrawal of its final decision refusing the plaintiffs’ trademark application for “DEVICE+ DR. OETKER BROWNI” in classes 30.05 and 10 on the grounds of indistinguishably similar trademarks “DEVICE+ETI BROWNI”, “BROWNI” and “BROWNI” in accordance with Article 7, paragraph 1, subparagraph (b) of the Decree-Law on the Protection of Trademarks (Decree-Law No. 556) and against DR. AUGUST OETKER NAHRUNGSMITTEL KG. for the cancellation of their trademarks no.2005/5754 “DEVICE+ DR. OETKER BROWNI” respectively, cited against the plaintiffs’ trademark application.
The plaintiff asserted that the above mentioned BROWNI trademarks are used by their end actively as of the first registration date (approximately since 18 years) and thus the said trademarks have acquired distinctiveness. Furthermore the statement that the semantic meaning of the word “browni” is “a kind of cake” is incorrect, since 18 years ago at the time of the first registration of the plaintiff’s trademark BROWNI which is an English word, there was not the possibility that the Turkish meaning of the said word was to be known.
The defendant Institute asserted that its decision was consistent with the provisions of Decree-Law No. 556. The defendant, DR. AUGUST OETKER NAHRUNGSMITTEL KG., asserted that the denomination “BROWNI” on which the action has been based, has a meaning of “a kind of cake” in Turkish and which can be used by every one . Therefore the registration and the protection of the said word as a trademark is not possible according to the Article 7/1 ( c) of the Decree Law no.556 and the situation that the said denomination was somehow registered in the name of the plaintiff does not change the reality. Moreover, there can not be discussed of the similarity between the trademarks registered in the name of the parties.
The Court, in accordance with the evidences submitted as well as the export report, held that
(1) The plaintiff’s trademarks and the defendant’s trademark are used for identical or almost identical goods in classes 30.5 and 10.
(2) the trademark applied for is indistinguishably similar with the essential BROWNI element of the cited trademarks, since the denomination “DR. OETKER” covered in defendant’s trademark is the leading trademark already registered in the name of the defendant company. The denomination “DR. OETKER” and the device element which has secondary importance and which cannot be remembered by the potential consumers without any reminder, do not have an essential effect with regard to the similarity in visual and phonetic aspects.
Where the potential consumers see the defendant’s trademark, they would remember directly the BROWNI trademarks registered in the name of the plaintiff company and therefore there is risk of confusion between the trademarks. In the light of above mentioned the registration of the defendant’s trademark is not right according to the Article 7/1 (b).
(3) Furthermore considering that the goods under BROWNI trademarks are sold for cheap prices which are cake and food products with intensive consumption, which are marketed at the same selling points and same shelfs for the similar needs of similar consumer profile , there can be discussed of risk of confusion. In this scope, it has been determined that the trademarks registered in the name of the parties are similar to each other in respect of their visual and intellectual aspects and according to the Article 8/1 (b) the registration of the defendant’s trademark is not possible.
(4) The court has determined that it was not known by the consumers between the years 1986-2000 that the denomination “BROWNI” has a meaning of “a kind of cake” and therefore there is no legal balk for the registration of the plaintiff’s trademark in respect of the Article 7/1-c of the Decree Law no.556. Furthermore taking into consideration that the trademark BROWNI is being used actively by the plaintiff since 1986 and is perceived by the majority of potential consumers as of the year 2004 as plaintiff’s trademark, it is obvious that the denomination BROWNI is independent from its semantics and becomes a reminder instrument between the plaintiff and its products.
As to the counter action filed by the defendant for the cancellation of the trademark registrations no.2000/03884 BROWNI on grounds of non-use and lack of distinctive character/descriptiveness and of the trademark 2003/4365 BROWNI GOLD for lack of distinctive character/descriptiveness (1st Chamber of the Specialized Court of Ankara file no.2007/217) the Court held that:
-Although the registrations subject to the counter action have been registered in 1986 and 2000 and the five years time period for filing a cancellation action has expired, the defendant has the aim by filing the said counter action to wait the subject case and to make alive the registration for the trademark subject to the main court action. This kind of counter court actions are called in the practice and in jurisprudence as “torpedo” which is contrary to the good-faith and equity principles.
- In the evaluation of the claim with regard to the cancellation of the Higher Council’s decision, the Court will evaluate the validity of the grounds of the decision at the date of issuance of the decision. In the subject case, at the date of issuance of the decision the plaintiff’s trademarks were registered and valid. The cancellation of the said trademarks afterwards do not effect the subject case in respect of the cancellation of the Higher Council’s decision. Therefore it is not to be waited the results of the cancellation action which has been instituted as counter action.
In the light of above mentioned the Court has ruled that,
-Accepting the plaintiff’s request, cancellation of the Higher Council’s decision no.2005/M-4183 with regard to the subject trademark no.2005/5754
- the invalidity of the trademark no.2005/5754 which is subject to the case
- Charging the defendant to pay all the expenses for the litigation costs .