Infringement And Defenses- Famous Marks
“VITRA /KNOLL VITRA” Trademarks
“ ”- Vitra International
(*) This case has been cited in the Journal of Istanbul Bar Association (Issue No. 2003/2) where the names of the parties concerned and the court of first instance are not cited.
(**) 11th Civil Chamber of the Supreme Court
2000/5199-2000/8216 (26.10.2000)
An action (*) was instituted for the determination and stopping of unfair competition.
The plaintiff claimed that it has created a reputation around the trademark VITRA, registered the same first in 1968 and recorded it also as a “well-known” trademark before the Turkish Patent Institute and that accordingly, the importation and sale of KNOLL VITRA office furniture constitutes an act of unfair competition for the consumers are deceived that they think that this trademark and the goods sold under are related to the plaintiff as well.
The defendant objected that they are the authorized distributors of the KNOLL and VITRA companies located abroad and that the manufacturer company Vitra International established first in 1930 in Switzerland has registered the word VITRA as a trademark since 1950’s namely since 1956 in the country of origin and since 1974 before WIPO in such way that it is to be protected in Turkey according to the international agreements in force.
The Court decided that since only two of the defendant’s registrations an earlier priority whereby 12 of them are dated after 1974, there is no bad faith on the part of the plaintiff, that article 6/f 3 of the Paris Convention is not applicable as are also not applicable the provisions of the Madrid Protocol having regard to the date of institution of the action, that due to the recordal of the plaintiff’s trademark as a “well-known trademark” it enjoys of protection irrespective of classes so that the acts of the defendant constitute an act of unfair competition and accepted the action.
Upon defendant’s appeal (**) the Supreme Court has upheld the decision of the first instance Court on grounds that according to articles 3 and 6 of the Decree Law no.556 Trade/Service trademark protection is based on territoriality in such way that a locally registered trademark enables its registrant to prevent its use in the country without his authorization independently of whether the non-authorized trademark is registered or not in another country and that, article 9/2-c of the same Decree Law no.556 expressly provides that the importation of goods bearing such a trademark constitute a trademark infringement