Jurisdiction: Republic of TURKEY / Beyoglu Court of Intellectual and Industrial Property rights
Subject Heading: I.F Famous and Well-Known Marks
Case Name and Citation: CARLSBERG v. CASBERG (CARLSBERG CASE)
Docket No: 2008-40
Decision No: 2009 -03
Plaintiff: CARLSBERG A/S
Defendant: Kerem KURTULUS
Marks Associated
with Goods/Services: The Plaintiff’s trademark CARLSBERG ( essential part of the trade name of the Plaintiff) registered in class 32, 33 and 34 – CARLSBERG BEER registered in classes 32 - CARLSBERG PROBABLY THE BEST BEER IN THE WORLD registered in class 32 - CALSBERG PROBABLY THE BEST RITUAL IN THE WORLD registered in class 32 and 41 – CARLSBERG PART OF THE GAME 25 / 28 / 32 / 36 / 41 / and CARLSBERG NON-ALCOHOLIC BEER registered in class 32. The defendant’s trademark “ CASBERG” registered in class 24,25 and 35.
Nature of Case: The Plaintiff claims the invalidity of the Defendant’s registered trademark which is almost identical with its well-known trademark in Turkey and its trade name according to the articles 8/1 (b) , 8/4 of the Decree–Law No: 556, dupl. Article 6 of the Paris Convention and article 8 of the same Convention .
Overview of Decision and Ruling:
The plaintiff claims that its Company is one of the world leaders in the sector and its registered trademark CARLSBERG, which is the essential part of its Trade Name, filed before the Turkish Patent Institute is a well-known trademark in Turkey due to intense advertisement and promotion activities and its rank in the list of spontaneous remembering rate among all the beer trademarks in Turkey, and the Defendant’s trademark “CARSBERG” registered with bad –faith in class 24,25 and 32 benefits from the reputation of the Plaintiff’s trademark which is almost identical as visual and phonetic terms.
The defendants asserted that, the component court is Istanbul Civil Court of Intellectual and Industrial Property Rights, and that the defendant became a well-known producer of suits on the market, that there is no similarity between trademarks in terms of production and name that although the Plaintiff produces beer, it filed a suit on another good, which shows its lack of sincerity and requested the rejection of the case.
The Court decision states that, in light of the submitted declarations and evidences it is understood that; the Plaintiff’s trademark is a well-known trademark in the frame of the WIPO criteria regarding well-known trademarks, application of the Court of Appeal will benefit from protection in the scope of the Paris Convention.
Thus, the Plaintiff is qualified to enjoy the right provided under Article 7/1(i) , which refers to the dupl. Article 6 of the Paris Convention, and the Defendant could not use “CARSBERG” trademark, which is almost identical with the Plaintiff’s trademark despite the difference of the goods and services. In this scope, the court determines that the regulation provides protection to well-known trademarks against the use of identical or similar marks to distinguish dissimilar goods or services.
Consequently, the Court accepted the action and ruled that the defendant’s CASBERG is registered with bad-faith and infringes the well-known Trademark and Trade Name rights of the Plaintiff and the invalidity of the CASBERG trademark.
Importance of Case: This decision is important because it establishes that the regulation provides protection to well-known trademarks against the use of identical or similar marks to distinguish dissimilar goods or services.
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Contributor Firm: Deris Patents and Trademarks Agency