I.E. Bad Faith
DICKEY-JOHN CORPORATION has instituted an action against KEMAL KANTAR ÖLÇÜ KONTROL SİSTEMLERİ İTHALAT PAZARLAMA VE TİCARET LİMİTED ŞİRKETİ, ABP ÖLÇÜ KONTROL SİSTEMLERİ İTHALAT PAZARLAMA TURIZM VE TİCARET LİMİTED ŞİRKETİ and KEMAL KANTAR for;
1- The determination that the DICKEY-JOHN+device trademark, genuinely belongs to the Plaintiff DICKEY-JOHN CORPORATION,
2- The determination that the DICKEY-JOHN+device trademark registered in the name of the Defendant Company is registered in bad-faith and of which registration infringes the Trademark, Copyright and Trade Name rights of the Plaintiff and the prevention thereof,
3- The assignment of the trademark formed of the denomination DICKEY-JOHN+device registered in the name of the Defendant Company, based on the assertion that the defendant parties are the authorized Turkish distributors of the plaintiff, (In case the Court should not decide the assignment, the cancellation of the DICKEY-JOHN+device registered in the name of the Defendant Company) and
4- The Publication of the decision within one of the three most widely circulated Newspapers of Turkey.
The plaintiff claims that its International trademark application DICKEY –JOHN filed through the World Intellectual Property Organization (WIPO) also designating Turkey, has been rejected by the Turkish Patent Institute, based on the prior DICKEY-JOHN+device registered in the name of the Defendant Company and that the DICKEY-JOHN+device trademark genuinely belongs to the Plaintiff DICKEY-JOHN CORPORATION, which also covers the presently used identical “logo” element and the Trade Name of the Plaintiff infringing the Copyright together with the Trade Name of the same. Furthermore, the Plaintiff claims that the Defendant Company has been the local Distributor of the Plaintiff for many years in Turkey and therefore requests the illegal registration of the DICKEY-JOHN+device trademark to be assigned to their side.
The defendants asserted that, they are the supplier of the Plaintiff in Turkey and they had introduced and sold the subject DICKEY-JOHN+device trademark in Turkey for many years. The Defendants further claims that, through the usage of the DICKEY-JOHN+device trademark in Turkey, many imitative products has roused and despite all the warnings of the Defendants against the Plaintiff, the Plaintiff did not take action against such imitation, thus they have left to register the DICKEY-JOHN+device trademark in Turkey on protection basis and therefore the bad-faith claim of the Plaintiff is groundless.
The Court decision states that, in light of the submitted declarations and evidences it is understood that; The plaintiff has been using the trademark DICKEY-JOHN+device for the electronic machines concerning farming business and the respective machines has been sold around the world through 300 distributors, which the same has also been sold in the Turkish markets long before the registration of the DICKEY-JOHN+device registered in the name of the Defendant Company and as the result of long standing and extensive use of the trademark DICKEY-JOHN+device together with the quality thereof, the DICKEY-JOHN+device trademark has become distinguished.
Thus, the Plaintiff is qualified to enjoy the right provided under Articles 8/3 and 8/4 of the 556 No. Decree Law.
The Court further accepts that that the “logo” element together with the original color and graphical elements (as given below) of the Plaintiffs trademark is subject to Copyrights as an Art product according to the Bern Agreement, 5846 No. FSEK( Turkish Law on Intellectual and Artistic Works) 556 No. Decree Law Article 8/5 .
Defendant’s Mark Plaintiff’s Mark
Furthermore, within the scope of the submitted claims and supportive evidences thereof, the Court held that the Plaintiff is the Turkish distributor of the Plaintiff since 1988 -over 20 years- and the Defendants could not prove and submit any evidences showing a justified reason for the registration of the DICKEY-JOHN+device trademark
Consequently, the Court accepted the action and decided that the DICKEY-JOHN+device trademark belongs to the Plaintiff, the defendant’s trademark DICKEY-JOHN+device is registered bad-faith and infringes the Trademark, Copyright and Trade Name rights of the Plaintiff and ruled for the assignment of the DICKEY-JOHN+device trademark to the Plaintiff together with the Publication of the decision in one of the three most widely circulated Newspapers of Turkey.