Jurisdiction : Republic of Turkey / 4th Istanbul Court of Intellectual and Industrial Rights
Subject Heading: III.A.4.Unfair, Unauthorized or Improper Use
Case Name and Citation: JAGUAR CARS v. JAGUAR GİYİM & HASEL AYAKKABI,
Case No.2006/46, Decision No.2009/9
Plaintiff: JAGUAR CARS LIMITED
Defendant:JAGUAR GİYİM SAN VE TİC LTD ŞTİ & HASEL AYAKKABI SAN VE TİC LTD. ŞTİ.
Marks and Associated Goods/Services:
The plaintiff's trademarks, registered in many different classes including 12, 18 and 25 consist of the word element JAGUAR and of the logo/device element in form of a Jaguar head. Defendants clothing products (covered in class 25) bear JAGAUR trademark or the denomination JAGCLUB with the same of the JAGUAR head logo covered in plaintiff's well-known JAGUAR trademarks
Type of Action: JAGUAR CARS LIMITED instituted an action against JAGUAR GIYIM SAN. VE TIC. LTD. STI. and HASEL AYAKKABI SAN VE TIC LTD. STI. on the basis of infringement and unfair competition related to their JAGUAR and JAGUAR+DEVICE trademarks requesting the determination and prevention of the trademark infringement and unfair competition .
The plaintiff claimed that;
-their trademarks for JAGUAR and JAGUAR+DEVICE are well-known
-the defendants are using JAGUAR and JAGUAR+DEVICE trademarks and the denomination JAGCLUB which leads to confusion with these JAGUAR trademarks on the clothing products they are producing, on the packages and commercial materials thereof and on their commercial correspondences.
-Thus the defendants are trying to obtain unfair benefit from the reputation of plaintiff’s JAGUAR trademarks and to associate such use by their end with plaintiff’s JAGUAR trademarks
-upon plaintiff’s complain before the office of the director of public prosecutions, some of the defendant’s products and commercial materials have been seizured
-the defendants own domain name registrations www.jagclub.com.tr and www.jaguar.com.tr for the denominations JAGCLUB and JAGUAR
- the denomination JAGUAR is covered in the trade name of the defendant company JAGUAR GIYIM SANAYI.
And requested from the Court,
-the determination of defendant’s use of JAGUAR and JAGUAR+DEVICE trademarks and of the denomination JAGCLUB which leads to confusion with these JAGUAR trademarks on the clothing products they are producing, on the packages and commercial materials thereof and the prevention of such actions constitute trademark infringement and unfair competition
- the cancellation of the domain names www.jagclub.com.tr and www.jaguar.com.tr registered in the name of the defendant’s
-charging the defendants to pay compensation for moral and material damages and for harming the reputation of JAGUAR trademarks
-the removal of the denomination JAGUAR from the trade name of the defendant company JAGUAR GIYIM SANAYI
-the destruction of the materials used in the production of the infringing products and of the commercial materials and
-the announcement of the decision in the newspaper.
The defendants rejected all of these claims and stated that there does not exist trademark infringement or unfair competition or confusion between the trademarks and requested from the Court the rejection of the court action.
All of the two expert reports and additional reports obtained during the action were in favor of the plaintiff where all of the claims mentioned by the plaintiff were accepted and it has been confirmed that there exist trademark infringement and unfair competition and that the plaintiff has been damaged.
Furthermore according to the TPI’s statement, it has been accepted that plaintiff’s JAGUAR trademark is well-known as of 1996 and therefore provides to its holder an extensive protection.
In the light of the explanations and evidences submitted to the file and of the expert reports the Court has partially accepted the action and has decided to:
-the determination of defendant’s use of JAGUAR and JAGUAR+DEVICE trademarks on the clothing products they are offering for sale, on the advertisement and commercial materials thereof and the determination of the fact that such actions constitute infringement of plaintiff's trademark rights and also unfair competition
-the prevention of such actions instituting trademark infringement and unfair competition
-the determination of the fact that defendant's use of the denomination JAGCLUB together with the JAGUAR HEAD logo constitutes trademark infringement and unfair competition and the prevention of such actions by destruction of the infringing products, the packages and commercial materials thereof.
-the prevention of the access from Turkey to the web-site www.jaguar.com.tr registered in the name of defendants and prevention of the use of JAGUAR trademark and JAGUAR HEAD logo in the content of the web-site www.jagclub.com.tr
-the payment of compensation by the defendants to the plaintiff for plaintiff's moral and material damages and for harming the reputation of plaintiff's JAGUAR trademarks considering plaintiff's material damages and that that defendants actions are culpable.
-the removal of the denomination JAGUAR from the trade name of JAGUAR GIYIM SANAYI VE TIC LTD. STI. and the amendment of the defendant's trade name accordingly
-charging the defendants with all of the litigation costs
-the announcement of the summary of this decision after its finalization in one of the three newspapaers in Turkey with most circulation rate and pressed all over Turkey
Overview of Final Decision and Ruling:
Court has accepted the trademark infringement and unfair competition occurred due to the use of the denominations JAGUAR and JAGCLUB together with the JAGUAR head logo by the defendants on their products and commercial materials thereof and due to their use of the domain names www.jaguar.com.tr and www.jagclub.com.tr and due to the use of the denomination JAGUAR in one of defendants trade name
Importance of Case: This decision is important because it establishes that the use of a denomination similar to one of the well-known trademark together with its related logo constitutes trademark infringement and unfair competition.
Contributor Firm: Deris Patents and Trademarks Agency