KAPPA CASE SUMMARY
Jurisdiction: TURKEY
Subject Heading: I.F Famous and Well-Known Marks
I.D.1. Similarity of Marks
Case Name and
Citation: KAPPA v. KEPPA SPORTSWEAR K DEVICE, 3rd Ankara Civil Court of Intellectual and Industrial Rights Case No: 2008/297, Decision No: 2010 /09
Plaintiff: KEPPA TEKSTIL SAN. TİC. LTD. ŞTİ.
Defendant: 1- KAPPA BASIC TRADEMARKS SA
2- TURKISH PATENT INSTITUTE
Marks Associated
with Goods/Services: The Plaintiff’s trademark application KEPPA Sportswear K Device has been applied for the goods in classes 24, 25 and 26.
The defendant’s trademarks “KAPPA” is registered in classes 03, 09, 18, 25 and 28 – “ROBE DI KAPPA” is registered in classes 09, 18, 25 and 28 - “ROBE DI KAPPA” is registered in class 25 – “KAPPA” is registered in class 25.
Nature of Case: The Plaintiff claims the cancellation of the refusal decision of the Higher Board of Turkish Patent Institute regarding the trademark application KEPPA Sportswear K Device thereof motivates the following points:
- he has acquired rights on the trademark KEPPA on the basis of the prior trademark registration thereof and the same has been in use for 4 years. Now the present trademark application has been created as a version of the prior one without changing any main character of the same.
- even if the cited prior trademarks are well-known trademarks, there is not any similarity between trademarks and the covered goods by thereof as per the articles 7/1 (b) , 8/1 (b) , 8/4 and 35 , of the Decree–Law No: 556 thanks to the additional “sportswear” indication.
Overview of Decision
and Ruling: The First Defendant requested the rejection of the action asserting that;
- the Client’s trademarks are well-known trademarks in Turkey as well as all over the world.
- the Client’s trademarks and the present trademark application are indistinguishably similar and there is likelihood of confusion between the same as well.
- The trademark application may damage the distinguishing character and reputation of the Client’s famous trademarks and Unfair benefit will be obtained from this registration by taking advantage of the notoriety of the trademark
The second defendant asserted that the refusal decision of the Higher Board is justified motivating the following points:
- the cited trademarks and the present trademark application are indistinguishably similar and there is only one letter between the main components of them.
- The additional “sportswear” indication, which is a descriptive word for the covered identical goods, is not enough to distinguish such trademarks.
Consequently, the Court rejected the action (for all goods) and ruled that there was a risk of substantial confusion between the trademarks due to the strong similarity of the main word indications KAPPA – KEPPA and the identity / similarity of the covered goods on the basis of the notoriety of the cited KAPPA trademarks thereof.
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.
Images/Description:
Contributor Firm: Deris Patents and Trademarks Agency