SKF CASE SUMMARY
Jurisdiction: TURKEY
Subject Heading: I.D.1.Likelihood of Confusion & I.F.Famous and Well-Known Marks
Case Name and
Citation: SKF v. F.S.K (SKF CASE) Beyoğlu Civil Court of Intellectual and Industrial Rights, Case No: 2008/69 Decision No: 2009/48
Plaintiff: AKTIEBOLAGET SKF
Defendant: FISEK HIRDAVAT TIC. SAN. A.S.
Marks Associated
with Goods/Services: The Plaintiff’s trademark SKF registered in classes 04, 06, 07, 08, 09, 11, 12, 16, 17, 35, 37, 38, 39, 40, 41 and 42 - SKF registered in classes 04, 06, 07, 08, 09, 11, 12 - SKF registered in classes 16, 35, 37, 39, 40, 41, 42, SKF in classes 04, 06, 07, 08, 09, 10, 12, 17, SKF in classes 07, 12. The defendant’s trademark FKS registered in class 07.
Nature of Case: The Plaintiff claimED the invalidity of the Defendant’s registered trademark which is almost identical with its well-known trademark in Turkey according to the articles 7/1 (b) , 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 Court decided that the conditions exist for the cancellation of the defendants’ trademark considering the identity between the SKF trademarks of the plaintiff and F.S.K. trademark of the defendant, which would give rise to a “likelihood of confusion” as per their overall appearance.
In this regard, the Court has stated that the overall view of the trademark shall be considered when assessing the possibility to cause “likelihood of confusion”. Therefore, in case the trademarks bear an indistinguishable similarity at first sight as an overall appereance, this shall be accepted as an objective criteria to deem the trademarks as likely to give rise to a “likelihood of confusion” before public.
Moreover, in accordance with ongoing decisions of Supreme Court, the likelihood of confusion shall be assesed in accordance with visual, phonetic, conceptual similarity between the trademarks, the overall appearance of the trademarks including their dominant and secondary elements, whether the trademarks are reminiscent of each other or not, the educational and social position of the intended population, the value of the good on which the trademark is used and the time wasted to buy the respective good by the consumer. Additionally, “the average consumer” shall be taken into account when considering the aforementioned criterias.
Furthermore, the Court has reffered to the term of “likelihood of association” which shall also be taken into account in the “likelihood of confusion” evaluation. The court has also indicated the fact that the term “likelihood of association” is a notion used to determine the existence of the likelihood of confusion rather than an alternative concept, even though the existence of “likelihood of association” is not enough to deem the presence of “likelihood of confusion”.
In the light of all, the Court has stated that the trademarks has deemed to be indistinguishable which are likely to give rise to a “likelihood of confusion” including a “likelihood of association” and the trademarks would leave the impression of tail-series trademarks owned by the same company.
Moreover, the Court has presented that the defendant has no possibility not to know the SKF trademarks as an actor in the same sector and is under the burden to act as a prudent businessman. Thereby, the defendant shall be deemed to register the trademark in bad-faith in the view of the respective liability in accordance with Article 20 of Turkish Commercial Code and shall be deemed to act with the intention of taking unfair advantage from the notoriety of the SKF trademarks.
The Court also held that the plaintiff’s SKF trademarks are well-known according to the Paris Convention on the basis of the evidences submitted to Court since the company has numerous registration all over the world and has been operating for many years.
Thus, on grounds of likelihood of confusion, notoriety, bad-faith basis of Article 7/1 (b), Article 8/1 (b) of Decree Law No. 556, Article 6 bis of Paris Convention, Article 7/1 (ı), 8/IV and Article 42 of Decree-Law No. 556, the court ruled for the invalidation of defendant’s F.S.K. trademark reg. no. 2005/52873 for goods in class 07.
Importance of Case: This decision is important because it establishes the criterias to determine “likelihood of confusion” and provides protection to well-known trademarks
Images/Description:
Contributor Firm: Deris Law Office