Turkish textile company AG Tekstil filed an opposition against the application for the registration of the trademark AG ADRIANO GOLDSCHMIED by Adriano Goldschmied LLC, the owner of the well-known trademark AG (and device). The opposition and appeal were rejected. Another action filed by Tekstil seeking the annulment of the Turkish Patent Institute’s Higher Board’s decision was also rejected, thereby allowing the registration of the trademark AG ADRIANO GOLDSCHMIED. During the course of the dispute, it was discovered that Tekstil had registered the well-known trademark AG (and device) of Goldschmied, depicted below, in addition to several trademarks including the letters 'A' and 'G'.
Goldschmied filed an action before the specialised IP Court requesting the cancellation of Tekstil's AG (and device) mark; it alleged that it owned the logo and that Tekstil had acted in bad faith. The plaintiff did not argue that it had a monopoly over the letters 'A' and 'G'; in addition, none of the claims related to the other registrations belonging to Tekstil that included these letters, but were not similar to Goldschmied's logo or trademarks.
Tekstil alleged that Goldschmied could not file a cancellation action against its trademark because:
- it had not filed an opposition against the registration of the mark during the opposition period; and
- the AG (and device) mark was not registered in the name of Goldschmied in Turkey.
Tekstil argued that it had been using the letters 'A' and 'G' since 1996 as the core element of its trade name and trademarks, and that it was the first one to use the AG (and device) mark in Turkey.
The court noted that the AG (and device) mark was registered in the name of Goldschmied in many countries, and that its use could be demonstrated by online searches and the evidence submitted by Goldschmied. Further, the AG (and device) mark had a sui generis composition due to its unique calligraphy. The court established that Tekstil had registered a mark that was identical to the plaintiff’s trademark, as registered with the World Intellectual Property Organisation, and had even copied the original calligraphy of the letter 'G'. In light of these findings, the defendant’s argument that its trademark had been chosen in good faith (due to the presence of the same letters in its trade name) was groundless, particularly when considering that the companies are active in the same sector.
The court also stated that the evidence of use of the AG (and device) mark submitted by Tekstil did not prove that the latter had a prior right; on the contrary, the fact that Tekstil uses a mark that is identical to that of the plaintiff, which is registered abroad, and the fact that Tekstil uses an identical calligraphy for the letter 'G', proved that Tekstil had imitated the plaintiff’s mark. It was also established that Goldschmied was the owner of the mark, and that the mark had obtained cross-border recognition. As a result, the court decided to cancel Tekstil's trademark based on:
- Goldschmied's genuine right of ownership; and
- Tekstil's bad faith.
This decision shows that owning a prior registration does not necessarily provide protection to the trademark owner if the latter has blatantly copied the trademark of a third party, irrespective of whether that trademark is used/registered in the country or not. The period for filing an appeal has not yet ended; in case of an appeal, the decision of the Court of Appeals would be eagerly awaited.
First published by WTR in Mar 16, 2012.