If a party had followed such a strategy before a recent decision issued by the Re-Examination and Evaluation Board of the TPI, the opposition against the new application would most probably have been rejected by the TPI on the ground that the application was based on a valid earlier registration and that the TPI does not have any legal obligation to wait for the finalisation of a court action. Further to such decision, the party would probably have waited for the registration of the opposed application and filed a cancellation action. In a nutshell, the practice of the TPI towards earlier registrations was very protective, and even conservative.
However, in a recent landmark decision, in total contradiction to its longstanding approach, the TPI has explicitly stated that earlier registrations subject to a cancellation action should not grant any right to their owner.
In this case, Asustek Computer Inc had not registered its famous ASUS logo in Turkey, but the word mark ASUS had been registered for goods in Class 9 of the Nice Classification since 1998. In 2012 Asustek realised that a Turkish textile company had registered several variations of the famous logo in its own name in Classes 18, 25 and 35, and that the logo was being used on clothing goods. Asustek filed a court action requesting the cancellation of the Turkish company's bad-faith registrations based on:
- its genuine ownership of the famous ASUS logo;
- the bad faith of the Turkish company; and
- the well-known status of the ASUS logo.
Asustek's well-known logo:
The Turkish company's registration:
At the beginning of 2012, simultaneously with the cancellation action, the Turkish company applied for the registration of the ASUS logo in Class 35 (retailing services), and Asustek opposed. Since the Turkish company had previous registrations for the disputed logo, Asustek's chance of success was very low, as it had been established that success in such opposition proceedings depended on success in the cancellation action. As expected, at first instance the TPI rejected the opposition, stating that the applicant had earlier trademark registrations for the disputed ASUS logo.
Asustek filed an appeal against the first instance decision, considering that the cancellation action would have a positive effect on the examination of the appeal, and requesting that the TPI wait for the outcome of the cancellation action. Since there is no regulation forcing the TPI to wait for the outcome of a cancellation action, it was not expected that the TPI would choose to wait at least for the decision of the first instance court to issue a more precise decision.
Following Asustek's appeal, the TPI refused the application of the Turkish company, stating that the earlier registrations did not constitute a legal basis for the registration of the new application, since Asustek had filed a cancellation action against the earlier registrations.
To the best of the authors' knowledge, this is the first time that the TPI has accepted that an earlier trademark which is being challenged in a cancellation action cannot constitute a legal basis for a new registration. It is hoped that this decision will become common practice in the future and will prevent unnecessary costs for additional cancellation actions.
First published by WTR in Mar 06, 2015.