The applicant filed a trademark application for the sign depicted below, seeking registration in Class 3 of the Nice Classification:
The opponent is the owner of prior trademark registrations with WIPO for the exact same sign and has been using that sign for the same goods for years. It opposed the application pursuant to:
- Article 8/3 of the Decree Law No 556 on the Protection of Trademarks (genuine rights of the opponent);
- Article 8/4 (well-known status of the cited trademark);
- Article 8/5 (opponent’s rights in its commercial name); and
- Article 35 (bad faith of the applicant when filing the trademark application).
Upon examination, the TPI upheld the argument based on Article 35 of the Decree Law (bad faith), but dismissed the other opposition grounds. The TPI stated:
"As a result of the examination of the opposition petition and its annexes, it has been determined that the device and word elements in the application have been used by Arbonne International LLC and that there are registrations before WIPO for these elements. When comparing the trademark of the opponent and the device and word elements in the application, it has been found that the trademarks are identical and confusingly similar and that it is not possible to accept that the application has been filed in good faith, as it is totally identical to the cited trademark. Therefore, it has been concluded that the application was filed in bad faith pursuant to Article 35/1 and the opposition has been found to be appropriate."
According to Turkish trademark law, oppositions are first examined by the examiners at the Trademarks Department Directorate within the TPI. In this type of examination, the examiners generally issue very short decisions either accepting or refusing each ground of opposition, without further reasoning.
The present decision is notable in that it contains a thorough reasoning in terms of the opponent’s bad-faith claim. It shows that the examiner analysed the evidence comprehensively and provided a detailed reasoning concerning this part of the opposition.
Another particularity of this decision is the fact that the TPI accepted the bad-faith argument as the only ground for refusal, and rejected the remaining grounds for opposition. Usually, the TPI accepts the bad-faith argument when it is coupled with other grounds for refusal, such as the identity of the signs or the well-known status of the opponent’s trademarks. Thus, it is surprising that the TPI rejected the remaining opposition grounds and that bad faith was considered as the sole ground for refusal.
Additionally, the TPI usually looks for tangible evidence - such as a prior licensing agreement or an email chain between the applicant and the opponent - to substantiate the bad-faith claim. However, in the present decision, it deemed that prior use of the sign by the opponent and the opponent’s registrations before WIPO were sufficient. It did not require a trademark application or registration in Turkey. This decision is thus significant for Turkish trademark law practice and it is hoped that it will help to protect the rights of trademark owners against bad-faith filings.
First published by WTR in Nov 25, 2015.