A Turkish court has held that UGG was a well-known trademark in Turkey within the context of a cancellation action.
The plaintiff, a Turkish company importing boots from Australia, challenged the registration of the UGG mark, owned by Deckers Outdoor Corporation. The plaintiff claimed that the trademark should be cancelled on the grounds, among others, that it was generic.
The plaintiff, a Turkish company importing boots from Australia, challenged the registration of the UGG mark, owned by Deckers Outdoor Corporation. The plaintiff claimed that the trademark should be cancelled on the grounds, among others, that it was generic.
On two separate occasions during the proceedings, the plaintiff sought a preliminary injunction preventing Deckers from using its rights in the UGG mark against it. The first request for a preliminary injunction was rejected by the court at the beginning of the proceedings. The second request resulted from raids conducted at the plaintiff's premises following a trademark infringement complaint by Deckers. The plaintiff argued that an injunction should be granted on the grounds that Deckers used its trademark rights to interfere with its business.
The court also rejected the second request, holding that the subject matter of the case was the cancellation of the trademark; the aim of the proceedings was not to prevent trademark infringement or to obtain a declaration of non-infringement.
The court also rejected the second request, holding that the subject matter of the case was the cancellation of the trademark; the aim of the proceedings was not to prevent trademark infringement or to obtain a declaration of non-infringement.
The court decided to appoint experts to examine the case. In their report, the experts stated that UGG was not generic in Turkey; on the contrary, it was a well-known trademark under Article 6(1)bis of the Paris Convention, as was also demonstrated by a survey submitted by Deckers. The plaintiff challenged the findings of the report and submitted its own survey. However, even the plaintiff's survey included some results that were favourable to Deckers, as they showed that UGG was perceived as a trademark by consumers.
The court nevertheless decided to obtain an additional report in order to address the objections of the plaintiff; however, in the second report, the experts confirmed the findings of the first report. The court thus rejected all the plaintiff's claims, concluding that:
The court nevertheless decided to obtain an additional report in order to address the objections of the plaintiff; however, in the second report, the experts confirmed the findings of the first report. The court thus rejected all the plaintiff's claims, concluding that:
- the word 'ugg' does not have any meaning in Turkish; and
- awareness of the UGG mark among consumers resulted from the efforts of the trademark owner.
In addition, the court determined that UGG was a well-known trademark within the meaning of Article 7/1(i) of the Turkish Decree Law, which refers to Article 6(1)bis of the Paris Convention. As a result, the court not only found that UGG was not generic in Turkey, but also recognised the well-known status of the mark in the country.
The decision was not appealed by the parties following an out-of-court settlement in which they resolved other pending civil and criminal actions. The decision has thus become final. Deckers, in addition to winning this case, has also had the benefit of having the UGG mark recognised as well known by the court, which may result in the recording of UGG as a well-known trademark by the Turkish Patent Institute.
The decision is significant in that the court applied the principle of territoriality when determining whether the mark was generic, and examined the perception of the trademark by Turkish consumers only. In addition, the decision shows that the efforts made by the trademark owner to market and promote a trademark will be an important tool when defending cancellation actions on the grounds of genericness.
First published by WTR in Oct 20, 2011.