When partnerships go bad: the Technisat case

The saga between German electronics company Technisat and Turkish company Sigma started with an email message in 2001, when Sigma asked to be Technisat’s distributor for SkyStar branded products in Turkey. Negotiations resulted in a non-exclusive agreement, but the relationship did not have a happy ending. Sigma registered the SkyStar brand under its name.

While we were preparing for a cancellation action on Technisat’s behalf, a statement appeared on Sigma’s website saying “SkyStar is the brand of German company Technisat and Sigma registered the brand in its name to give a ‘lesson’ to the brand owner”. We passed this statement to the court, then filed a lawsuit claiming cancellation of Sigma’s registration. That was the starting point of a 10-year battle.

There were two plaintiffs: Technisat Digital SA and Technisat Digital GmbH. The one that worked with the defendant was Technisat Digital SA (in those days the company name was Technisat Data Services SA). The other client, Technisat Digital GmbH, was the brand owner which registered the SkyStar mark in its name in Germany in 1997 and before the Office for Harmonization in the Internal Market (OHIM) in 2000, and then licensed it to the other defendant.

After the lawsuit began, the judge in charge left for maternity leave for six months meaning that during that period, judges who attended the hearings did not decide on any crucial points in the file. She came back but then left for another six months.

Therefore, for a year nothing major had happened, which was very difficult to explain to the client. Later, a new judge was appointed to that court and then another new one. So, time was passing by but no developments were occurring. Meanwhile, the defendant was submitting numerous petitions to the file and we were responding, so as a result the file became big and heavy.

Until the end of lawsuit, the owner of the defendant company attended all the hearings along with his lawyer, and set forth arguments personally. During this period, the defendant applied to another court for determination of evidence stating that SkyStar was a registered brand in the US in the name of a third company and claimed that our client was not the rightful brand owner. However, that registration, before the US Patent and Trademark Office, was in Class 14 and not in Class 09.

The defendant also claimed that it made the brand known in Turkey, that products it sells under the SkyStar3 mark are manufactured by it, and that the packages of products are different. It also claimed that Technisat Digital SA had no right to file the lawsuit because its licence agreement with the other Technisat company was not exclusive, and that the case should be dismissed because the company which had business with the defendant was Technisat Data Services SA, not Technisat Digital SA.