Proving dilution: the situation in Turkey

Dilution cases can cause difficulties for brand owners while opposing a third party application before the Turkish Patent Institute (TPI). Article 8/4 of Turkish Trademark Decree Law no 556 reads as follows:

“A trademark applied for which is identical or similar to a registered trademark or to a trademark with an earlier date of application may be used for different goods and services.

However, where in the case of a registered trademark or of a trademark which has an earlier date of application for registration the trademark has a reputation and where the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark with an earlier application date, upon opposition by the proprietor of the earlier trademark, the trademark applied for shall not be registered even to be used for goods and services which are not similar to those for which the earlier trademark is registered.”

The TPI examines cases as follows:

•  Whether the opponent has an earlier application/registration for the mark that is claimed as a well-known mark in Turkey;

•  Whether the marks are confusingly similar including the risk of being linked;

•  Whether the opponent’s mark has a reputation/is well-known in Turkey ;

•  If the applicant could take unfair advantage of the level of fame;

•  Whether there may be harm to the earlier mark’s reputation; and

•  Whether the opposed mark would harm the distinctive character of the earlier mark.

If even one of the first three conditions is not fulfilled, there is no need to examine the claim further. However, if the first three requirements are met, then fulfilment of one of the last three conditions is enough to decide in favour of the opponent.

The law does not provide for refusal of each and every mark that is identical or confusingly similar to a well-known mark, since fame is only one of the six conditions stated, meaning each dilution case is a challenge.

When considering similarity between the marks, the TPI’s looks at “whether in public’s mind these two signs would be linked”. When examining the case from this point of view, the TPI also takes into account the criteria indicated in Articles 7/1-b and 8/1-b. There is no need to point out that highly distinctive marks get more benefit from the well-known criterion.

While examining good/services, the TPI looks for the correlation in similarity between the marks and goods/services. However, if the similarity between goods/services is lower but the similarity between the marks is higher, the opponent will still have a good chance of success. Our experience shows that examiners pay more attention to class lists from the Nice Classification while examining an application, but look at the picture more broadly during opposition proceedings.

From the wording of Article 8/4 it is understood that the last three criteria would be “likely”, but the effects also need to be predictable and probable. This means just making the argument is not enough.

In principle, the claimant should prove its claims or at least has to be convincing that there is a serious risk. For that reason, the opponent is under the burden to prove its claim with written evidence.

If the opponent’s mark is registered in several classes then the TPI examines its well-known status for each good/service and if it decides that it is well-known only for some goods/services, then only these are taken into account during the dilution examination.

"In both court and TPI decisions it is clearly indicated that the criteria applied in the Paris convention for well-known marks are also applied to article 8/4 in Turkey."

In both court and TPI decisions it is clearly indicated that the criteria applied in the Paris Convention for well-known marks are also applied to Article 8/4 in Turkey. Meanwhile, a mark can be not well-known but be known in the public. As understood from the wording of Article 8/4 and TPI practice, TPI’s focus is on activities and reputation in Turkey.

Therefore, for dilution claims, only evidence related to Turkey is counted whereas evidence about foreign jurisdictions is not.

Reputation should have developed before the opposed mark’s date of application. This means opponents have to be careful about the date of their evidence. In many cases, this point is missed by the opposing party. Fame is assessed by reference to the ‘related sector’.

When looking at the issue of unfair advantage, the TPI does not look for intention to harm the opponent but for unfair advantage by benefiting from the earlier mark’s reputation and its distinctive character. The other criterion is whether consumers are likely to link the two marks.

Examples of harming the reputation of a mark include using the brand on lower-quality products and using the mark in a humiliating way, among others. Evidence should be submitted to prove the harm.

When it comes to damaging the distinctive character of a mark, this means decreasing the distinctive character of an opponent’s mark through use of it by different entities simultaneously for different types of goods and services in the market. The use weakens the fame and identity of the brand. The more well-known the opponent’s mark, the more this risk heightens.

However, if during examination the applicant can prove that the same mark is used in different sectors in the market by separate entities, this counter-argument may negatively affect the opponent’s claim. In the same context, if the applicant can prove that the opponent did not oppose applications of other third parties for the same/similar mark, it can be taken that the opponent was not concerned that consumers would be confused or link the marks.

There is no difference between wordmarks and device marks when it comes to dilution cases. In one case, we opposed a Turkish application consisting of a ‘Herbalife’ device used consistently with a sub-brand.

The Appeal Board accepted our claims even though the first opposition was refused because of class difference. According to our experience, dilution claims are mostly refused in the first opposition step before the TPI, but the Appeal Board examines them in more detail and may accept them.

Özlem Fütman is a founding partner of OFO Ventura. She can be contacted at:
ofutman@ofoventura.com.tr