The Turkish Patent Institute (TPI) hasprovided wider protection for a well knowntrade mark against an application filed for dissimilar goods, considering that the application may be to the detriment of the distinctiveness of the well known trade mark.
The applicant, Cevdet Akif Usta, applied to register its trade mark (illustrated, right) before the TPI for goods in class 20; this application was published in the Official Trade mark Bulletin on December 12, 2011.
Guccio Gucci S.p.A filed an opposition to the application and indicated that;
- the trade mark application HUCCI includes the same “U-C-C-I” letters which led to a visual and aural similarity with its own mark which might cause a likelihood of confusion on the part of the public,
- the well-known status of GUCCI trade marks should be considered when examining the similarity of the marks, even though the goods covered by the marks were dissimilar,
- registration of the applied-for trade mark would be detrimental to the distinctive character of the trade mark and take unfair advantage of its reputation,
The TPI accepted the opposition and stated that the trade mark application was visually and phonetically similar to the well-known trade mark GUCCI ; even if the goods covered in the application belonged to a different sector to those of GUCC, its registration would be detrimental to the distinctive character of the well-known GUCCI trade mark.
By this means, even though GUCCI did not have registration or prior use for”furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics” in class 20, the TPI provided broader protection for GUCCI in order to prevent dilution of its distinctive character.
Consequently, this decision clearly establishes that TPI provides wider protection for well known trade marks against applications that cover totally different goods/services, considering that the use of well known trade marks on dissimilar goods/services may cause dilution of the well known trade mark.
First published by Marques in Jun 27, 2013.
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