THE REGISTRATION REQUEST OF A SAME OR SMILAR BRAND FOR DIFFERENT GOODS AND SERVICES AND THE CONSTITUTION OF EXPLOITATION (MarkPSC m.8/f.4)

The rule and its exception

Within the scope of trademark law it is possible for a same or similar brand to be used for different goods or services.

However, if a brand has reached some sort of famousness level in society, this could hinder the registry of the same brand for different goods or services.

The conditions of the exceptions

        •It requires that an unfair benefit has been supplied or that it damages the reputation of the brand or that it damages the distinguishing features of the brand.

        •Moreover, ever so one of these conditions are existing, there should not be any justification that justifies the use of the brand.

Who Can Object?

Only those who registers or applies for the registration of the brand that has reached a certain level in the society. 

The Source of the Provision:

The provision in question is taken from the a clause of the 4th paragraph of the 4th article of the Directive number 89/104. The Directive that states that in circumstances which can trigger the damage of the power of the brand or its reputation, the same or smilar brand cannot be registered for different goods or services and that if it has been registered, the registry must be canceled, has offered a possibility of choice for the member states.  

Although in the Directive similar brands have been mentioned, this question has not been mentioned clearly in PSC. However, in general, the doctrine is in the opinion that it would be appropriate for similar brands to be taken into this scope, because the foundation of the decision in question is this text.

In addition to this, in the decision of French Supreme Court dated 29.06.1999, it is stated that the protection of a recognized brand can only be made for the same or similar brands and that the protection does not involve similar brands. According to this decision, in situations in which not the one to one same brand but the fake one of the recognized brand is used, the protection that has been supplied for the recognized brand will be carried on according to the general rules of responsibility law.

CJEC however, in its decision dated 23.10.2003, states that it is not necessary for the protection of a brand to possess possibility of mixing among brands. It also states that it would be enough that this usage which takes advantage from the reputation and characteristic features of the recognized brand is not based on a rightful justification or that it is such as a damaging threat to the recognized brand.

For the protection of recognized brands to contain different goods and services, it is stated in the 3th paragraph of the 16th article of TRIPs, the brand should be registered in the country in which a protection is required.  In this context, in countries that are involved in any TRIPs agreement, if the recognized brand is not registered in its own class, it should not be possible for this brand to attain protection for different goods and services.  

What is a Brand that have Reached a Certain Level of Recognition in Society?

Although the concepts of a brand that has reached a level of recognition in the society and a recognized brand are not totally same, there are no criteria that would differentiate between them.                               

Despite the concept of “a brand that has reached a level of recognition in the society” is broader in scope compared to “a recognized brand”, it is lower in terms of recognition level.[1] Every recognized brand is also a brand that has reached a level of recognition in society. However a brand could have reached a level of recognition in the society even though it it not a recognized brand.

While Coca Cola and Pepsi Cole are recognized brands, a brand like “Fresh Cola” that is known in certain areas can be accepted as a brand that has reached a level of recognition in society.[2]

The Conditions of Utilizing Unfair Advantage:

Utilizing unfair advantage is to transfer unjustifiably the reputation and image that arises from the recognition of the brand to some other products that does not possess this attractiveness.[3]

For a brand to reach a level of recognition, it generally requires big investments and expenses.  The brand reaches a level of recognition as a result of research and development activities to offer more quality products and as a result of expenditures in advertisement and promotion campaigns.[4]

In Germany there are court decisions that state that the use of Whiskey brand “Dimple” in cosmetic products and the brands of “Rolex” and “Dunhill” in t-shirts constitute unfair advantage. 

And the Supreme Court, in almost every decision it makes, states that in the event that the recognized brand is used in different goods, this damages its reputation in the eyes of the society and it also supplies an unfair advantage. This attitude of the Supreme Court is criticized by itself in the discipline.

The fact that an unfair advantage is being utilized should not be accepted unconditionally but this question should be studied. In some cases, the usage of a brand in a sector which is different from its own, will not supply an unfair disadvantage for the brand whose request for registration is made after.

The Condition of Damaging the Reputation of the Brand:

The usage of a recognized brand in different countries deceives the consumer and makes them think that this brand also has production and marketing in other areas and as a result of this the reputation of the brand is damaged. This damages the function of advertisement and guarantee of the recognized brand.[5] The usage of the brand in more than one product results in the decline of the power of the brand and its area of effect. These kinds of situations are known as “trademark dilution” .[6]

For example the usage of the pharmaceutical brand “Asprin” as a cigarette brand damages the reputation of the brand. [7]

Even though the image of the brand is not destroyed, the utilization of the tempting effect of the brand is accepted as exploitation of reputation.

Supreme Court has also come to the conclusion that the usage of recognized brand in low quality products damages the reputation of the brand. The Supreme Court has decided that if the brand “Ford” is used by some other firm as a brand for spare parts, there would be a possibility that these spare parts in question are not in the same quality as the brand. And this alone could destruct the demand and trust of the brand and as a result, damage the reputation of the brand in the eyes of consumers.[8]

The Condition of the Damage of the Characteristics of the Brand:

In the 5th article of PSC number 556 it is stated that “brand is a mark that serves to differentiate the goods and services of an organization from the others. However the provision about the damage of characteristic feature is different in the 8th article of PSC.

The 8th article of PSC includes the 5th article is also much more broad than the 5th article. Point to be taken from the 8th article is the identification of the brand with the goods they promote and also its power to remind the goods or services to the consumers.[9] The Council of State in our country has rejected the registration of the automobile brand “Anadol” for various goods and services in that this could make the impression that these goods and services are associated with the recognized brand.[10]  What you make of from the exploitation of the characteristic features of a brand is that it makes use of the attractive features of the brand.[11]

German Federal Court in its provision dated 1987 states that the use of the brand “Camel” that is a recognized brand of cigarettes throughout the world, for a tourism agency in Turkey does not make any harm to the characteristic features of the brand “Camel”. In the justification of the decision it is stated that the word “Camel” that represents the animal takes place in the other business as a mark that represents the Middle East and that it has no connection with the cigarette brand.[12]

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[1] Yargıtay 11. HD. 28.02.2003 tarih, 2002/11715 E., 2003/4181 K.

[2] TEKİNALP, Ünal: “Fikri Mülkiyet Hukuku”, Güncelleştirilmiş ve Geliştirilmiş Beşinci Baskı, Vedat Kitapçılık, İstanbul 2012, p.426

[3] YASAMAN, Hamdi: “Tanınmış Marka”, Marka Hukuku ile İlgili Makaleler, Hukuki Mütalaalar, Bilirkişi Raporları, Vedat Kitapçılık Yayınları, Cilt: 2, İstanbul 2005, s.23.

[4] ÜNAL, Alper Tunga: “Marka Hukuku’nda Tescil Engelleri”, Ankara 2007, p.75

[5] ÜNAL, Alper Tunga, p.76

[6] YASAMAN, Hamdi, p.414

[7] Gözlükaya, Fatma: 556 Sayılı KHK Kapsamında Markanın Hükümsüzlüğü, (Unpublished Masters’s Thesis), Ankara 2003, p.54

S Supreme Court 11.HD, 21.10.1982, E.1982/3859, K.1982/4025

[9] YASAMAN, Hamdi, p.24

[10] Council of State 12. D., 16.04.1970, E.1968/2474, K.1970/799

[11] DİRİKKAN, Hanife: Tanınmış Markanın Korunması , Seçkin Publishing, Ankara 2003, p.199

[12] ARKAN, Sabih: Marka Hukuku, Ankara University Department of Law Publishing, Edition Number: 520, Volume: 1, Ankara 1997, p.107