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The legal uncertainty arising from the UK’s mid-2016 decision to leave the European Union (EU) continues apace for IP, as much as for any other area of law. At the time of writing, even several months on from the referendum, the future relationship between the UK and the EU remains unclear. This is apparent in the wide range of opinion pieces on the topic, although the wider economic apocalypse and collapse of UK society as predicted by some parts of the British media has thankfully not occurred (yet).
Nonetheless, as we increasingly operate in a digital, knowledge-based, economy and the world gets ever smaller geographically, the importance of a clear, flexible and fit-for-purpose cross-border framework for IP rights to protect creative assets is self-evident. The Digital Single Market Strategy first adopted by the EU Commission in 2015 recognizes the need to continue to support the creative sectors in protecting their rights across borders.
Given the importance of UK-produced IP creative exports, whether music (totalling £2.2 billion in 2015 according to a UK Music survey), film, TV, scientific research or technology to the UK economy, it seems likely that even in a “hard Brexit” scenario, and even if no longer directly applicable, EU law would remain central to many UK content businesses. It is sufficient to consider consumer law or data protection: the scope of the EU General Data Protection Regulation and the recent decision of the Court of Justice of the European Union in VKI v Amazon (C-191/15) make it clear that, whilst possibly not directly binding, and depending on the individual circumstances, UK suppliers would likely need to comply with EU data protection rules in order to process and transfer personal data within the EU.
In a similar fashion, the substantive changes to copyright as proposed by the EU Commission under the recently published proposals on the “modernisation of copyright” (Cross-border access (Jan 2016); Marrakesh and Country of Origin (Sept 2016)) will likely continue to have a significant effect, whatever the technical legal relevance on UK law. For instance, if the draft Regulation relating to the online transmissions and retransmissions of TV and radio programmes is eventually adopted in its current form, notwithstanding that the UK might not be bound by it, it seems unlikely that the UK would take a divergent approach to the principle of “country of origin”. This is given not only the longstanding precedent established by the Satellite and Cable Directive, but also the practical difficulties and costs that licensors would arguably face in persuading broadcasters and programme makers in other EU Member States that “top up” licences would be required for UK reception of ancillary digital transmissions.
Accordingly, the unfolding of the EU Digital Single Market programme should continue to be of as much interest to UK-based practitioners, as to the rest of Europe, and it is important that the UK remains active in the relevant EU debates. Whilst much in the recent proposals is to be welcomed from a UK-centric perspective, naturally, different stakeholders would have concerns over some of the provisions. There is likely to be more released in the coming months, including the legislative of the review of the Enforcement Directive. It is to be hoped that, in addition to other measures, the Commission would in particular take the opportunity to provide for the availability of expedited cross-border injunctions for IP infringements and that the UK would ultimately be able to participate in any such solutions, one way or another. The UK has to date often led the way in acting in the area of enforcement, particularly online, through successful initiatives such as “Follow the Money”. A more effective expedited pan-European framework for enforcement would benefit and hopefully reduce costs for all concerned.
In light of the substantive reverberations that are to be felt in the UK as a result of the changes made to copyright and the wider IP framework - whether enforcement, a new right in press publications, mandatory exceptions or data protection - it is to be hoped that the UK would continue to embrace the opportunities coming from the EU. Our ongoing participation or “doing our bit” in the EU debate is essential for a smooth transition to whatever formal structural relationship lies ahead for the UK and its friends in the EU and beyond.
Turkish Court of Cassation refuses to extend scope of protection of Lacoste’s well-known trade marks
Uğur Aktekin, Güldeniz Doğan Alkan and Dilan Kayalıca
The Turkish Court of Cassation, reversing its previous decisions on the matter, has rejected the action brought by Lacoste against registration of a ‘Crocodile’ trade mark for goods in classes 11, 20 and 21 of the Nice Agreement. The court has provided detailed criteria to assess the scope of protection of a well-known trade mark in relation to goods and services different from those for which the trade mark is registered.
Legal context and facts
The defendant, Özlider Plastik Ve Metal Sanayi Ticaret Anonim Şirketi (Özlider), filed a trade mark application for the word ‘Crocodile’ in classes 11, 20, 21 and 24 of the Nice Agreement before the second defendant, the Turkish Patent and Trademark Office (Office). Registration in class 24 was excluded ex officio by the Office due to absolute grounds for refusal not related to this case. Thus, the application was published in the Official Trademark Bulletin for classes 11, 20 and 21 only. The plaintiff, Lacoste, filed an opposition against the trade mark application. Both the opposition and a further appeal for re-examination filed by Lacoste were rejected.
Lacoste filed a court action, challenging the final decision of the Office which had rejected both their opposition against the trade mark application and the rejection request brought against the trade mark in question. Lacoste’s arguments were mainly based on likelihood of confusion, due to the similarity of the trade mark application for ‘Crocodile’ to Lacoste’s famous ‘crocodile device’ trade mark. Lacoste also argued that the registration of Özlider’s mark caused damage to the well-known status and reputation of Lacoste’s trade mark.
The 3rd Civil IP Court of Ankara dismissed the action filed by Lacoste. The court found that there was no likelihood of confusion between the trade marks in question as, despite the similarity between the trade marks (a word and a device which defines the same concept), the goods in classes 11, 20 and 21 within the scope of the contested trade mark application were not identical or similar to the goods covered by Lacoste’s trade mark registrations. It also dismissed arguments concerning the well-known status of Lacoste’s trade marks.
The decision was appealed by Lacoste before the 11th Civil Chamber of the Court of Cassation (CoC), competent to review matters concerning IP law at the appeal stage. The CoC examined the file and overturned the decision issued by the 3rd Civil IP Court of Ankara, finding that Lacoste’s trade marks were well-known trade marks and that the application for ‘Crocodile’—even if in different classes than Lacoste’s trade marks—could derive unfair benefit from or damage the distinctiveness or well-known status of Lacoste’s trade marks. The case was remanded to the court of first instance.
According to Turkish Civil Procedure Law, if a decision of a court of first instance is found inappropriate and reversed by the CoC, the highest civil court in the Turkish legal structure, the case is sent back to the same court of first instance and re-examined in light of the reversal decision. Upon re-examination, the court of first instance may decide to comply with the reversal decision, changing its initial decision, or insist on its initial judgment. In this case, the 3rd Civil IP Court of Ankara decided to insist on its initial decision, reiterating the rejection of Lacoste’s arguments.
The decision was again appealed and brought before the General Assembly of Civil Chambers (‘General Assembly’) of the CoC, which has the authority to resolve the conflict between the two decisions. The General Assembly reviewed the second decision of the 3rd Civil IP Court of Ankara and decided to reverse the decision, in parallel with the decision of the 11th Civil Chamber of the CoC.
Özlider applied for a review of the reversal decision given by General Assembly. As prescribed by civil procedure rules, the review was again examined by the General Assembly.
The General Assembly decided to revoke its own decision, upholding the second decision of the 3rd Civil IP Court of Ankara.
The court found that there was a weak similarity between the parties’ trade marks, and that the goods covered by registration were neither identical nor similar. It added that even if a trade mark is well known, it is not possible to assume that a trade mark which seeks registration for different goods or services would automatically derive unfair benefit from the reputation of the well-known trade mark. A different conclusion, according to the court, would have conferred wider protection the well-known trade mark than legally due.
Özlider’s trade mark application concerned goods related to construction materials and kitchenware. The court noted that these goods were not similar or related to the clothing sector in which Lacoste’s trade mark is well-known. Therefore, Özlider’s trade mark application, if registered, would not derive unfair benefit from the well-known status of Lacoste’s trade mark and would not harm its reputation or distinctive character.
The well-known status of Lacoste’s crocodile device mark was beyond dispute. The main subject of the dispute was the scope of protection conferred to a well-known trademark under Article 8(4) of the Turkish Trademark Decree Law.
The decision of the General Assembly confirms the validity of the approach taken by the 3rd Civil IP Court of Ankara, which had ruled that the dissimilarity of the goods and services in question prevented an automatic finding of likelihood of confusion based solely on the well-known status of a trade mark.
Of significant relevance for this decision were the ‘DERBYTECH’ and ‘NIVA’ cases. In the former case (2013/11-656 E. 2014/427 K., decision of 2 April 2014), the court of first instance had concluded that the trade mark ‘DERBYTECH’ could not be registered for goods such as ‘saw, sanding machine, cutting machine, powered lawn-mover’ in class 07/01 and ‘machines and tools for agriculture, agriculture tools pulled by machine or engine, agriculture machines’ in class 07/07 because of the well-known status of the trademark ‘DERBY’ for ‘razor blades’ and the likelihood of association between the trade marks. On appeal, the CoC had found that the goods compared were not similar or related and therefore the conditions under Article 8(4) of the Turkish Trademark Decree Law (taking unfair advantage of, or being detrimental to, the distinctive character or reputation of the registered trade mark) had not been met.
In the latter case (2015/1633 E. 2015/8463 K., decision of 18 June 2015), the court of first instance had declared the trade mark ‘NIVA’ invalid even for goods not falling within the scope of the well-known ‘NIVEA’ trade marks. The CoC, however, had reversed this decision, highlighting the need for expert examination and a more detailed assessment of the scope of protection of well-known trade marks.
The decision of the General Assembly in this case, as well as the decisions discussed above, demonstrate that Turkish courts in practice do not automatically apply Article 8(4) as a ground for refusal based on well-known trade marks. Instead, they require a careful examination of the trade marks in question and a detailed assessment of the applicability of the three conditions set forth in Article 8(4). The Lacoste judgment, rendered by the highest civil court in Turkey, represents a clear and authoritative endorsement of this approach.
Although this is not the most favourable outcome for owners of well-known trade marks, the CoC’s position is in line with the wording of Article 8(4)1 of the Turkish Trademark Decree Law, as well as Article 8(5)2 of the EUTM Regulation, and it clarified the CoC’s approach to the scope of protection for well-known trade marks in relation to the registration of similar trade marks for dissimilar goods or services.
1 Article 8/4 of the Turkish Trademark Decree Law was ratified on 24 June 1995 and entered into force by publication in the Official Gazette numbered 22326 on 27 June 1995. This Decree Law was abolished by the publication of the Industrial Property Code no. 6769
2 Article 8/5 of the European Union Trade Mark Regulation No 207/2009 was published in the Official Journal of the European Union on 24 March 2009 and amended by the EU Regulation No 2015/2424 of the European Parliament and of the Council of 16 December 2015.