Turkey: Intellectual Property

DAIMLER AG vs TURKISH PATENT INSTITUTE Case No. 2011/27; Decision No.2012/43 (3rd Ankara Court of Intellectual and Industrial Rights, February 14, 2012)

The “TURCKPARTS” trademark application no.2010/02406 covering goods in class 12 and services in classes 36, 37 and 39.

Court action instituted for the withdrawal of the partial refusal decision of the Turkish Patent Institute regarding the trademark application TRUCKPARTS due the descriptive character of this indication in respect of classes 12 and 37.

Turkish Patent Institute has partially refused the trademark application TRUCKPARTS in respect of classes 12 and 37.

*The plaintiff asserted that; the TRUCKPARTS indication is not descriptive in respect of classes 12 and 37 in the view of Article 7/1-(c) of Decree Law no.556. As the trademark is well distinctive in its entirety with its special font and color combination, the partial refusal decision of TPI should be withdrawn.

*The defendant asserted that; plaintiff’s trademark TRUCKPARTS corresponds to “KAMYON PARÇALARI” in Turkish language, which directly refers to the kind of the goods covered under class 12 and nature of the services under class 37 and therefore the partial refusal decision is justified due to the descriptive character of TRUCKPARTS indication.

*In the light of the evidences submitted by the parties and of the expert’s report, The Court has determined that:

- The subject trademark is made of a combination of the word TRUCK in orange color and the word PARTS in black color, in English language, whereas the same does not include any further figurative element.
- The dominant element of this trademark is TRUCK, which corresponds to “KAMYON” in Turkish language and the PARTS part of the same corresponds to “PARÇA/PARÇALAR” in Turkish language and even if the trademark comprises the combination of these words, it is not sufficient to qualify the trademark as non-descriptive especially in respect of the goods” automobiles and their parts” in class 12.
- As a matter of fact, it should be accepted that the most of the relevant consumers, who are adults driving motor vehicles in their social and business life, have basic English skills.

Therefore:
* They easily and directly understand that TRUCKPARTS indication directly refers to “Trucks” and its “parts” in class 12,
*whereas, they are able to understand that there is no direct relationship between TRUCKPARTS and the covered services “maintenance, repairing and cleaning of motor vehicles” in class 37.

The Court has ruled to the partial acceptance of the court action by withdrawing TPI’s partial refusal decision regarding the trademark appl. no.2010/02406 TRUCKPARTS in respect of the services in class 37 and by rejecting plaintiff’s request of withdrawal of defendant’s partial refusal decision regarding the trademark appl. no.2010/02406 TRUCKPARTS in respect of the services in class 12.

Although the goods in class 12 and services in class 37 are related; that is not to say that a descriptive indication in respect of the goods in class 12 should be also evaluated as being descriptive in respect of related services in class 37.