IAR CASE SUMMARY TEMPLATE

Jurisdiction: Republic of TURKEY / Ankara Second Civil Court of Intellectual and Industrial Property Rights
Subject Heading: 1.F. Famous and well-known trademarks
Case Name and Citation: DOLE v. DOLE and HURMET DOLE
Docket No: 2010/61
Decision No: 2010/252
Plaintiff: DOLE FOOD COMPANY, INC
Defendant: TURKISH PATENT INSTITUTE

HURMET CIKOLATA SEKERLEME GIDA SANAYI VE TICARET LIMITED SIRKETI

ERSA SAKIZ SEKERLEME VE GIDA SANAYI TICARET LIMITED SIRKETI
Marks Associated with Goods/Services: The Plaintiff’s trademark DOLE1 (essential part of the trade name of the Plaintiff) applied in classes 29, 30, 31. The defendant’s trademark (ERSA SAKIZ SEKERLEME VE GIDA SANAYI TICARET LIMITED SIRKETI) DOLE2 registered in classes 29, 30, 32. The Defendant’s trademark (HURMET CIKOLATA SEKERLEME GIDA SANAYI VE TICARET LIMITED SIRKETI) HURMET DOLE3 registered in class 30
Nature of Case: The plaintiff claims:
  • invalidity of the decision of TPI with regard to the removal of the applied goods in classes 29, 30 and 32
  • invalidity of the registered cited trademarks DOLE reg. no. 2003/34924 and HURMET DOLE reg. no. 2003/11042
  • stopping and prevention of the usage of these cited trademarks which is identical with its well-known trademark in Turkey and its trade name
Overview of Decision and Ruling: The Court states that the decision of Higher Council is well-grounded since the trademarks are identical in visual, phonetic and semantic aspects and they cover the identical goods falling under same sub-classes. Moreover, since the invalidation of DOLE trademark in the name of ERSA SAKIZ SEKERLEME VE GIDA SANAYI TICARET LIMITED SIRKETI is requested within a separate case before Ankara First Civil Court of Intellectual and Industrial Property Rights, the Court did not give a verdict in this matter. Furthermore, the Court declined the invalidation request of HURMET DOLE trademark in the name of HURMET CIKOLATA SEKERLEME GIDA SANAYI VE TICARET LIMITED SIRKETI since the trademark owner has had a previous tail-series trademark which is expired upon non-renewal, however the latter HURMET DOLE trademark is registered within 2 years as of the expiration of this trademark and used with continuity.
Importance of Case: This decision is important because it shows the significance of acquiring registration of a trademark and a latter trademark may not be deemed to be registrable despite the well-known status/ acquired distinctiveness etc. of the same since it is filed on a subsequent date
Images/Description:
Contributor Firm: Deris Patents and Trademarks Agency

1 Application No: 2004 37359
2 Registration No: 2003 34924
3 Registration No: 2003 11042