Turkey: Intellectual Property

MARVEL CHARACTERS INC. vs NİZAMETTİN FERHATOĞLU, Case No. 2011/212; Decision No.2011/139 ( Istanbul Court of Intellectual and Industrial Rights (4) September 28, 2010)

Plaintiff's trademarks “SPIDERMAN DEVICE” no.158096 and “SPIDERMAN” no. 157609 especially registered in class 18 and defendant's no 2007/39947 “SPICY 6+ DEVICE” trademark registered in class 18 as well.

Cancellation action based on likelihood of confusion due to similarity of marks, on notoriety of plaintiff's trademark and on bad faith of the defendant.

The plaintiff claimed that; he is the owner of the animated character SPIDERMAN which was adapted to a movie and that SPIDERMAN is a well-known trademark by supporting such claim with related documents/ information and that the defendant’s “SPICY 6 DEVICE” trademark is confusingly similar to their worldwide known SPIDERMAN trademarks and there is risk of association between them, that specifications of the trademarks are overlapping and that the defendant has violated copyrights of the plaintiff and that defendant is bad faith with the aim of taking unfair advantage from the reputation of plaintiff’s trademarks by choosing such similar device and the defendant’s other trademark applications such as LADY GG, SELENENA, PAVA+DEVICE and OUPER 90+DEVICE also show the bad faith of the defendant and therefore requested the cancellation of defendant’s trademark registration for SPICY6+DEVICE and 4.000TL damages for pain and suffering for the violation of the plaintiff’s copyright from the Court.

The defendant claimed that the SPICY 6 DEVICE trademark can not be considered as confusingly similar to plaintiff’s SPIDER MAN trademarks and there is no risk of association between the trademarks and that his client never used the subject trademark and requested the rejection of the court action from the Court.

In the light of the evidences submitted by the parties, The Court has determined that; the high level of notoriety of plaintiff’s trademark should be accepted and the defendant has the aim of taking advantage from the reputation of plaintiff’s well-known SPIDERMAN trademark series; that the logos of the SPICY 6 DEVICE and SPIDERMAN can be considered as confusingly similar to each other in their overall in respect of visual aspects since the essential part of SPICY 6 DEVICE and the distinctive part of both of the trademarks is DEVICE and the use of SPICY 6 DEVICE for goods in class 18 would lead to confusion between the trademarks.

The Court has partially accepted the requests of the plaintiff and has ruled to the cancellation of defendant's trademark no 2007/39947 “SPICY 6 DEVICE” and deletion of the related records from the trademark registry and prevention of the use of these trademarks after the finalization of the cancellation and refuses all other requests due to the fact the registration of the subject trademark protects the defendant until the trademark has cancelled and deleted from the trademark registry that and it is not possible to limit use of the trademark until it is cancelled and deleted from related records.

The Court has been convinced that SPICY 6 DEVICE trademark was not sufficiently distinctive from SPIDERMAN trademarks, especially in respect of defendant’s trademark for “SPIDERMAN DEVICE”. This decision is important as the Court has acknowledged the high level of distinctiveness and notoriety of the SPIDERMAN trademarks.