IZOBERK CASE SUMMARY

Jurisdiction: Turkey
Subject Heading: I.D.1. Similarity of Marks, Invalidation of registration, Deletion From Trademark Registry
Case Name and Citation:

SAINT GOBAIN ISOVER SOCIETE ANONYME vs BEŞLER TEKSTİL SANAYİ VE TİCARET LIMITED ŞİRKETİ & THE TURKİSH PATENT INSTITUTE, Case No. 2009/232; Decision No.2012/37 (1st Ankara Court of Intellectual and Industrial Rights, March 01, 2012)

Plaintiff:

SAINT GOBAIN ISOVER SOCIETE ANONYME

Defendant:

1- BEŞLER TEKSTİL SANAYİ VE TİCARET LIMITED ŞİRKETİ
2- THE TURKISH PATENT INSTITUTE (TPI)

Marks Associated with Goods/Services:

Plaintiff’s trademark registrations no. 99/014381 “ISOVER DEVICE” covering the goods in classes 17 and 19 and no. 2007/04194 “ISOVER MULTI-COMFORT HOUSE” registered in classes 17,19, 20 and 37 and defendant's trademarks no. 2008/11564 “IZOBER ROCK” and no 2008/11261 “IZOBERK” covering goods in classes 17 and 19.

Nature of Case:

Court action instituted for cancellation of the TPI’s decisions for partial acceptance of application 2008/11564 for “IZOBER ROCK” in respect of some goods and for acceptance for registration of application no 2008/11261 for “IZOBERK” in respect of all goods.

Prior Decisions:

Plaintiff’s (Saint Gobain Isover) opposition filed against defendant’s applications was not accepted by the Trademark Department of the TPI and the defendant has appeal against this refusal decision before the Higher Council of the TPI which was partially accepted in that the subject applications have been rejected in respect of some goods. The plaintiff has filed the subject court action for cancellation of the TPI’s decision and for the invalidation of the subject trademark registrations and their deletion from the Trademark Register.

Overview of Decision and Ruling:

The plaintiff claimed that the denomination ISOVER which is a characterizing element of the plaintiff’s trade name is a well known trademark, that there are many ISOVER trademark registrations with the TPI and that the defendant’s trademarks can be considered as part of the series of trademarks belonging to the plaintiff, that the decision of the Higher Council regarding the registration of the trademarks for IZOBERK and IZOBER ROCK in respect of the goods covered in classes 17,5,6,7,8, and sub class 19/3 can be considered as unlawful and that the defendant has filed the trademark applications for IZOBER and IZOBER ROCK WOOL for goods overlapping with those of the plaintiff’s trademarks which is indicative that these applications have been filed by the defendant in bad faith and requested from the Court to order for the cancellation of the TPI’s decision and the invalidation of the subject trademarks.

The defendant TPI alleged that; the decision subject to this action is in accordance with the related law and established practice and stated that defendant’s trademarks IZOBER ROCK and IZOBERK can not be considered as confusingly similar to the plaintiff’s ISOVER trademark in visual and phonetic aspects in respect of the goods covered in the specification of the subject trademarks and therefore requested rejection of the action from the Court.

The Turkish Patent Institute as the other defendant alleged that both parties’ trademarks can not be considered as confusingly similar in phonetic aspects, that the plaintiff’s trademark is not a well-known trademark, that there is no risk of confusion between the subject trademarks and the plaintiff’s unknown ISOVER trademarks thereby asking the rejection of the action.

The Court has determined that;

According to the file that merged with the main court-action, the defendant has filed the trademark application no 2008/11564 for “IZOBER ROCK” and no 2008/11261 for “IZOBERK” in respect of goods covered in the classes 17 and 19 against which the plaintiff has firstly filed opposition and upon rejection of the oppositions has further appealed before the Higher Council of TPI. In the evaluation of the Higher Council, it has been decided that there is risk of confusion and association between the subject application no 2008/11564 for “IZOBER ROCK” and the defendant’s registered “ISOVER” and “ISOVER MULTI-COMFORT HOUSE” trademarks and therefore the subject application has been rejected in respect of the goods covered in classes 2, 4 and the sub-class 19/1. Furthermore, the subject application has been accepted in respect of the goods covered in classes 17, 5, 6, 7 , 8 and sub-class 19/3. As for the other application of the defendant no 2008/11261 for “IZOBERK” the Higher Council has refused to favorably consider the objection by deciding to continue the prosecution of the application to registration. As for the expert report, it has been retained that the distinctive element of the plaintiff’s trademark is ISOVER which is the main element of the trade name, that the plaintiff has registered the trademark no 1983/80693 ISOVER which has lapsed and the trademarks no. 99/014381 “ISOVER DEVICE” covering the goods in classes 17 and 19 and no. 2007/04194 “ISOVER MULTI-COMFORT HOUSE” registered in classes 17,19, 20 and 37 as well and that the plaintiff has filed oppositions against the registration by the defendant of the trademarks IZOBER and IZOBER ROCK WOOL which have been rejected by the TPI and that there is a pending court action regarding the cancellation of the administrative decision for the registration of the trademark application no 2008/11261 for IZOBER.

In the light of the evidences submitted by the parties, The Court has maintained that the main and essential component of the plaintiff’s series of trademarks is the denomination ISOVER, that the main and distinctive elements of the defendant’s trademarks IZOBER ROCK and IZOBERK subject to the action is IZOBER and IZOBERK, that the defendant’s trademark applications can not be considered as distinctive enough from the plaintiff’s ISOVER trademarks, that ISOVER is the main component of the series of trademarks which are highly distinctive. The experts’ report stated that the goods in classes 7,8 and sub class 19/3 covered in the defendant’s trademark no 2008/11564 for IZOBER ROCK and the goods in classes 4,7,8 and sub-class 19/3 covered in the specification of the defendant’s trademark application no 2008/11261 for IZOBERK can be considered as different kind of goods from those of the plaintiff’s trademarks. However, the goods in sub-class 37.1. “Construction services, rental of construction tools and appliances and work machines” covered in one of the defendant’s trademarks are directly connected to the goods of building construction covered in class 19 and therefore there is risk of confusion between both trademarks. The Court considered that the consumers would perceive the defendant’s trademark IZOBER ROCK and IZOBERK as new trademarks of the plaintiff’s series of trademarks in the. The Court ruled that since the defendant’s subject applications are confusingly similar to the plaintiff’s trademarks in respect of the Article 7/b and 8/b of the Decree Law no 556, the decision of TPI regarding the acceptance of the subject trademarks and rejecting the plaintiff’s objections can not be considered as lawful, that the denomination ISOVER as a distinctive element of the plaintiff’s series of trademarks enjoys awareness in the related field for the goods in classes 17 and 19 and that the subject decision of the Higher Council is not well-grounded.

In respect of the main court action the Court has favorably received the action by cancelling the TPI Higher Council’s decision of partial acceptance thereby cancelling the defendant’s trademark registration no 2008/11564 in respect of all goods and deleting it from the trademark register. In respect of the merged case regarding the trademark application no. 2008/21161 for “IZOBERK” the Court has also accepted the court action by cancelling the TPI Higher Council’s decision thereby cancelling the defendant’s trademark application no.2008/11261 “IZOBERK” in respect of all goods. As the later application has not matured into registration the Court ruled that there is no ground for taking a decision regarding the cancellation of subject trademark from the trademark register of the TPI.

Importance of Case:

Despite the fact that the defendant’s trademarks were partially accepted for registration in respect of some goods the Court has overturned the administrative decision of partial acceptance by refusing the registration of defendant’s trademarks in respect of all goods applied for on the ground that the goods covered in the defendant’s trademarks are still directly connected to the goods covered in the specification of the plaintiff’s trademarks. Considering that the use of IZOBER denomination is confusing similar to the plaintiff’s ISOVER trademarks, the registration of defendant’s trademarks would lead to risk of confusion and association between the trademarks.

Contributing Firm: Deris Attorneys At Law Partnership