The Institute Releases Notoriety Criteria
The Turkish Patent Institute released a list of criteria which will be considered in evaluating notoriety claims in trademark cases. A statement made via the Institute’s official website suggested that the Institute was charged with the duty of determining and applying the bases for the level of notoriety of trademarks in accordance with relevant legislation. It was further stated that the Institute will evaluate the public’s familiarity with the trademark, general awareness of the trademark, and the general notoriety level of trademarks beyond potential and actual users of goods or services. The list of criteria determined by the Institute is as follows:
- Period of the trademark’s use and registration (Detailed background information on the trademark)
- Geographical scope of registrations and use
- Market coverage/share and annual sales numbers of the goods/services on which the trademark is used.
- Promotional activities (in particular in Turkey) for the trademark (period, geographical coverage, scope, features of promotional activities, whether TV/newspaper commercials, budget for promotional activities, etc.)
- Any activities which are not commercial but are beneficial for the awareness of the trademark (Newspapers, periodicals, TV publishing or broadcastings, exhibitions in fairs, etc.)
- Any Court decision on notoriety of the trademark or effective efforts made by the trademark owner to protect the trademark (Court decisions, pending trademark or unfair competition cases, etc.)
- Originality or distinctive character of the trademark.
- Any market survey with respect to notoriety of the trademark.
- Information on the trademark holder (size, capital, turnover, profit, sales channels, branches, dealers, service networks, paid taxes, export numbers of the company).
- Whether the trademark identifies goods or services on which it is used. Whether the trademark is reminiscent of a particular good when seen as word or device. Whether the trademark indicates a quality or statute regarding the goods or services on which it is used.
- Any certificate or award (i.e. Turkish Standards Institute, ISO, quality award, blue flag etc.) the goods on which the trademark is used or the trademark owner is awarded.
- Distribution channels, export-import methods of the trademark on which the trademark is used (other than owned by trademark owner).
- Monetary value of the trademark (if it became subject to a sale and any valuation is performed).
- Portfolio of the goods and/or services which the trademark registrations cover.
- How long has the trademark maintain its reputation by the public, if the trademark is well-known.
- Any infringing action against the trademark. Whether the trademark is imitated by third parties. If the trademark is used by third parties, whether such use damages the trademark owner.
- Whether the trademark is vulnerable to infringement in terms of goods or services on which it is used.
- Any documentation in relation to the above or evidencing the notoriety of trademark.
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