IP Topics & ArticlesDon’t get caught out

Ersin Dereligil, Destek Patent explores bad faith trademark and design registrations for cartoon characters in Turkey.

Turkey’s population reached 75.6 million in 2012; 25% of which are kids under the age of 15 who are fond of every merchandise bearing the titles and figures of their heroes of famous cartoon characters, including toys, games, apparel, footwear, accessories, food, beverages, stationary, magazines, furniture and so on. Profiteers see the vast commercial market and take advantage of this in many countries, sometimes even with so-called intelligent approaches by taking advantage of legal voids in deterring penalties. Extreme reflection of commercial categories based on animated cartoons is not only the concern of true right holders but also the licensees who suffer much from the counterfeits and bad faith registrations.

In that sense, Turkey is one of the jurisdictions where the right holders should analyze their risks and carefully consider registering the titles and figures of their popular cartoon characters through trademark and design applications and watching them carefully before dealing with costly and lengthy court proceedings.

At the top of the next page are some examples of more than thirty bad faith trademark applications in Turkey (all invalid now) after the success of the animated television series by Cartoon Network, known as “BEN 10”, featuring a 10-year-old boy named Ben Tennyson who has a powerful watch known as the Omnitrix that allows him to transform into different aliens.

Profiteers are on the lookout for an opportunity to register such modified marks by knowing that such registrations create a temporary shield for them against true right holders. They hope that the true right holder will not file opposition, allowing them to obtain a legal right to use the marks until they are invalidated before the court.

Basic challenge in legislation

Turkish IP legislation has strong provisions against bad faith, unfair competition and copyright, trademark and design infringements. However, infringement actions cannot be initiated against commercial use based on a registered trademark or design rights unless the right in question is invalidated before the court. This provision is generally misunderstood by bad faith right holders as if compensation of damages would never be an issue once the registration is invalidated and an infringement action is at stake. In fact, Article 56 of Trademark Decree Law 556 underlines a final decision declaring that invalidity shall have retroactive effect and this includes without prejudice compensation claims for damage caused by negligence or lack of good faith on the part of the trademark proprietor. Nevertheless, there is a debate on this issue. However, there are also a number of negative factors for true right holders which encourage bad faith applicants, such as

  • length of the invalidation proceedings, of up to four years including possible appeal stages,

  • absence of preliminary injunctions against the use of registered rights,

  • sometimes difficulty in evidencing bad faith and reputation of figurative elements in question,

  • additional expertise reports for the calculation of damages,

  • lack of adequate financial records of the other side,

  • non sufficiently deterrent monetary outcomes, and

  • tactics to delay proceedings etc.

  • Trademark Prosecution before the TPE

    A registered trademark is protected for 10 years from the filing date and should be renewed every 10 years for the extension of protection. Both goods (up to 34 classes) and services (up to 11 classes) can be included in one application in accordance with the 10th edition of the Nice classification. The period from filing to registration takes 15 to 18 months for a straightforward trademark application. It is a regular practice of the Turkish Patent Institute (TPE) to examine a trademark application on both absolute grounds and relative grounds (to identify earlier marks which are considered to be confusingly similar)

    within six to eight months of its filing date. If an application is rejected, the applicant can appeal to the TPE’s Re-evaluation and Examination Board, with a further appeal to the specialized IP court in Ankara, and to the Supreme Court if necessary. After granting the examination, it will be published for the opposition of third parties for three months in the Official Trademark Bulletin and then registered. Opposition and appeal stages take 8-10 months for each. Registered trademarks can only be cancelled by the specialized IP courts.

    Nevertheless, the examination stage is not supported in practice with deterring measures which prevent bad faith and generally low scale actual or legal persons from filing and registering such applications due to the following reasons:

  • apparent bad faith is not an absolute ground for ex-officio refusal and is not easy to be identified by examiners;

  • absence of easy-to-reach and -search “global” online database including copyrights of famous cartoon characters;

  • many applicants try obtaining broader trademark protection so as to include a few classes, each almost including all goods or services in the target class; and

  • an applicant who filed an apparent bad faith trademark application is not obliged to reimburse the opponent’s costs once the opposition is accepted and the application is rejected by the Office.

  • Assuming that the word-mark was registered by the true right holder before, it is easier to successfully oppose bad faith trademark applications bearing word marks. Besides, the TPE rejects ex-officio such applications in common classes. However, device marks are much more problematic since they require attention and should be opposed by the right holder based on arguments and evidences on copyright, well-known character, confusing similarity etc.

    Design Prosecution before the TPE

    Protection shall be granted to a design that is new and has individual character. Multiple designs fall into the same (Locarno) class can be included in one application. The protection period for a registered design is 25 years upon four renewals with 5 year intervals. All design applications are to be formally examined on the availability of filing requirements and entitlement only. However, no novelty examination is carried out on the designs applications, but they are published. The time for registering a design application is approximately 10-12 months, unless an opposition is filed by others. Registered designs can only be cancelled by the specialized IP courts. The design registration system is more open to the profiteers’ interest due to the following:

  • no novelty examination is carried out;

  • one application can be filled with many designs in target merchandize;

  • unlike trademark’s prosecution, once an opposition is failed, this cannot be appealed before the TPE but an invalidation action is required; and

  • again, an applicant who filed an apparent bad faith design application is not obliged to reimburse the opponent’s costs once the opposition is accepted and the application is rejected.

    It would not be surprising for anyone to see “one” multiple application with fifty different designs for bed-linen or t-shirts or table cloths which simultaneously infringes 10 different companies’ copyrights, each having a creative (!) different design of famous cartoon character/s. This means ten companies would have to initiate 10 separate invalidation actions before the courts to invalidate one multiple design application totally! Below are a few designs including BEN10 cartoon which are not valid now. Conclusion

    Therefore, it is strongly recommended for true right holders to register the titles and figures of their popular cartoon characters through trademark and design applications with possible broadest classification coverage in Turkey. Afterwards, organizations should obtain regular watch updates for bad faith trademark and design applications and even for domain name registrations so the true right holder can promptly challenge any confusingly similar applications through oppositions before the Office. Otherwise, there is no administrative or cost effective solution to invalidate such marks but an invalidation action before the specialized IP court is necessary, which requires time and incurs proceeding costs.

  • This article first appeared in Don’t get caught out, a supplement to The Trademark Lawyer Annual, published by CTC Legal Media. To view the issue in full, please go to www.ctclegalmedia.com

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