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Notoriety Status, Claims relying on Notoriety

In accordance with Article 8/4 of the Decree Law no: 556, it cannot be asserted that there is an obstacle to registering the application in question due to the existence of the trademark numbered 1995/169503 which was not well-known on the date when the defendant filed the trademark application which also covered different service classes (35, 36, and 41). In other words, a claim relying on the notoriety of a trademark may only be brought forward against trademarks filed or registered after notoriety status is acquired. Permitting exceptions to this requirement would not only contradict the priority (first to register) principle adopted by the Decree Law no: 556, but would also be contrary to Article 2 of the Civil Code as it would cause elimination of a right gained before the acquisition of notoriety status.

In the instant case, since the notoriety status was achieved by the trademark 1995/169503 after it was acquired by the previous proprietor B....Holding A.Ş. on 04.12.2000, it cannot constitute a registration obstacle to the trademark application filed by J.... on 03.01.2000 and in different classes relying on notoriety status.

However, in the first opposition raised by the representative of B.... Holding A.S. before the Institute, the trademark application "A.... M...." numbered 1999/23813, which covers classes 16 and 24 in the defendant's application and was assigned to the plaintiff afterwards, was also relied upon. The opposition was rejected by the Trademarks Unit of the Turkish Patent Institute as the priority (first to register) principle belongs to the defendant 3... due to the existence of an earlier registration of "A... T..." numbered 1998/15233 by the defendant J... covering classes 16 and 24.

For this reason, it becomes necessary to accept the defendant's attorneys correction request and to overrule the affirming decision of our Unit dated 02.10.2007 and numbered 3968/12266 as it is necessary to examine the file under Articles 7/1-b, 8/1-b, and 8/3 of the Decree Law no: 556 considering the signs and classes of the trademark numbered 1998/15233 registered in the name of the defendant 3... and the trademark numbered 1999/23813 then-assigned to the plaintiff. 11th Unit of Court of Appeal, 2008/755, 2008/2033, 15.02.2008

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