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Serial Marks, Lack of Confusion

The trademarks in the disputed action are serial trademarks registered by the defendant by adding the wordings "E...Jady" and "E...toff" without changing the primary element of the trademark "E...+crown figure", which has been used by the defendant for a long time since it was registered in 1994. The defendant has set the relationship in terms of operational origin between the trademarks in question without changing the essential design in the trademark "E...+crown figure" although the wording "E..." in the trademarks in question constitutes the main element of the plaintiff's trademarks.

Considering the fact that the parties have concurrent trademarks with an earlier date containing the main element of "E..." and that they cannot prevent each other from using their own concurrent trademarks unless invalidated, the invalidation of serial trademarks, which do not create confusion, according to Article 42 of the Decree Law will not comply with the acquired rights principle and will damage the interest balance between the parties.

Holding otherwise would make it impossible to register serial trademarks later, not aiming to cause resemblance or association (likelihood of association), in the name of both enterprises so long as there exist trademarks registered in the name of different businesses unopposed in the beginning. Yet, it may be imperative and necessary for a trademark identified with an enterprise to respond to changes over time and to renew itself by protecting the main element.

As it is understood that the wordings in the dispute, "E. Jady" and "E...toff", existing with the main element of "E...+crown figure" protected under serial trademarks do not aim to create confusion by way of resemblance or association, or to gain an unfair benefit due to the concurrent existence of the wording "UE..." in the parties' trademarks, it cannot be concluded that statutory requirements in Articles 7/1-b and 8/1-b in the Decree Law no: 556 are met. 11th Unit of Court of Appeal, 2007/7547, 2008/10251, 19.09.2008

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