PTO Issues Exemplary Decision Clarifying Concept of ‘Bad Faith’

The application passed the initial examination on absolute grounds and was published in the Official Trademarks Bulletin. A foreign beauty and cosmetics company filed an opposition against this application based on: 

• the bad faith of the applicant; and 
• a likelihood of confusion with the opponent’s trademarks, which are registered in Türkiye.

Decision

On 11 January 2024 the Trademarks Department accepted the opposition and refused the registration of the contested application in its entirety.

In particular, the Trademarks Department found that: 

1. the dominant word element of the contested application was identical to the opponent’s trademark;
2. the opponent’s trademark was registered in several other countries; and 
3. the opponent used its trademark for the same goods and was active in the same sector. 

Taking these facts into account, the Trademarks Department concluded that the contested application could not be the result of a mere coincidence and that the applicant had not acted in good faith. The Trademarks Department also upheld the opponent’s likelihood of confusion claim.

The decision has now become final as the applicant did not appeal.

Comment

Bad faith is frequently raised in Türkiye as a ground for opposition. As there is no definition of ‘bad faith’ in Turkish trademark law, the PTO requires solid and clear evidence proving the applicant’s bad faith or the existence of a series of events/facts revealing the applicant’s bad faith. The mere fact that the trademarks are similar and create a likelihood of confusion is not sufficient to establish bad faith. The PTO usually accepts bad-faith claims in cases where:

• the applicant - which usually operates in the same sector as the opponent - imitated the opponent’s original trademark in terms of word and device elements; 
• the applicant created a portfolio of third-party trademarks; 
• the parties had a prior relationship such as licensing, distributorship or employment; or 
• the applicant applied for the same trademark as an earlier mark that was revoked following a non-use action filed by the opponent. 

These are illustrative examples stemming from PTO decisions issued over the years; each matter is evaluated on its own merits by the PTO, taking all factors into account.

In the present case, the PTO considered all factors in evaluating the applicant’s bad faith, including (i) the similarity of the trademarks, (ii) the originality of the opponent’s trademark, (iii) the registration status and usage of the opponent’s trademark abroad, and (iv) the relation between the goods and services sought to be registered and the sector where the opponent’s trademark is used.

The PTO’s approach to bad-faith applications is well-established but continues to evolve with new decisions, which helps to better evaluate the concept of ‘bad faith’ and compare the situation in Türkiye with developments abroad.