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REPUBLIC OF TÜRKİYE
ISTANBUL REGIONAL COURT OF JUSTICE
16TH CIVIL CHAMBER
Merits No: 2019/2343
Decision No: 2019/2251
ACTION: Following the completion of the preliminary examination of the file transmitted to our Chamber for appellate review, a judgment was rendered upon examination conducted over the file without the necessity of holding a hearing pursuant to Article 353 of the Code of Civil Procedure (HMK), based on the contents of the file;
JUDGMENT: Counsel for the plaintiffs stated that the main trademark "..." belonging to plaintiff ...l and the trademark "..." belonging to plaintiff ... were published by the defendants over the website http:/... for online information exchange purposes; that this situation constitutes trademark infringement and unfair competition; and claiming that the subject website belongs to the defendants, requested a determination, cessation, and prevention of the said situation as trademark infringement and unfair competition, the blocking of online access to this site, and an award of material and non-pecuniary damages.
On 17/05/2019, an expert report was obtained by the Court, and referencing this report, the Court granted the request for an interim injunction on the grounds that the trademark "..." bearing registration number 2012/91262 belonging to plaintiff ... was used on the defendant company's website in the domain name and content in an indistinguishably similar manner, fulfilling the condition of prima facie proof (yaklaşık ispat); decided to preliminarily enjoin the use of the phrase "..." against a security bond of 50,000.00 TL, and ordered the blocking of access to the website with the domain name www....://..com.
Counsel for Defendant ... filed an objection against this interim injunction decision. In the objection petition, counsel for Defendant ... submitted that:
An access blocking decision can be rendered pursuant to the provisions of Law No. 5651, and the specific offenses triggering such a decision are enumerated in Article 8 of the said Law;
In the concrete case, none of these catalog offenses were committed;
Furthermore, under Law No. 5651, an access blocking decision can only be rendered by Peace Judgeships of Criminal Jurisdiction (Sulh Ceza Hakimlikleri), and precedents of the 4th Civil Chamber of the Court of Cassation exist on this matter, rendering the decision contrary to law for this reason;
Furthermore, the subject trademark "..." has been used by his client since 07/12/2017 on its website designed as an independent information-sharing platform;
The full name of the trademark is an abbreviation for "..., innovation, communication, sharing platform", and simultaneously, it is an original brand conceived by his client as a homophone for the sound of censorship in mainstream media;
The trademark registration application was filed on 17/05/2019 and registration proceedings are currently ongoing;
The trademark ... is not used on their website, and no similarity exists other than 3 letters;
Considering that the concept of the average consumer shall be examined specifically for each case, the difference between the plaintiff's trademark and his client's trademark can easily be distinguished;
Moreover, the plaintiff acknowledged on page 2, section 4 of the statement of claim that they offer entirely different services over the internet by defining the site content as a forum where user comments on trending individuals and topics take place;
Likewise, the best proof of whether the average consumer can distinguish or confuse these two trademarks is the Google search engine; when existing trademarks are typed into Google, it is understood whether the results are similar; when ... is typed, no trademark belonging to the plaintiff appears in any search results shown to the consumer, and when ... is typed, no result belonging to his client's trademark appears;
The trademark logo in his client's application consists of plain ... text written in white ITC Bauhaus font on a navy blue background, whereas the plaintiff's trademark logo consists of ... text written in white inside a white square on a round sea-blue surface with a drawing vastly different from his client's trademark, rendering confusion between the trademark logos impossible;
In fact, these points were identified in the expert report, yet a conclusion was reached that a likelihood of confusion exists solely and exclusively due to letter similarity between ... and ...;
Furthermore, in the Turkish Patent and Trademark Office (TPMK) search tab, numerous trademarks containing the letters ... exist, which were registered without encountering any legal obstacle;
Consequently, an access blocking decision cannot be rendered on grounds of trademark infringement;
Additionally, the expert report was not procedurally compliant, as an odd number of experts must be appointed pursuant to Article 267 of the HMK, whereas the present report was prepared by two persons; thereby requesting the setting aside of the interim injunction decision.
Following the examination conducted by holding a hearing, the Court decided on 02/07/2019 to reject the objection on the grounds that:
Pursuant to Article 159/1 of the Industrial Property Code (SMK No. 6769), an access blocking decision regarding a website can be rendered;
Although the expert panel consisted of two persons, their fields of expertise were distinct;
According to the content of the defendant's website, trademark use existed in a field similar to the services for which the plaintiff's trademark was registered;
It was specified in the report content that a likelihood of confusion existed between the trademarks, and the condition of prima facie proof was fulfilled.
Counsel for Defendant ... appealed this decision. As grounds for appeal, counsel for Defendant ... repeated the matters set forth in the objection petition.
It was observed that the "...." trademark bearing registration number ... belonging to plaintiff ... A.Ş. was registered on 02/11/2012 in classes 9, 35, 38, 41, and 42, and the "..." trademark belonging to the other plaintiff was registered in the same classes on 02/11/2012.
In the expert report dated 17/05/2019 obtained during the trial, an opinion was delivered stating that:
Content similar to the screenshot printouts submitted by the plaintiff as an annex to the statement of claim is currently live;
The website http://www.... belongs to ...;
The currently broadcasted content is in the nature of an online information exchange and communication platform;
Trademark use exists on the domain name
The phrase biipp is essentially the written transcription of the elongated pronunciation of the bip trademark;
Containing two 'i's and two 'p's does not render this phrase distinctive or different from the plaintiff's registered bip trademark in terms of perception by an average attentive consumer;
The service offered on the https:....com site falls within the scope of Class 38 registration of trademark No. 2012/91262 belonging to plaintiff ...;
It creates a likelihood of confusion/association among average attentive consumers.
The lawsuit pertains to claims for the determination, cessation, and prevention of trademark infringement and unfair competition, as well as material and non-pecuniary damages. The dispute brought before our Chamber relates to the decision rejecting the objection to an interim injunction.
Although Article 267 of the HMK stipulates that an expert shall be appointed as one person or an odd number, because the expertise fields of the experts appointed in the file subject to appeal are distinct, the appellate claims of the defendant's counsel regarding this aspect are not well-founded.
On the other hand, considering the scope of Article 159 of the Industrial Property Code No. 6769 (SMK), the appellate claim asserting that an injunction decision in the form of access blocking cannot be rendered is likewise not well-founded.
In the content of the report obtained by the Court, an opinion was delivered that: the phrase ".." used as a trademark on the defendant's website shares similarity with the "..." trademark belonging to the plaintiff; essentially, the phrase "..." is in the nature of the written transcription of the elongated version of the "...P" trademark; the inclusion of two 'i's and two 'p's in the phrase "..." used by the defendant does not render it distinctive or different from the plaintiff's registered trademark; furthermore, the plaintiff's "..." trademark is registered in Class 38, and the service of providing an online shopping and communication platform offered on the defendant's site is used as an activity falling within the scope of registration of the plaintiff's trademark No. 2012/91262, creating a likelihood of confusion/association among average attentive consumers. Considering both the scope of the file and the content of the report obtained, the appellate claims of the defendant's counsel are not well-founded.
This being the case, it became necessary to reject the appeal of Defendant ...'s counsel directed against the first instance court decision, which is compliant with procedure and law, and the following judgment was established.
Rejection of the appeal request of Defendant ...'s counsel ON THE MERITS (ESASTAN REDDİNE) pursuant to Article 353/1-b-1 of the HMK,
Because the fee was collected in advance, no further fee collection is required,
Appeal litigation expenses incurred by Defendant ... to be borne by himself,
Because the appellate examination was not conducted with a hearing, no award of attorney fees is required,
Rendered unanimously over the file as a FINAL DECISION (KESİN OLARAK) pursuant to Article 362/1-f of the HMK. 25/10/2019
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