THE PRINCIPLE OF CLASSIFICATION AND ITS EFFECT ON TRADEMARK DISCLAIMER

ABSTRACT

According to Industrial Property Law; trademark is defined as words, figures, colors, letters, numbers, sounds, and the form of goods or packaging, including the names of persons so as to ensure a clear and precise understanding of the subject of protection provided to the owner. Accordingly, it’s very important that whether trademarks cause confusion, whether trademark rights have been encroached to not to provide unfair advantage. However, similar trademarks can be seen in different product or service groups. One of the reasons why of this is principle of classification, by all means, hereby principle is not able to avert invalidity of trademarks by itself. The principle of classification in Industrial Property Law has recently became prominent and extremely important in invalidity of trademark lawsuits. In this article, it will be mentioned that the impact of the principle of classification on trademarks and refusal of trademark.

NACE CLASSIFICATION FOR CLASSIFICATION OF GOODS AND SERVICES

In the registration of trademarks, the application for which class of goods/services is made is very important for the purpose of registration of the trademark. Article 11 of the Industrial Property Law referred to the Nice Agreement and stated that in accordance with this agreement we are a party to, the goods and services subject to the application shall be classified in the classes to which they belong and class numbers shall be classified on the basis of the Nice Agreement.

In terms of party countries of Nice Agreement entered into force 08.05.1961, Agreement serves the aim of constituting a common classification system for goods and services for registration of trademarks. Turkey has became a party of Nice Agreement with the Cabinet Degree dated 12.07.1995 and numbered 95/7094. In this context, the classification brought by Nice Agreement made by “Declaration on the Classification of Goods and Services for Trademark Registration Applications”.

Accordingly the classification consists of the list of classes with explanatory information and the alphabetical list of goods and services of the class to which all goods and services belong.

EFFECT OF PRINCIPLE OF CLASSIFICATION ON INVALIDITY

According to Industrial Property Law Art. 5/1-a, power to prevent the use and registration of a trademark by someone else is limited to the same or the same type of goods/services covered by the registration. Hereby limitation is named as “Principle of Classification” in the doctrine. The legistrator clearly specified the hereby situation, its very important to determine which classes of goods and services will be used by trademark in order to not limit the protection provided for the registration of trademarks against third parties, it can be seen in the law that it is possible to register trademarks in different classes according to Principle of Classification and evaluations made acoording to concrete case.

An another point to evaluate here is, in circumstances such as trademarks in the scope of different goods and services are similar or the same, although different evaluations are made according to concrete cases, whether there is a possibility such as the consumer mixing related trademarks in terms of different classes in other words different goods and services. Except exceptional cases, even though the trademark which is same or similar to a trademark registered before desired to be registered in terms of different goods and services if there is a possibility such as the consumer mixing the two trademarks, the owner of the trademark has already been registered or can object the registration of the other brand.

THE RELATIONSHIP BETWEEN WELL-KNOWN BRAND AND PRINCIPLE OF CLASSIFICATION

It is explained on the above that even though trademark is similar or same with a registered trademark, it can be used in different goods or services and it has to be evaulated according to different concrete cases. However, according to relative grounds for refusal regulated in Industrial Property Law Art. 6, since the famousness level the trademark which has been registered or applied for registration reached in Turkey can cause unfair advantage, damage reputation of trademark or result in damaging the distinctive character of the trademark which has been applied for registration, if the owner of the trademark which has been registered or applied for registration before objects, the application of registration of trademarks gets rejected even though it will be used for different goods or services. According to the same article, applications of trademarks in the same or similar qualifications with recognized trademarks according to Paris Agreement first duplicated entry of 6th article, get rejected on appeal in respect of the same or similar goods or services.

In accordance with the classification principle and the determination principle, a trademark is only evaluated within the scope of the goods and services its registered. However, when the reputation of well-known trademarks is taken into consideration, according to concrete case, as a result of certain criterias even though trademark desired to register and well-known trademark are in different classifications, goods and services can be considered similar according to an average consumer.

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