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We, as Ankara Patent, as an indication of great importance
attached by us to intellectual property rights of our clients, are
carefully pursuing their legal struggles against infringement of
their intellectual property rights both in Türkiye and in the
international arena. In this article, we are going to explain in
details the legal proceedings pursued by us upon and due to
infringement in Türkiye and Europe of the rights of our client
arising out of its HEPSİBURADA trademark. We wish you pleasant
reading!
A great many of reputed trademarks are facing bad faith acts of
infringement on the rights associated to them in geographies where
their level of reputation is low or even they are not yet protected
by registration. Though such acts are unfortunately recorded too
often in the Turkish market, similar cases or acts may be
encountered also in the other regions of the World such as Asia or
Europe. Legal processes aiming to eliminate said infringements of
rights and the probability of success of the trademark owner
therein, of course, vary depending upon many different variables
like the level of distinctiveness of trademark, and level of
reputation of trademark in the geography of infringement, and proof
of bad faith of counterparty and/or specific laws and regulations
of the geography of infringement pertaining thereto.
A similar event has recently been experienced by
HEPSİBURADA, leading e-commerce brandof Türkiye who is
quite active in the Turkish market since more than 20 years and the
first and – for now – sole Turkish company quoted and
listed in NASDAQ, and as a result, thanks to the plantiff’s
strong trademark strategy and intensive legal action plan,
HEPSİBURADA trademark registered by a bad faith applicant in
EUIPO (European Union Intellectual Property Office) has been
nullified and cancelled, and bad faith act of the applicant has
been finally determined by a judgment of the European Union Court
of Justice (CJEU) General Court.
In this article, we intend to explain the details of the whole
process from the very beginning and the judgment of CJEU General
Court which is fairly important for well-known trademarks and bad
faith trademark registration acts.
A trademark registration application has been filed for hepsiburada.com
word sign with an application number of 017941312 to EUIPO in the
name of D-Market Elektronik Hizmetler ve Ticaret Anonim
Şirketi (D-Market) for the classes 35, 38 and 42 on August 10,
2018.
Against the aforesaid trademark registration application, an
opposition has been filed based on the hepsiburada
trademark, which is already registered under number 017151796 on
December 15, 2017, for goods and services in classes 21 and 35 at
EUIPO.”
Parallel to that opposition process, a request for invalidity
based on bad faith was filed before EUIPO on November 6, 2019, by
D-Market who is the creator and rightful owner of the
HEPSİBURADA trademark cited in the opposition, under
registration number 017151796.
Another important point required to be underlined here is that
the same trademark owner has also a domain name of www.hepsiburada.life, and is
dealing with e-commerce activities through this domain name within
the borders of EU in Turkish language. Though HEPSİBURADA word
sign is used with a different logo within that internet website,
consumers are clearly tried to be misled and misdirected by such
expressions as “Hepsiburada European Online Sales Site”
which is also written in Turkish..
Another important point is that the founders and managers of
Alpak B.V., the bad faith applicant, are Turkish citizens. This
fact makes it impossible for the registration owner to be
incognizant of HEPSİBURADA trademark, one of the most
well-known and reputed trademarks of Türkiye. Besides, there
are also trademarks registered in EUIPO in the name of the same
applicant, but indeed registered in Türkiye in the name of
different companies.
While the legal process continued in EUIPO as described in the
preceding paragraphs, intensive legal proceedings have been
initiated also on national basis in Türkiye. For the sake
of integrity of information given herein about the legal processes
in EUIPO and EU courts, the legal proceedings handled in
Türkiye will be separately mentioned in details at the end of
this article.
While the legal proceedings continued concurrently in
Türkiye, in March 2021, EUIPO Cancellation Division, also
examining the claims and applications for invalidity, decided to
reject the application for a declaration of invalidity. In said
decision, it is argued that the level of reputation of
HEPSİBURADA trademark in Europe is not adequate, and there are
not adequate findings proving that the applicant was cognizant of
“HEPSİBURADA” trademark at the time it filed a
trademark registration application, and thus, there are not
adequate evidences as to bad faith of the applicant in respect of
the subject application. In our opinion, it is unequivocally
obvious that the related EUIPO decision is an incomplete decision
not based upon a detailed investigation as to merits of the case.
Said decision has not ever dealt with such arguments as to the
director of the applicant being a Turkish-origin person, and
existence of expressions and phrases trying to mislead consumers in
www.hepsiburada.life
internet page belonging to the same company, and the internet
site’s being fully in Turkish language.
Exactly at this point, we have faced difficulties in proving
that registration of an exactly same trademark by a different
applicant is indeed a bad faith act no matter to which extent the
level of distinctiveness of the subject trademark is high, under
circumstances where a trademark which is extremely well-known and
reputed on national basis is not known and reputed in different
other markets, and has a limited range of use or even is not ever
used therein.
However, that decision has been appealed in EUIPO Board of
Appeal on various grounds particularly including the explicitly
clear bad faith and intention of the applicant as proven by
evidences, and that it is impossible for applicants to be
incognizant of the well-known HEPSİBURADA trademark at the
time of application.
In the related petition of appeal, it is argued that
HEPSİBURADA trademark is an extremely strong and
well-established trademark created by D-Market, and is so very
well-known and reputed in Turkish consumers, as proven once more by
many evidences, and also that Alpak B.V., managed by directors who
are Turkish citizens, has acted in bad faith in filing its
registration application for that trademark, and it is impossible
for them to be incognizant of HEPSİBURADA trademark as of the
date of application, and finally that such arguments are further
proven by the fact that use of the subject trademark takes aim at
Turkish consumers.
Although Alpak B.V claimed in its response petition that the
term ‘HEPSİBURADA’ is a commonly used phrase and
composed of the English words ‘Everything Here’, the
EUIPO Board of Appeal accepted all appeal claims filed by D-Market
in January 2023 and decided to invalidate the HEPSIBURADA trademark
under registration number 017151796.
Before entering into details of the decision of EUIPO Board of
Appeal, we would like to state that during the aforesaid process,
Alpak B.V. has transferred its contested HEPSIBURADA trademark, no.
017151796 to Dendiki B.V. Thereupon, D-Market has argued that the
intention underlying said transfer of trademark was to slow down
the legal process in Türkiye, and at the same time, to try to
make the legal process pending in Europe more complicated, and has
submitted some additional testimonies and evidences with a view to
demonstrating the organic links between subject companies by
indicating that directors and officers of Alpak B.V. and Dendiki
B.V. belong to the same family. Therefore, we are hereinafter going
to name the trademark owner as Dendiki B.V. (former Alpak
B.V.).
In its related decision, EUIPO Board of Appeal states that
the documents filed to EUIPO Cancellation Division already prove
the bad faith act of Dendiki B.V., and so, Cancellation
Division’s disregarding such documents is an error, and the
documents initially submitted to support the claim of cancellation
clearly demonstrate that Dendiki B.V. was aware of HEPSİBURADA
trademark, and thus, the acts of Dendiki B.V. are not
honest.
In addition, the EUIPO Board of Appeal stated that Dendiki
B.V.’s commercial activities with this trademark being in the
e-commerce field, having a manager of Turkish origin, along with
D-Market’s recognition in Türkiye and being a leading
e-commerce provider since 2013, leave no doubt that Dendiki B.V.
and its managers were aware of the ‘HEPSİBURADA’
trademark. Furthermore, it is also clearly stated in the
decision of EUIPO Board of Appeal that the intentions and acts of
Dendiki B.V. do in no case have a commercial logic or aim at a fair
competition in market, but on the contrary, they are obviously
in “bad faith”, and that purpose of the applicant is to
make use of reputation of the trademark, and to constrain
D-Market from trading in the European Union zone.
Most importantly, it is expressed by the Board of Appeal that
D-Market’s activities are developing in EU market since 2016,
and its products are being delivered in many member states since
that date, and what a coincidence that an application for the
subjected trademark just then and at that time.
However, said decision of EUIPO Board of Appeal is brought
forward by Dendiki B.V. to the European Union Court of Justice
(CJEU) General Court. In its bill of claims, Dendiki B.V.
argued:
- That HEPSİBURADA trademark has a low level of trademark
protection, and is a part of normal daily language in Turkish
language, and HEPSİBURADA trademark is directly related to and
associated with the underlying services in the minds of
Turkish-speaking consumers; and - That HEPSİBURADA trademark owned by D-Market is known and
reputed only in Türkiye, and does not have such a reputation
within the borders of EU, and www.hepsiburada.com web site
is only in Turkish language; and - That D-Market’s arguments that its HEPSİBURADA
trademark is already being used within EU borders are basically
unsustainable, and D-Market is not active in EU; and - That they are not, and are not required to be, cognizant of
HEPSİBURADA trademark; and - That they do not have any intention as to preclude D-Market
from using its trademark, and they use HEPSİBURADA phrase only
to indicate that their web site is in essence a sales platform
offering different products; and - That “first come first serve” rule is valid and
application in trademark registration.
In response to these arguments, D-Market has continued to stress
out its arguments and replies expressed and submitted also before
start of legal proceedings. They may be summarized as follows:
- HEPSİBURADA trademark is one of the trademarks created by
D-Market, having already reached a high level of distinctiveness,
and the highest level of reputation within the borders of
Türkiye. - As Turkish language is not commonly used within the borders of
the European Union, HEPSİBURADA is seen as a genuine and
created trademark. - It is contradictory to defend that HEPSİBURADA phrase is
not distinctive, but anyhow to try to register the same in its own
name and to try to prevent registration of it in the name of
D-Market. - HEPSİBURADA trademark is being used by D-Market also
within the borders of the European Union since the year 2017.
Besides, the strategy of expansion of a trademark abroad may vary
according to many different factors. - The fact that HEPSİBURADA trademark is well-known and
reputed in Türkiye, but is not known much in EU does not alone
prove the bad faith act of the applicant. However, it is
unreasonable for a Turkish citizen to be incognizant of
HEPSİBURADA which is one of the most well-known trademarks of
Türkiye. What’s more, it is also proven by the fact that
Dendiki B.V. introduces itself as “Hepsiburada European Online
Sales Website” also in its online sales website serving in
Turkish language. - In presence of bad faith, the “first come first
serve” principle is not valid.
As a result of its detailed investigations, CJEU General
Court has fully dismissed the action by its judgment no. T-172/73
of February 21, 2024, and has upheld the decision of EUIPO Board of
Appeal as to nullification and cancellation of HEPSİBURADA
trademark no. 017171796. One of the most important points
stated in the related judgment of CJEU General Court is that
HEPSİBURADA trademark’s not being well-known and even not
being registered within the borders of the European Union is by no
means related to the assessment of bad faith, and that its
reputation in Türkiye is required to be taken into
consideration in the assessment of bad faith, and also that bad
faith of trademark owner (Dendiki B.V.) must be assessed and
examined independently from the distinctive character of
“HEPSİBURADA” word sign. Furthermore, it is also
expressed in the judgment that the alleged weakness of
distinctiveness of HEPSİBURADA phrase is not needed to be
discussed because this phrase is the common content in both of the
subject trademarks.
As a result of examination of all evidences and testimonies
filed in the course of proceedings, it is concluded that the
disputed application filed for registration of HEPSİBURADA
trademark cannot be said to aim at honest and fair trade in the
market, and the applicant in fact tries to make unfair use of
reputation of the well-known HEPSİBURADA trademark, and the
application is aimed at preventing D-Market’s entry into the EU
market and for these reasons, such determinations of EUIPO Board
of Appeal are also approved and upheld, and it is held that the
trademark owner has filed the subject trademark registration
application in bad faith.
One of the most important achievements for all trademark owners
of this legal proceeding which continued for a fairly long time is
that the registration by a third party of a trademark which is
exactly same as a trademark not well-known in the geography of
trademark dispute may also be considered and treated as a bad faith
act by judgments of CJEU General Court, because in line with
increase in reputation of trademarks and parallel rise in their
commercial value, the bad faith acts affecting them also increase
in parallel thereto, and this in turn becomes an overcostly process
both in terms of timing and economically for trademark owners
trying to protect their trademarks. We hope that particularly an
increase of such court judgments taken in international platforms
will pave the way for prevention of bad faith trademark
registrations to some extent at least.
Dendiki B.V. is still entitled to file an appeal against said
judgment in the European Union Court of Justice. Accordingly, our
readers will be informed about any development that may change the
consequences of said judgment.
As mentioned in the preceding paragraphs herein, while the
processes continued in the European Union, parallel legal
proceedings were initiated also in
Türkiye. Therefore, for the sake of
integrity, we deem it necessary to briefly mention about said
proceedings as well.
The legal action initiated in the name of D-Market against the
related domain name owners is heard in the specialized courts of
Intellectual and Industrial Property Rights in Ankara. The subject
matter of the litigation is focused on whether or not the defendant
has committed any acts infringing on “HEPSİBURADA”
trademark rights of the plaintiff or causing confusion with the
plaintiff’s domain name, and whether or not these acts at the
same time constitute acts of unfair competition against the
plaintiff, and accordingly, whether or not the claims for
determination of trademark right infringement and unfair
competition acts, for cessation and prevention of infringement, for
stoppage of use of “HEPSİBURADA” phrase as a
trademark by the defendant in all channels, for prevention of
access to the defendant’s http://www.hepsiburada.life
internet site, and for prevention of acts which constitute unfair
competition are acceptable and well-based. In reliance upon expert
reports and other findings and examinations, the First Instance
Court has held and judged to uphold the action by coming to the
conclusions that the plaintiff party has the right to prevent the
defendant party’s acts infringing on its trademark rights in
reliance upon its trademarks duly registered in Türkiye, and
that use by the defendant party of its www.hepsiburada.life domain
name and “hepsiburada” phrase contained in that domain
name as a trademark in fact creates commercial effects in
Türkiye, and that such trademark uses of the defendant party
leading to commercial effects in Türkiye are by no means based
on a legitimate ground valid in Türkiye, and that such
trademark uses of the defendant party pave the way for infringement
of “HEPSİBURADA” trademarks owned by the plaintiff
party, and so, said acts of the defendant party also constitute an
act of unfair competition against the plaintiff party. Thereupon,
the defendant party has applead the decision of First Instance
Court before Regional Court of Justice. The case file is still
being reviewed in the Regional Court of Justice. (Judgment no.
2022/108 in case file 2020/333 of Ankara 5th Civil Court for
Intellectual and Industrial Property Rights)
Concurrently, a complaint is filed to Bakırköy Public
Prosecutor’s Office against domain name owners for start of
criminal investigations and criminal action against officers of the
suspect company which infringes on the intellectual rights
associated to HEPSİBURADA trademarks and www.hepsiburada.com domain
name registered in the name of the complainant, arguing that the
suspects commit phishing (identity theft) by creating in www.hepsiburada.life
e-commerce site an impression as if they are a branch of www.hepsiburada.com site
owned by D-Market, and by doing so, they commit two different major
fraudulent crimes, namely “fraud by use of information systems
as a tool” as described in subparagraph (f) of article 158 of
the Turkish Criminal Code, and “fraud by making use of
facilities provided by press and media organs” as described in
subparagraph (g) of the same article, and as a result, the
indictment has been admitted by the court. Thereafter, in the
criminal proceedings, the acts of infringement of the suspects on
trademark rights are proven, and the Criminal Court held and judged
to punish the suspects, but to defer the announcement of the
verdict. The suspects filed an appeal against the Criminal
Court’s judgment, but their appeals are rejected, and the
Criminal Court’s judgment has become final. (Judgment no.
2023/242 in case file 2021/527 of Bakırköy Criminal Court
for Intellectual and Industrial Property Rights)
As a conclusion, these final judgments taken as a result of all
these legal proceedings are fairly important for the well-known
trademark owners. Particularly considering the efforts and costs
spent for strategies adopted by trademark owners in the course of
creation of trademarks and then for protection of them, the
existence of legal remedies which may prevent bad faith trademark
registration applications builds up trust for trademark owners, and
at the same time, plays a role encouraging further growth of
trademarks.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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