The Turkish Court of Cassation Reminds of the Significance of “Vested Rights” in Two Recent Decisions: Frigo V Frico

The concept of “vested rights” is notable in the Turkish trademark law, as it serves as a strong defense against potential refusal of a later mark because of the likelihood of confusion it may create against an earlier one.

In its two recent decisions related to the court proceedings between the same parties, the Turkish Court of Cassation reminded the importance of vested rights one more time.

Before proceeding with the parties’ claims and defenses, please review the below chart referring to the parties’ trademarks.

As can be forecasted after reviewing the above chart, the plaintiff challenged the defendant’s “FRICO” marks which are seeking registration for “Milk and milk products; cheese and cheese products; edible oils and fats; butter and butter oil.” in class 29, by arguing likelihood of confusion with its “FRIGO” marks which are also registered in class 29 inter alia, and well-known status of “FRIGO” trademark, which is indeed a famous ice cream brand in Türkiye, first launched in 1950s and had a great success at that time.

In fact, “FRICO” marks copied above have been subject to two separate court proceedings.

In the proceedings against Mark 2, the first instance court decided that the parties’ trademarks are not confusingly similar at all, and the plaintiff failed to prove that the contested mark would take unfair benefits from or harm the reputation or the distinctive character of “FRIGO” marks. The Regional Court of Appeals did not agree with this reasoning, and concluded that the parties’ trademarks are indeed similar, and they cover similar goods in class 29, but the defendant has registered rights for “FRICO” mark since 1988 in Türkiye and it uses its “FRICO” trademarks in Türkiye, so Mark 2 should be considered as a serial of these earlier rights, and the prior registrations confer vested rights to the defendant and allow the registration of the fresh filing. This decision of the Regional Court of Appeals is upheld by the Court of Cassation as well.

In the proceedings against Mark 1, the first instance court evaluated that the parties’ trademarks cover similar goods in class 29, that the plaintiff’s “FRIGO” marks have no meaning in Turkish and they enjoy reputation and enhanced distinctiveness, and that “FRICO” and “FRIGO” marks have an average degree of similarity; but the defendant has registered rights for “FRICO” mark since 1988 in Türkiye and it uses its “FRICO” trademarks in Türkiye, so Mark 1 should be considered as a serial of these earlier rights, and the prior registrations confer vested rights to the defendant and allow the registration of the fresh filing. This decision of the first instance court is upheld by the Regional Court of Appeals and the Court of Cassation as well.

These decisions approved and finalized by the Court of Cassation are important to draw attention to the significance of earlier rights, which may confer vested rights to the registrant to obtain new registrations for its later trademarks; because even if it can be concluded that the later trademark may create likelihood of confusion against a third party’s trademark, the applicant still has the chance to overcome such possible refusal based on its prior registrations, which are required to incorporate the same main element and to seek registration for the same and similar goods and services with the new filing. It should be also noted that to mention of the concept of vested rights, Turkish judiciary also investigates the use requirement for the earlier trademark registrations and expects that the later filing can be considered as a serial of the earlier marks, and it does not approach to the third party’s trademark.