COPYRIGHT AND BAD FAITH ALLEGATIONS EVALUATED BY THE SUPREME COURT: MENINBLACK DECISION
COLUMBIA PICTURES INDUSTRIES INC. has adapted the film work “Men in Black”, inspired by Lowell Coningham’s comic book “Men in Black”, which was first published in 1934. The producer company also owns the financial rights of the cinematographic work. The trademark with the phrase MENINBLACK is registered in various classes in the name of the producer company and is also used in many promotional products such as t-shirts, hats, toys and keychains through license.
It has been determined that the trademark registration application with the phrase “MIB MENINBLACK” before the Turkish Patent and Trademark Office has been made in class 25 and the application has been objected to by the right holders (without prejudice to other provisions) in accordance with the provisions of Articles 6/6 and 6/9 of the IP Law. In the evaluation of the objection to the publication made by the Authority, the article was changed because the phrase “MIB MENINBLACK” was “not original enough”. The objection made pursuant to Article 6/6 was rejected, and the objection made under Article 6/9 was rejected on the grounds that “it could not be proven that the applicant acted in bad faith”. The issue was brought to the Judiciary and in the decision of the Local Court;
It has been evaluated that it is not a coincidence that the name of the work “Men in Black” and the name of the product that the plaintiff puts on the market for textile products such as t-shirts and hats, glasses, toys, glasses and other promotional materials, or that is indistinguishably similar or similar that creates confusion was selected as a trademark in Turkey and applied for, because, as mentioned in the defendant’s expert report, “The defendant has previously It can be seen that the trademark application “MIB MENINBLACK” is the same as the use in the plaintiff’s films and products. This brand is too identical to be considered inspiration. It can be said that the defendant is trying toY register similar trademarks belonging to others. ”
Supreme Court 11. It has become final with the “APPROVAL” decision of the Civil Chamber dated 08/04/2025 and numbered 2024/4146 Decision 2025/2253.
Our country is a party to the Berne Convention, and if the work and the related elements in the work are the subject of a trademark application, it is subject to Article 6/6 of the IP Law. Within the scope of the article, it is stated that “whether the work or the connected element is sufficiently original” will be evaluated. In our opinion, it is important that the originality evaluation of the works subject to the trademark application is carried out in a broad framework in order to activate the protection provided to the works. Thus, the Berne Convention will be operational.
Again, we think that the allegations that the trademark applications involving the works are made in bad faith should be evaluated in a broad framework, taking into account the characteristics of the concrete case.
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