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Brinks Shareholder Andrew Avsec Quoted in World Trademark Review Regarding Harvard Win in Turkey
Published By World Trademark Review
February 21, 2019

On February 21, 2019, Brinks Shareholder Andrew Avsec was quoted in an article in World Trademark Review regarding a recent international victory.  See below for the article's full text:

"We refer to this case as a hydra”: inside Harvard’s battle to protect its brand in Turkey

  • Court recently ruled for Harvard in case focused on licensing of its name to schools
  • Harvard utilised Ministry of Education to fight franchise scheme using its brand

  • Legal team behind case expands on litigation strategy; present key takeaways

Last month a Turkish court ruled in favour of Harvard University in a case centred on the unauthorised licensing of the Harvard name to over 30 schools in the country. The legal team behind the storied institution’s efforts to protect its brand spoke to WTR about the case, which offers a number of takeaways for trademark professionals.

Harvard has 323,000 alumni around the world, with close to 200 Harvard alumni clubs in over 70 countries. Given this global reach, the Harvard Trademark Program was established by the President and Fellows of Harvard College (Harvard University) in order to protect and license its marks around the world. In terms of brand challenges, Rick Calixto, executive director of the Harvard Trademark Program, explains: "The most common infringements involve various kinds of schools that use the HARVARD name both online and on buildings, professional education programs allegedly sponsored by Harvard, health or medical related companies or products expressing an affiliation with Harvard, and infringing or counterfeit clothing and merchandise. "

The case in question arose following the filing of over two dozen applications in Turkey for such marks as HARVARD LANGUAGE SCHOOL, MARKALAR BIRLIGI COLLEGE OF HARVARD, and HARVARDS COLLEGE OF LONDON LTD. While Calixto notes that "alumni, faculty and students regularly report various infringements throughout the world", in this instance the filings – from the defendants and their companies  – were the starting point. The trademark office blocked some of the applications, while Harvard opposed (and prevailed against) 15. However, the spate of filings sparked a deeper investigation and the legal team discovered that the defendants were licensing the HARVARD mark in a franchise-type scheme to various operators of schools throughout Turkey.

Calixto expands: "In addition to the trademark applications and the franchise 'Harvard' schools, there were dozens of domain names and social media pages bearing the HARVARD marks, all affiliated with these networks of schools. Our investigations showed schools with multi-story banners bearing the HARVARD mark. Schools would display licenses for the mark, purportedly based on a trade name registered in the UK."

These schools were being charged license fees, Calixto adding: "It was one of the most egregious examples of trademark infringement that I have seen. We came to refer to this case as a hydra because it involved dozens of infringing trademark applications, domain names, and schools."

In terms of the domains, explains Andrew Avsec, shareholder with Brinks Gilson & Lione (which worked with Harvard on the case) , "Harvard immediately filed a UDRP complaint for the domain names that incorporated the HARVARD mark, and succeeded in having a dozen domain names transferred early on in the dispute. Harvard also filed social media takedown requests and filed a request with the trademark office in Turkey to have the HARVARD mark recognised as a famous mark, which was granted during the proceedings".

Legal action was also initiated at the Turkish IP court in 2015 after cease and desist letters failed to generate response. At this juncture, recounts Okan Can, partner and attorney at law with Deris (which represented Harvard), "the defendants took several steps to escalate the dispute. First, they alleged in court that their activities were permitted because they had a license from a company named Harvard Publishers UK, an entity owned by the defendants. Second, they alleged that a preschool located on a 'Harvard Street' in the United States had given them a license to use the HARVARD mark. Third, they filed their own lawsuit to cancel all of Harvard’s trademark registrations based on alleged non-use. While the court entered a preliminary injunction early in the case, these arguments helped to convince the court that the preliminary injunction should be partial and only apply to some of the defendants’ activities. It was not until we addressed each one of these issues that a full preliminary injunction was entered".

Avsec notes that Harvard was able to evidence use of its marks in Turkey and that, "while neither the UK company name or the preschool located on a Harvard Street provided the defendants with strong legal arguments", the legal team observed that the license from the preschool appeared to be forged. After obtaining a declaration from the preschool stating that it had not heard of the defendants or entered into any licensing arrangement, the court expanded the preliminary injunction.

A particularly interesting aspect of the case was that Harvard turned, not only to the courts, but also to the Ministry of Education in its efforts to halt the infringement. Can explains: "We contacted the Ministry of Education to open an investigation into the network of infringing schools. At a later stage in the lawsuit, the defendants relied heavily on the fact that many of the schools had been accredited by the Ministry. Because of this early effort to open the investigation with the Ministry, it agreed to support Harvard in the case and rejected the defendants’ attempt to rely on the accreditation (which did not assess whether the schools were infringing Harvard’s trademark rights). Having found that there were more than 30 schools operating under the HARVARD trademark in different parts of Turkey, we also served letters inviting each of these schools to stop using the trademark as part of an awareness building activity, which convinced some of the schools to stop their infringing activity before the court’s ruling."

This strategic move also helped to move the case forward, Can noting: "The defendants constantly attempted to lengthen the trial with various arguments and a counter cancellation action based on non-use which delayed the issuance of the final ruling. However, the intervention of the Ministry of Education and the favourable expert report issued by the Court-appointed experts accelerated the final ruling."

Asked for takeaways from the battle, Avsec observes that “having a broad strategy from the outset of the case allowed us to pivot when the defendants threw new obstacles in our way many of the actions taken at the beginning of the case paid dividends much later in the case.”

Can concurs, concluding: “The dispute was a good example of how a brand owner can more effectively combat an infringement by not only bringing an action before the courts, but also by drawing the attention of the related state authority for ensuring the public interest. Furthermore, in trademark disputes where there are several potential defendants, it is important to focus on the main infringers – ie, the sources of the infringement. Giving priority to the main infringers in litigation creates time efficiencies and cost savings, and can encourage the remaining infringers in the case to cooperate.”

This article first ran in World Trademark Review.  

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