Recognition of trademark has impact on evaluation of similarity and likelihood of confusion
The proprietor of a trademark which is either registered or has an earlier application date can oppose a trademark application if it is identical or similar to its own trademark and there is likelihood of confusion due to the identity or similarity of the goods/services covered by the marks (Article 8(1)(b) of the Decree-Law No 556). A likelihood of confusion means a risk that the public might believe that the goods or services in question come from the same establishment or from economically linked establishments.
Trademarks with a high distinctiveness benefit from a wider scope of protection. Therefore, the more distinctive the earlier trademark, the greater the likelihood of confusion. When assessing whether the similarities between two trademarks will cause a likelihood of confusion, the distinctiveness of the earlier trademark and its recognition among the public must be taken into account.
Until now, the Turkish Patent Institute (TPI) generally considered the recognition of the earlier trademark among the public only when the opponent had argued that its mark was well known. However, in a recent case, it is understood that the Re-examination and Evaluation Board of the TPI examined an opposition based on Article 8(1)(b) in a way that differed from the examination of the TPI, and concluded that there was a likelihood of confusion between the trademarks due to the recognition of the earlier trademark by the public.
In the case at hand, the world’s leading alliance of public service media opposed a trademark application which was not highly similar to its trademark, but covered the same services. The opponent claimed that:
the marks were similar and there was a likelihood of confusion between them; and
the applicant had applied to register the mark in bad faith and sought to take advantage of the earlier trademark’s recognition and reputation.
Opposed trademark application:
The TPI initially rejected the opposition, stating that there was no similarity or likelihood of confusion, and no bad faith on the applicant’s part. An appeal was filed before the Re-examination and Evaluation Board of the TPI. Although the appeal was not specifically based on the claim that the earlier mark was well known and was not supported by evidence in this respect, it seems that the board examined the case in a more focused manner than the TPI and found that the opponent’s trademark was widely known in Turkey. The board accepted the opponent’s claims with regard to similarity and likelihood of confusion and rejected the application.
It is significant that, although the opponent’s claim regarding the bad faith of the applicant was not accepted by the board, it seems that the latter took the recognition of the opponent’s trademark in Turkey into account when determining the similarity of the marks and the likelihood of confusion between them.
The second significant point in this case is that the decision of the board was surprisingly long compared to earlier decisions. The board explained the legal precedents on the subject and its reasons for issuing such decision in detail. Considering the TPI’s past decisions, it seems that the TPI is now developing a new approach when writing its decisions which is reminiscent of the Court of Appeal’s reasoned decisions. Arguably, such reasoned decisions of the TPI may influence lawsuits filed against the TPI’s decisions, as well as the legal precedents that will result from such court actions.
Ceylin Beyli and Elfiye Kudaki, CBL Law Office, Istanbul
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