SHIRLEY decision illustrates new approach in assessing similarity
The Trademarks Department Directorate of the Turkish Patent Institute (TPI) has adopted a new approach to the assessment of similarity in a case involving the trademarks SHIRLEY and SISLEY (Case 2008-O-98092, March 18 2008).
Under Article 7(1)(b) of the Trademark Decree Law, a trademark will be refused registration if it is found to be "identical or indistinguishably similar" to an earlier trademark upon ex officio examination by the TPI. Under Article 8(1)(b) of the law, a trademark that is similar to an earlier mark will be refused registration upon opposition by the trademark owner. The criteria used by the TPI for the assessment of similarity were uncertain, which made it difficult to anticipate the outcome of the proceedings.
In the case at hand, the owner of the trademark SISLEY opposed the application for the registration of the mark SHIRLEY (and design). The Trademarks Department Directorate held that the trademark SHIRLEY was "identical or indistinguishably similar" to the SISLEY mark and ordered that the description of goods in the application for SHIRLEY be restricted to exclude goods covered by the SISLEY mark. Although the decision was issued upon opposition by the owner of the SISLEY mark, the directorate assessed the similarity between the marks under Article 7(1)(b). The directorate concluded that the marks were "indistinguishably similar", even though a finding that the marks were similar would have been sufficient.
The decision demonstrates a new approach in the assessment of similarity. The directorate examined the overall impression of the marks and concluded that the differences between them (ie, the flower device, stylized characters and different letters) were not sufficient to prevent a likelihood of confusion.
It is hoped that, following this decision, the TPI will be less rigid in its application of the criteria set out in the law.
Güldeniz Dogan and Ceylin Beyli, Mehmet Gün & Partners, Istanbul
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