Well-known status of earlier marks taken into account in opposition proceedings
A recent decision rendered by the Turkish Patent Institute (TPI) illustrates that the latter will consider all relevant factors, including the well-known status of a trademark, when assessing the likelihood of confusion between two marks.
In January 2011 SPA Fonksiyonel Gıda İçecek ve Turizm Yatırımları Ticaret İthalat İhracat Limited Şirketi filed an application for the registration of DIABLO ENERGY DRINK (and device) for all goods falling within Classes 29 and 32 of the Nice Classification:
Red Bull GmbH filed an opposition against the application on the grounds that it was confusingly similar with the following RED BULL marks:
Red Bull also argued that its trademarks are well known in Turkey.
Red Bull explicitly set forth in its opposition that, when assessed globally, the mark applied for created a likelihood of association with Red Bull’s well-known trademarks, particularly due to the existence of the 'bull' device, which directly called Red Bull to mind when used for energy drinks.
The TPI concluded that there was a similarity between the device element of the trademark applied for and the device elements of the trademarks on which the opposition was based. The TPI also held that use of the trademark applied for might create the impression that there was a connection between the parties, or consumers might be misled into believing that the trademarks were connected, especially when the well-known status of the opponent’s trademarks was taken into consideration.
If the trademark applied for and the RED BULL marks were to be compared without taking the well-known status of the earlier marks into account, one may conclude that the degree of similarity or the likelihood of confusion between the marks is low. However, when the well-known status of the RED BULL marks is considered, it is evident that the mark applied for and Red Bull’s trademarks are confusingly similar.
In recent years the TPI has enhanced the scope and quality of its decisions, providing almost all the reasons on which its findings are based. This decision illustrates this practice, whereby the TPI considers all the relevant factors of a given case (including the global assessment of the similarity of the marks), earlier decisions of the TPI and precedents of the courts, and takes into account the well-known status of the opponent’s trademarks. In particular, the decision in the present case is a good example of how a finding of likelihood of association can play a role in determining the likelihood of confusion.
Uğur Aktekin and Ali Bozoğlu, Mehmet Gün & Partners, Istanbul
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