The Judgment Of The General Assembly Of The Civil Chambers, The Turkish Court Of Cassation On Subsequent Trademark

The General Assembly of the Civil Chambers, the Court of Cassation issued a landmark judgment on the necessity of a stronger distinctiveness element for the subsequent trademark application against the existence of well-known trademarks under the Trademark Law. With the said judgment, it is considered that there is a need to review the practices regarding the registration, cancellation of the registration or invalidation of the trademark within the scope of Trademark Law, especially within the scope of well-known trademarks.

1. Phases of Judgement:

In the case subject to the judgment, the defendant filed a trademark application with the Turkish Patent and Trademark Office (TURKPATENT) with the phrase "FLOW Coaching International + Shape" while there exists a well-known and registered trademark with the phrase "FLO", and the plaintiff objected to this application due to the fact that the plaintiff has registered trademarks with the phrases "FLO" and "FLOVE". Upon the rejection of the said objection by the TURKISH PATENT Re-examination and Evaluation Board (REB), a lawsuit was filed at the Civil Court for Intellectual and Industrial Property Rights with the request for the cancellation of the decision of the REB and the invalidation of the trademark if the defendant's trademark application is registered.

The court of first instance dismissed the case on the grounds that there was no similarity between the trademark subject to the lawsuit with the phrase "FLOW Coaching International + Shape" and the plaintiff's registered trademarks with the essential element "FLO", visually, semantically and phonetically, which would cause the average consumers to be confused (resemblance) and that the trademarks and signs were not similar.

In the appeal examination, the Regional Court of Appeal also rejected the appeal request by finding the ruling of the first instance court in accordance with the law.

Upon the appeal examination, the Special Chamber (11th Civil Chamber of the Court of Cassation) reversed the Court of First Instance's judgment on the following grounds:

  1. All or almost all of the trademark with the elements "FLO" and "FLOVE" belonging to the plaintiff is also included in the trademark with the phrases "FLOW" subject to the defendant's application and they are visually similar,
  2. In terms of phonetic similarity, there is a very high level of similarity, especially between the trademark marked "FLOVE" and a moderate level of similarity with the trademark marked "FLO",
  3. The meanings of both words are unlikely to be known by the average consumer,
  4. Phrases with unknown meanings will have a higher level of distinctiveness,
  5. When both trademarks are compared from a holistic point of view, there is a likelihood of confusion due to the high visual and phonetic similarity between the trademarks.

Thereupon, the court of first instance resisted its judgment and finally the dispute came before the General Assembly of Civil Chambers for final resolution.

2. Substantiation of the Judgment of the General Assembly of Civil Chambers:

The General Assembly reminded the grounds for absolute (Article 7 of the Decree Law No. 556) and relative (Article 8 of the Decree Law No. 556) refusal for trademark registration under the Trademark Law. Accordingly, it underlined that in order to mention the possibility of confusion by the public between the trademark applied for and a trademark that has already been registered or for which an application for registration has already been filed, there must be sameness or similarity both between the trademark signs subject to comparison and between the class of goods and services for which the signs will be registered.

The General Assembly hereby reminds that national and international regulations on classification do not contain binding rules in the assessment of whether the goods and services included in the lists of goods and services of trademarks are "identical or similar". It adopts the view that the goods and services subject to comparison should not be bound by the class numbers to which they belong, and that even if they are in different classes, it should be accepted that they may be similar according to different criteria such as the relationship between raw materials and finished goods, marketing conditions, purposes, sameness in the customer environment arising in after-sales service and repair processes, and substitutability of one for the other. Accordingly, the General Assembly accepts that the goods or services subject to comparison may be "identical or similar" even if they are in different classes.

Furthermore, in order to be able to mention the possibility of confusion by the public, General Assembly emphasizes the necessity of

  1. that not only the goods and services concerned must be the same or similar, but also the signs must be "same or similar",
  2. that when evaluating the similarity between signs, in addition to the visual, phonetic and semantic similarity between the signs, the impression that the signs make feel as a whole in the public (consumer) should be taken as a basis

Accordingly, the Assembly considers that a trademark registration may be blocked if a sign, even if visually, phonetically, semantically or otherwise distinct, when it is approached from a "holistic point of view", if for any reason it creates the impression in the eye of the public that it has a connection with another trademark and makes feel it and thus influences the public's choice of goods or services.

The General Assembly, referring to the decision of the Court of Cassation General Assembly of Civil Chambers dated 13.06.2012 and numbered 2012/11-155 E. 2012/376 K., emphasizes that what is important in the likelihood of confusion is the possibility that consumers may establish a connection between the two signs in any way and for any reason, and states that the word "possibility" here is a word used carefully and specifically and reveals that the impression of shape, sound, meaning, general appearance, association or being in a series is evaluated within this scope. Furthermore, it states that even if there are many differences between the marks, if the "general impression" is that they can be confused, it should be accepted that there is a possibility of confusion between the two marks.

The Assembly sets forth as a rule that all elements subject to the holistic approach should be considered separately in each case and the extent to which there is a likelihood of confusion by the general public should be examined. To this end, it is stated that in determining the level of confusion by consumers in the individual case; the social level of the consumers to whom the relevant goods or services appeal; the time allocated to purchase the relevant goods or services; the impression left on the consumer as a whole through the essential and complementary elements, pronunciation, meaning, form and signs of the trademark; and finally, the overall opinion it creates on the general consumer as a whole should be taken into account.

For well-known trademarks, the Assembly assumes that the likelihood of confusion will increase. It is reminded that the elements making up a well-known trademark are well-settled in the eyes of the consumers; when a subsequent sign is seen, a connection can be established with the well-known trademark by overlooking some differences in this sign, and therefore, the likelihood of confusion will be higher. Pursuant to Article 8/4 of the Decree Law No. 556 on well-known trademarks, it is decided that in cases where an unfair benefit may be obtained due to the level of recognition it has reached in the public, where the reputation of the trademark may be damaged or its distinctive character may be damaged, the registration application may be rejected even if the subsequent trademark is used in different goods or services.

3. Assembly's Assessment of the Case Subject to the Judgment

Regarding the subsequent trademark application "FLOW Coaching International + Shape", the General Assembly reversed the decision of persistence in the Special Chamber Decision on the following grounds:

  • The phrase "Coaching International" is positioned in a relatively small size under the phrase "FLOW", the phrase "FLOW" is brought to the forefront, the plaintiff has created serial trademarks with the phrases "FLO" and "FLOVE" as the main elements and by adding various secondary elements, the letter "W" at the end of the phrase FLOW and other additions do not give the mark sufficient distinctiveness,
  • "FLOW" gives the impression that it is a continuation of the plaintiff's serial trademarks,
  • There is a high level of similarity between the defendant's application and the plaintiff's "FLOVE" trademarks in terms of general impression, appearance, pronunciation and meaning, and a moderate level of similarity with the plaintiff's "FLO" trademarks,
  • Most importantly, it is not possible for the average consumer to know the meaning of the expressions in the trademarks of both parties, the distinctiveness level of the expressions whose meaning is unknown will be higher, the likelihood of confusion the trademarks of the parties is high from a general and holistic point of view, the perception that there is at least a commercial, economic and administrative connection between the trademarks may occur, and the defendant's trademark may be perceived as the plaintiff's serial trademark.

4. Interpretation of the Judgment on Trademark Law:

With this judgment, when evaluating well-known trademarks, it should be taken into consideration that the likelihood of confusion may be higher when a subsequent trademark registration application is filed even for a class other than the class of goods and services for which the well-known trademark is registered. In the event that the well-known trademark has serial trademarks in addition to the well-known trademark itself, it should be taken into account that the elements of the subsequent trademark application (in terms of visual, semantic, pronunciation aspects) may not be sufficiently distinctive in the eyes of the average consumer.

On the other hand, in order to be able to mention the possibility of confusion by the public (the average consumer) between the trademark filed for registration with TURKPATENT and a trademark that has already been registered or filed for registration, it is necessary to investigate whether both trademarks are in the same or similar goods and services class, as well as whether the signs are "same or similar". Along with this judgment, different criteria such as i) raw material-product relationship, ii) marketing conditions, iii) objectives, iv) identity in the customer environment that emerges in after-sales service and repair processes, v) substitutability, will need to be taken into consideration, even if they are categorically in different classes.

Finally, after examining each element, the level of distinctiveness of the subsequent trademark and the likelihood of confusion with the earlier trademark should be determined by taking into account the level of awareness of the average consumer to whom the relevant product is appealed, their perception of the trademark, the general impression it leaves on the relevant average consumer group in line with their level of knowledge, and the opinion it makes feel as a whole.

In summary, when filing for a new trademark, it comes out of the necessities that the characteristics of well-known trademarks should be taken into consideration, the general impression of the trademark elements of the new application in the eyes of the public should be foreseen, and the trademark should be created in a way that can be distinguished as clearly as possible from the elements of the well-known trademark.

Footnote

1. General Assembly of Civil Chambers, 2021/182 E. , 2022/1456 K.

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