A. INTRODUCTION:
‘Uncertainty’ is a concept that has been researched and studied by many disciplines. In physics, for example, Heisenberg’s Uncertainty Principle is claimed to be one of the most fundamental elements that distinguish quantum physics from classical physics. (Wikipedia, Uncertainty Principle, UNCERTAINTY PRINCIPLE, https://en.wikipedia.org/wiki/Uncertainty_principle (last visited Sep 15, 2023). Likewise, it is known that sciences such as psychiatry and psychology delve into and analyze the concept of uncertainty and its effects on the human being.
In law, uncertainty may result from the narrow and/or broad interpretation of a legal concept by individuals or institutions adopting different points of view and criteria. Particularly, differences in how the Turkish Patent and Trademark Office and the Judicial Bodies interpret class similarity may in some cases lead to uncertainties in practice. This not only increases the number of disputes pending before the courts but also undermines the principles of legal security and certainty, which are prerequisites for the rule of law.
In the present study, the authors will first provide a very broad outline of the scope of the rights conferred by a trademark, followed by a discussion of concepts such as the likelihood of confusion, trademark classes, and class similarity, and the criteria used at the stage of assessment, and then address the institutional differences in interpreting the retail services in Class 35, which is considered the most problematic class in practice before they proceed to a discussion of how and to what extent the narrow and strict interpretation of class similarity affects the balance of interests in some trademark-related cases.
B. SCOPE OF TRADEMARK PROTECTION:
The right to a trademark is an absolute right that grants exclusive authority to its owner, including inter alia the right to prohibit the use of a trademark and the power to authorize its use. (Ünal Tekinalp, Fikri Mülkiyet Hukuku (5th edn, Arıkan Basım Yayım 2012) 358.)
The scope of these rights and authorities is defined in extensive detail in paragraphs 2 and 3 of Article 7 of the Turkish Industrial Property Law No. 6769. In this sense, in the context of this study, paragraph 2 of Article 7 of Turkish IP Law No. 6769 provides that the trademark proprietor is entitled to prevent the use of any sign identical to the trademark on goods or services that are in the scope of the registration as well as the use of any sign that is identical with or similar to a registered trademark, covering identical or similar goods or services with the registered trademark, and is, therefore, liable to create a likelihood of confusion on the part of the public; including the likelihood of association.
Even this provision alone makes it clear that, as a rule, ‘protection in Turkish Trademark Law is predicated on the identicalness, similarity, and likelihood of confusion between goods and services, or as the case may be, between marks and signs’. (Hanife Dirikkan, Tanınmış Markanın Korunması (1st edn, Seçkin Kitabevi 2003) 162.)
As a rule, trademark protection under Turkish IP Law No. 6769 is acquired by registration. (Karasu Rauf, Cahit Suluk and Temel Nal, Fikri Mülkiyet Hukuku (4th edn, Seçkin Kitabevi 2020) 212.)
According to the principle of registration, trademark protection is afforded in respect of and for the goods and services for which a trademark is registered. By choosing a sign as a trademark and specifying the goods or services for which that sign will be used, a right that can be asserted against third parties is obtained over the trademark. Therefore, as a rule, the proprietor can benefit from the powers granted to the proprietor by trademark law only in respect of the relevant goods and services.
These explanations show that as important as the concept of sign is in determining the scope of trademark protection, the issue of trademark classes should be addressed at least as carefully and scrutinously. When examining and assessing trademark and class similarity, the concept of likelihood of confusion, which is explicitly regulated in Turkish IP Law No. 6769, is used to check whether there is a similarity between trademarks and classes to the extent that it will create a likelihood of association among the public.
To this end, the following sections focus on the concept of the likelihood of confusion.
C. LIKELIHOOD of CONFUSION and CLASS SIMILARITY:
C.1. In General:
The first paragraph of Article 6 of Turkish IP Law No. 6769 provides that: “An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with an earlier trademark, owing to identicalness with, or similarity to, an earlier trademark and identicalness or similarity of the goods or services covered by such application.”
The likelihood of confusion is defined as ‘the risk that an unregistered sign or a registered trademark may be mistaken for an earlier trademark because it is either identical or similar in figure, image, sound, overall impression, etc. to the earlier trademark.’ When assessing the likelihood of confusion between trademarks, all aspects of the case must be taken into account. [The Court of Justice of the European Union made this clear in its judgment in Sabel BV v Puma AG, Case 251/95. For the Turkish translation of the relevant judgment, see. Hamdi Yasaman and others, Marka Hukuku - 556 Sayılı KHK Şerhi (1st edn, Vedat Kitapçılık 2004) 462. For other Court of Justice of the European Union judgments on the same subject, see also N Berkay Kirci, ‘Malicious Trade Marks in the Turkish Legal System: The Villains of Trade Mark Law’ (2021) 16 Journal of Intellectual Property Law & Practice 1273, 1277 <https://doi.org/10.1093/jiplp/jpab133> accessed 28 December 2022.]
The concept of “similarity” is not defined in Turkish IP Law No. 6769. But subparagraph b of the second paragraph of Article 7 titled ‘Scope of rights conferred by a trademark’ prohibits the “use of any sign identical with or similar to a registered trademark and covering identical or similar goods or services with the registered trademark and is therefore liable to create a likelihood of confusion on the part of the public; including the likelihood of association between the sign and the trademark”, thus defining the criterion that needs to be met to prove similarity.
The similarity between two compared signs may be rooted in their pronunciation, meaning, or form, the impression they leave collectively, or it may result from the impression of being part of a series or from some other association. The fact that the public can establish a “link” between two compared signs in one way or the other is sufficient for the proof of the similarity between the signs.
Indeed, the Turkish Court of Cassation 11th Civil Chamber ruled in their decision dated 13.11.2003 (Merit Number: 2003/4003E., Decision Number: 2003/10839K.) that: “The criterion to be applied when assessing the likelihood of confusion among the public is not the opinion of the person concerned or the opinion of an expert, but the public themselves as consumers. The key to assessing the likelihood of confusion is whether the public establishes a link between the two marks in any way for any reason. Here, even if there is no similarity in terms of sound, image, or even overall impression, the fact that the public establishes a link between the two marks or even associates them should be considered as sufficient proof of the likelihood of confusion”, thus describing what should be understood when speaking of the likelihood of creating confusion among the public.
As pointed out in a decision of the Turkish Court of Cassation 11th Civil Chamber (Decision Date: 13.01.2003, Merit Number: 2002/7864E., Decision Number: 2003/43K.), “When assessing whether there is any confusion between two trademarks, it is necessary to take into account the segment to which the trademark is addressed as well as the characteristics and formation of that segment."
In a decision with Merit Number: 2006/11-338, the General Assembly of Civil Chambers of the Turkish Court of Cassation stated that “Consumers who see and hear the defendant's mark will recall the impression left by the plaintiff's trademarks which they already know and, most importantly, this recollection may cause the disputed trademark registered in the name of the defendant to be perceived as if it were another version, series or extension of the plaintiff's earlier trademarks, or as if it were used on the relevant products under a license granted by the plaintiff.”
Similarly, in a recent decision (Decision date: 08.06.2022, Merit Number: 2020/11-723, Decision Number 2022/860), the General Assembly of Civil Chambers of the Turkish Court of Cassation ruled that “…the likelihood of confusion may arise from visual, stylistic, semantic, auditory similarities, evocation, collective opinion as a whole, the social level and status of the group of buyers to whom the goods or services are addressed, the value of the goods bearing the trademark and the time allocated by the buyer to purchase the goods, the fundamental and complementary elements of the trademark, the similarity between the signs compared, pronunciation, meaning, or form, the impression left by the signs collectively, the impression of being part of a series or any other association, and as such, the public's likelihood to establish any form of ‘link’ between the signs being compared must be regarded as sufficient proof of similarity”.
Hence, in order to prove similarity and the likelihood of confusion, the consumer does not necessarily have to think that two trademarks are “the same”, but it is sufficient that they establish a link between the two trademarks, associate one with the other, or perceive them as a series of each other.
In light of the decisions of both the Turkish Court of Cassation and the CJEU, it is believed that, in the concrete case, the following aspects should be considered when assessing the likelihood of confusion:
• similarity of conflicting trademarks,
• similarity between marketing and distribution methods,
• the class in which the trademark is registered/intended to be registered, the consumer segment addressed by that class, and the time allocated by the consumer to purchase the goods or services of the class in question,
• the earlier trademark having a highly distinctive character, either by itself or as a result of use, in the relevant class of goods or services, and
• geographical proximity between the goods or services of the person using the earlier trademark and the person using the latter. (See also, N Berkay Kırcı, Markanın İnternet Yoluyla Haksız Kullanımı (First, Turhan Kitabevi 2009) 33–35.)
In addition to the foregoing, it is also observed that the scholarly literature utilizes a two-axis approach when assessing whether there is a similarity or likelihood of confusion between trademarks. (David I Bainbridge, Intellectual Property (Tenth, Pearson 2018) 635.) According to this approach, there is an increased likelihood of confusion between trademarks if the trademarks and their classes of registration are rather close.
C.2. The Class Similarity in Turkish Trademark Law:
The Nice Agreement classifies goods and services according to their characteristics, with goods in the first 34 classes and services in the last 11 classes.
“The determination of similarity will be based neither on the international classification of trademarks nor on their classification as reflected in national law. Indeed, Article 2(1) of the Nice Agreement concerning the international classification of goods and services for the purposes of the registration of marks provides that: “[…] the international classification shall not bind the contracting countries in respect of either the evaluation of the extent of the protection afforded to any given mark […].” The determination of similarity should be based on the market's understanding and the possibility of public confusion.” (Ünal Tekinalp, Fikri Mülkiyet Hukuku (Fourth, Arıkan Basım Yayım 2005) 413.)
In Türkiye, pursuant to Turkish IP Law No. 6769 and the Communiqués published by the Turkish Patent and Trademark Office (TURKPATENT), classification is adopted as the main system, and it is stated that the terms for identical or similar goods and services as defined in Turkish IP Law No. 6769 shall be taken into consideration for each class and their subgroups.
Accordingly, when determining the goods or services that a trademark registered or applied for on behalf of more than one person will be used for, the classification communiqués published by TURKPATENT shall be applied. This is a prerequisite for maintaining the principle of certainty in trademarks and ensuring uniformity and stability in determining the extent of the protection afforded to registered trademarks.
However, according to TURKPATENT Communiqué, goods and services covered by a trademark or service mark can be considered “similar” when they are likely to confuse the public, even if they fall into different classes because according to Article 2/1 of the Nice Agreement as cited above, classification is not binding in respect of the evaluation of the extent of the protection afforded to any given mark. In line with that, in their decision of 05.02.2007 (Merit Number: 2005/13645, Decision Number: 2007/1319), and many others, the Turkish Court of Cassation 11th Civil Chamber ruled that while classification is accepted as the main system, the extent of protection afforded to a registered trademark shall nevertheless be determined according to the individual characteristics of the case, and the criterion to be taken into account here is the likelihood to create public confusion.
In several decisions of the Turkish Court of Cassation, it can be seen that in parallel with the similarity analysis between marks and signs, there is no strict distinction in respect of the similarity between classes and a broader interpretation is preferred.
For instance, in their decision dated 17.05.2022 (Merit number: 2020/11-149, Decision number: 2022/662), the General Assembly of Civil Chambers of the Turkish Court of Cassation noted that “national and international regulations on classification do not contain binding rules in respect of the evaluation as to whether the goods and services on the list of goods and services covered by a trademark as per Article 8/1-b of Decree Law No. 556 are “identical or similar”, pointing out explicitly that “compared goods and services should not be bound by the class numbers which they fall into”.
In the same decision, it is stated that “albeit in different classes, compared goods and services may be similar in several aspects, including without limitation:
o Raw material-finished product relationship,
o Marketing conditions,
o Objectives,
o Identical circumstances surrounding the customer in after-sales and repair services,
o Substitutability of one for the other, etc.”
In the same decision of the General Assembly of Civil Chambers, after drawing this general framework and referring to the criteria cited in the preceding paragraph, it is made clear that the compared goods or services may be deemed to be “identical or similar” even when they fall into different classes.
These precedents of the Turkish Court of Cassation, which are considered to be highly accurate, help shed light on the issue of class similarity and are also used by the Turkish Patent and Trademark Office as a rule, but in practice, it is observed that there are differences in how the Turkish Patent and Trademark Office and the Judicial Bodies interpret similarity in certain classes.
D. THE MOST PROBLEMATIC CLASS INTERPRETED DIFFERENTLY by TURKPATENT and THE COURTS: CLASS 35 - RETAIL SERVICES
In practice, it can be argued that the most common class causing uncertainties between the Turkish Patent and Trademark Office and the Courts in terms of class similarity, with serious differences in interpretation, is the retail services in Class 35.
D.1. Turkish Patent and Trademark Office's Perspective on the Similarity between the Commodity Class and its Retail Services:
In many decisions of the Turkish Patent and Trademark Office, it is observed that the Office makes a very strict distinction in that it tends to evaluate any commodity in the first 34 classes and the sale/retail services for the same commodity in Class 35 as separate classes.
Page 444 ff. of the Trademark Examination Guide published by the Turkish Patent and Trademark Office in 2021 contains detailed explanations about the Office’s perspective on Class 35 retail services.
In the relevant pages of the mentioned guide, TURKPATENT refers to the CJEU judgment of 07/07/2005 (judgment no. C-418/02, ‘Praktiker’) and states that “the ultimate purpose of the services in Class 35 of bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase these goods is to facilitate shopping, including any and all actions taken to that end”. The same guide further states that it should be recognized that “there is a low level of similarity between the goods and the retail services rendered for them”.
It may be due to this approach that most of the objections raised to the publication of trademark applications, claiming similarity between the goods and their retail services, are rejected on the grounds that there is no class similarity.
To concretize this argument with one example, the publication of a trademark intended to be registered for goods in Class 21 and retail services of the same goods in Class 35 was opposed based on the opposer’s trademark registered only for retail services of the same commodities. Following this objection, the Turkish Patent and Trademarks Office, with its decision dated 19.04.2021 (Decision No. E-71248886-130-210160757), found the trademarks similar and decided to remove only the services in Class 35, but to proceed with the registration of the goods in Class 21. This decision of the Trademarks Department was opposed before the Turkish Patent and Trademark Office - Re-Examination and Evaluation Board, claiming that the decision was incomplete and that there was indeed a similarity between the goods in Class 21 in which the registration was decided to be continued and the retail services for the same goods in Class 35. The said objection was rejected by the decision of the Re-Examination and Evaluation Board dated 13.12.2021 (Decision Number: 2021-M-10698). A lawsuit was filed claiming the cancellation of the decision, especially in terms of Class 35, and annulment of the trademark registration (if already registered). Ankara 3rd Civil Court of Intellectual and Industrial Rights accepted the lawsuit in all aspects, on the grounds of similarity between both the trademarks and classes (Decision Date: 22.09.2022, Merit Number: 2022/53, Decision Number: 2022/284K).
Although there are exceptional decisions to the contrary, the decisions and comments of the Turkish Patent and Trademark Office as to whether there is a similarity between a class of goods and the retail services for the same goods in Class 35 make it clear that in most cases the Turkish Patent and Trademark Office accepts that these classes are different.
D.2. Turkish Judicial Bodies’ Perspective on Similarity between Classes of Goods and their Retail Services:
It is observed that the Turkish Courts of First Instance, the Regional Courts of Appeal, and the Court of Cassation adopt a more inclusive and broad perspective when interpreting the classes of goods and their retail services in Class 35.
In this context, the Turkish Court of Cassation 11th Civil Chamber in its decision of 01.03.2023 (Merit Number: 2021/6546E., Decision Number: 2023/1227K.), and also in the decision of 02.12.2020 (Merit Number: 2020/1004, Decision Number: 2020/5605), and in many others, ruled that the commodity classes and their retail services should be considered interrelated, on the grounds that “...it is natural in the ordinary course of commercial life for the producer of a good to also sell it”.
When we take a closer look at the decisions of the Turkish Court of Cassation, it can be seen that as a rule, similar to the Turkish Patent and Trademark Office, it is accepted that the classes in question are different.
For example, the General Assembly of Civil Chambers of the Turkish Court of Cassation ruled in their decision of 31.05.2022 (Merit Number: 2022/11-486, Decision Number 2022/788), that “A trademark alone does not confer rights on retail service, and likewise, a trademark registered for retail service cannot be used on goods and does not confer a right in this regard. Since one is a class of goods and the other is a service class, they clearly fall into different fields. The relationship between trademarks used for goods and service marks used for services in Class 35.05 (35.08) is no different from the relationship between similar goods and services in different classes”, which shows that in essence, the classes are considered different.
In the same judgment recognizing that the classes are different as cited in the preceding paragraph, the Turkish Court of Cassation made a broad interpretation by taking into account the balance of interests and the principles of equity, on grounds that:
• “For the same product, there is a close link between the product and the service through which the product is sold;
• this shows that these classes are complementary goods/services;
• in cases where a trademark and a retail service mark are owned by different persons, consumers may think that they belong to the same commercial enterprise, even if the transactions relating to them are carried out in different places;
• this will be especially the case where the products covered by the trademark are identical with or similar to the products sold in retail stores; and
• if people think that the marks belong to the same person, the function of the mark to signify the origin will be damaged and confusion will be likely”, thus recognizing that there is indeed a relationship between the classes, and in this sense, a similarity that may cause confusion.
Even this recent precedent alone is proof enough of the fact that the Turkish Court of Cassation has departed from the Turkish Patent and Trademark Office and adopted a broad stance in interpreting class similarity.
E. THE NEGATIVE CONSEQUENCES OF A NARROW/STRICT INTERPRETATION REGARDING CLASS SIMILARITY:
E.1. First and foremost, narrow interpretation of the similarity between the classes of products (goods) and the classes for their sale/retail services, as well as other classes that are deemed to be related/linked to each other for other reasons, has led to a significant increase in the number of court actions claiming the annulment of the decisions rendered by the TURKPATENT Re-Examination and Evaluation Board.
This has led to an increase in the workload of the Courts, which is already quite high.
E.2. This approach of the TURKPATENT leads to the emergence of some sort of trademark co-existence without the consent of trademark owners.
As is known, Article 5/3 of the Turkish Industrial Property Law No. 6769, which entered into force in Türkiye in 2017, introduced the concept of co-existence in Turkish Trademark Law. As such, coexistence is possible if a notarial document bearing the prior trademark proprietor’s explicit consent for the registration of an application is submitted to the Office.
As a result of this strict interpretative stance adopted by the TURKPATENT as discussed in this study, classes of goods and their retail services are considered to be different, and at the end of related proceedings, it is decided that two identical or very similar marks be co-registered, one in the relevant class of goods and the sale/retail services of the same good.
The proprietor of an earlier trademark, who fails to file a lawsuit within the prescriptive period for the annulment of decisions rendered by the TURKPATENT Re-Examination and Evaluation Board or decides not to file a lawsuit because it is too costly, is so to say forced to continue its commercial activities in the presence of another trademark in the relevant class and, in this sense, to coexist with that trademark involuntarily.
In the long run, this may cause harm to the ordinary flow of commercial life, creating adverse impacts on the competitive market, and thus, on the balances in trade.
E.3. Class similarity is not only an issue worth addressing in trademark application/registration proceedings but should be taken into consideration also in trademark infringement actions and in actions filed on the grounds of priority rights such as invalidation lawsuits.
If, in particular, the goods in any class and the retail services for the same goods are interpreted to be different with a strict stance despite the close link between them, and if this approach is adopted by the courts as well, it will be highly likely that in cases like infringement, nullity, and invalidity, decisions will be rendered that will disregard the interests of the parties and give rise to unfair situations.
Just to give a few examples:
Let’s assume that trademark A is registered in Class 30 in the name of a company named X. Now assume that another company named Y has been using the trademark A in commercial life for the sale/retail of the goods in Class 30, without any registration, since long before the date on which company X filed an application for trademark A and had it registered.
Company X, which is the registered proprietor of the trademark, warns Company Y to cease the use of the trademark A, and in return, company Y files a lawsuit claiming the invalidation of trademark A on the grounds of priority and rightful ownership within the scope of Turkish IP Law No. 6769 Article 6/3.
In a scenario where the goods and the sale/retail services for the same goods are deemed to be different, would it be possible for company Y to claim that it has rightful ownership and priority right to trademark A?
Again, in the same scenario, to what extent would it be possible for the owner of a trademark registered in a commodity class (e.g., class 30) to get a favorable outcome in a trademark infringement action brought to prevent the use of the similar sign in retailing services in class 35?
CONCLUSION:
The principle of legal security can be defined as the certainty, stability, and predictability of the rules of law, individuals' trust in the state in all transactions and actions carried out by the administration during the execution of these rules, and the protection of this trust by law. (Mehpare Çaptuğ, ‘Hukuki Güvenlik İlkesinin Kavramsal Gelişimi’ [2021] Uyuşmazlık Mahkemesi Dergisi 133, 141 <chrome-extension://efaidnbmnnnibpcajpcglclefindmkaj/https://dergipark.org.tr/tr/download/article-file/1844526> accessed 27 September 2023.)
As stated in many decisions of the Turkish Constitutional Court (For examples see, Turkish Constitutional Court’s decisions: Decision Date: 20.05.2010, Merit No. E.2009/51, Decision No. K.2010/73, Decision Date: 13.01.2011, Merit No. E.2009/21, Decision No. K.2011/16, Decision Date: 07.07.2011, Merit No. E.2010/69, Decision No. K.2011/116, and Decision Date: 11.04.2012, Merit No. E.2011/18, Decision No. K.2012/53.): “One of the fundamental principles of the rule of law enshrined in Article 2 of the Turkish Constitution is certainty.
According to this principle, legal regulations must be clear, precise, comprehensible, and applicable for both individuals and the administration in such a way as to leave no room for any hesitation and doubt and must also contain certain safeguards against arbitrary practices of public authorities.”
Due to the strict stance and narrow interpretation of the TURKPATENT, which uses very similar criteria on the class similarity in trademark law, a state of uncertainty has arisen between institutions, which undermines the knowability and foreseeability of the law, as highlighted in several decisions of the Constitutional Court.
Thus, instead of making a narrow and strict interpretation of class similarity with a general and abstract approach, making an evaluation according to the conditions specific to each concrete case, in a way that takes account of the principles of equity and balance, will minimize the macro and micro scale negativities illustrated in this study, eliminate the uncertainties being faced in practice, and promote cooperation and harmony among the institutions that have the potential to shape Turkish Trademark Law. It is also considered that such an approach would further strengthen the principle of certainty, which is one of the fundamental principles of the rule of law as defined in Article 2 of the Constitution of the Republic of Türkiye.
N.Berkay KIRCI
Attorney at Law
Trademark & Patent Attorney
Copyright Expert
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