A. INTRODUCTION:
Relative grounds for refusal, stated in article 6 of the Turkish Industrial Property Law No. 6769, and which may be asserted during the period of publication within the Turkish Patent and Trademark Office (will be referred to as TÜRKPATENT) or trademark invalidation, infringement lawsuits are not based on the reason that such grounds involve public interest, but third parties have acquired a right at an earlier date on the sign subject to an application for registration. (Tekinalp 2005, 356)
Relative grounds for refusal mentioned in article 6 of the Turkish Industrial Property Law No. 6769 ensure problems that might appear in case applications for registration which are missed or not evaluated in the scope of absolute grounds for refusal during ex officio examination conducted by TÜRKPATENT or in case such possibility comes into the scene, by raising objections against such persons.
The likelihood of confusion in Trademark Law is regulated in the first clause of the 6th article of the Turkish Industrial Property Law No. 6769. This relative ground of refusal is one of the most crucial reasons used in the objection to the publication of trademark applications before TÜRKPATENT, as well as in trademark invalidity, infringement, and similar lawsuits.
In this article, we will try to examine, in general terms, what the concept of likelihood of confusion means, which criteria are accepted for the likelihood of confusion between trademarks.
B. THE DEFINITION of LIKELIHOOD of CONFUSION in TRADEMARK LAW:
As stated in the above paragraph, this concept, which is also a relative ground for refusal, is included in the first paragraph of Article 6 of the Industrial Property Law No. 6769.
According to this article: “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 the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered."
”The concept of the likelihood of confusion in trademark law is defined as: ‘the risk that an unregistered sign or a registered mark creates an impression as a previously registered trademark since it is identical or similar to that previously registered trademark due to reasons such as figure, image, sound, general impression, etc.’ (Tekinalp 2005, 356)
The concept of "similarity" is not defined in the Turkish Industrial Property Law No. 6769.
However, in article 7/2- (b) titled "Scope of rights conferred by a trademark and its exceptions", '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' is prohibited. Therefore, this provision is thought to indicate what should be understood from the concept of similarity.
When both the provision in the above paragraph and the first paragraph of Article 6 of Turkish Industrial Property Law are evaluated together, two basic conditions must be found together in order to claim that there is a likelihood of confusion between trademarks. These are: "Identicalness or similarity between signs/trademarks" and "Identicalness or similarity between classes". It is, as a rule, not possible to claim that there is a likelihood of confusion/association between trademarks if one of them is missing (for example, trademarks are different, although the classes are the same or similar, or vice versa).
C. THE CRITERIA for the LIKELIHOOD of CONFUSION in TRADEMARK LAW:
It is stated in the Doctrine that criteria such as ‘visual, formal, semantic, phonetic similarity, ‘connotation’, ‘integrity, general impression’, ‘social level and status of the buyer group as the addressee of the goods or services, ‘economic value of the goods bearing the trademark and the time spared by the buyer to purchase the goods, ‘main and accompanying components of the trademark’, which are used in the ascertainment of confusion or risk of confusion in court decisions passed in abolished Trademark Law period, shall be still applicable. ((Tekinalp 2005, 356) (Also see Yasaman Hamdi, Marka Hukuku, 556 Sayılı KHK Şerhi, 2004, 398; Şanal Osman, Markanın Hükümsüzlüğü, 2004, p.52; Dirikkan Hanife, Tanınmış Markanın Korunması, 2003, p.188 et seq., Arslan Kaya, Marka Hukuku, 2006, p.137 et seq.)
It is observed that the Turkish Industrial Property Law No. 6769 (just like the abolished Decree-Law No.556), unlike these criteria, takes “the risk of confusion” covering the possibility of an association between both trademarks as the basis in the ascertainment of similarity.
The group that shall be taken as the basis during evaluation is determined by stressing that appearance of the risk of confusion by the public, in other words, by the consumer/buyer group as the addressee of the said goods and services is necessary and sufficient in the analysis of the provision.
Turkish Supreme Court of Appeals for the 11th Civil Chamber, (Date of Decision: April 19, 2002, Case no 2001/9903 and Decision no 2002/3699) has made it clear that the measure of the likelihood of confusion by the public is that of the consumer, not the relevant person or expert of this business. The stated decision further indicates that: "The important point in the likelihood of confusion is that the public establishes a connection between these two signs for any reason whatsoever. Even if there is no phonetic or visual similarity between the signs, or even a general impression in terms of general appearance, establishing a link between the two signs and even associating them should be accepted as a sufficient measure for the possibility of being confused by the public."
This decision also indicates that, in some cases, even if there is no similarity in visual, formal, semantic, phonetic similarity, connotation, general impression; if the public (consumer/buyer segment of the product or service in which the trademark is intended to be registered) establishes an association between both signs for any reason whatsoever, it should be accepted that there is a likelihood of confusion between the trademarks.
In one of the decisions of the Supreme Court of Law General Assembly (Case no 2006/11-338E.); it was stated: "The consumers who see and hear the defendant’s sign will remember the impression left by the plaintiff's trademarks, and most importantly, this recall is another version, series or extension of the plaintiff's trademarks that were previously registered and used, or that the plaintiff's trademark registered in the name of the defendant and this may cause it to perceived as being used on the products as required by the license.".
Therefore, to accept the likelihood of confusion and similarity, consumers do not have to assume that two trademarks are the same", the connection between them, the association of one with the other, and the possibility of being perceived as a serial trademark are also considered within the scope of the likelihood of confusion.
For example, in an up-to-date Turkish Supreme Court of Appeals decision, (Turkish Supreme Court of Appeals for the 11th Civil Chamber, Date of Decision: February 03, 2021, Case no 2020/1387 and Decision no 2021/785) it was decided that: “the possibility of being associated in terms of visual, phonetical and semantic general impression in the eyes of the buyers” would be sufficient to reveal the likelihood of confusion.
Again, in another up-to-date Turkish Supreme Court of Appeals decision (Turkish Supreme Court of Appeals for the 11th Civil Chamber, Date of Decision: January 25, 2021, Case no 2020/1448 and Decision no 2021/323), it was decided that: “In the course of the assessment regarding the likelihood of confusion between the trademarks, it should be taken into consideration whether the essential components used in the trademarks are distinctive within the scope of the classes to be registered. In cases where the signs are descriptive within the scope of relevant goods and services, the possibility of confusion can be eliminated even with very slight changes.”
In the same decision, it was observed that the main components of both trademarks are taken into consideration, as a whole, during the trademark comparison, in the classes where the distinctiveness of the sign is present. Again, we can further observe that the recognition of the plaintiff's trademark also taken into account in the comparison, and since the trademark is considered as well-known and registered as a serial trademark, the sign subject to the case is decided that it may infiltrate into this series and therefore it is judged that there is a possibility of confusion between the trademarks.
In the light of the decisions of the Turkish Supreme Court of Appeals, it is thought that in each concrete case, the following issues should be taken into consideration during the evaluation of the likelihood of confusion in Trademark Law:
• The similarity of conflicting trademarks,
• The similarity between marketing and distribution methods,
• The class in which the trademark registered/wanted to be registered; the consumer segment addressed by this class and the time allocated by the consumer to purchase the goods or services in the class subject to registration;
• The highly distinctive character of the previous trademark, either spontaneously or as a result of use in the relevant class of goods or services; (Please kindly refer to Turkish Supreme Court of Appeals for the 11th Civil Chamber, Date of Decision: February 25, 2021, Case no 2020/1838 and Decision no 2021/1723. In this specific decision and in other similar decisions, the recognition of the trademark is considered as a condition that increases the likelihood of association.)
• Conditions such as the geographical proximity between the goods and services of the individuals who have used the trademark for a long time and those who are new users.
These explanations also indicate that in the course of examination related to the existence of the risk of confusion between trademarks, all the conditions related to the present case must be taken into consideration. (ECJ clearly pointed out this issue through its decree at Sabel BV v Puma AG, Case 251/95. For Turkish translation of the related decree, (also see Yasaman et al., 2004, p.462)
Under the light of decisions given by ECJ, especially the issues mentioned below are observed to be taken into consideration during the evaluation against the risk of confusion (Bainbridge, 2007, p.637):
• the likelihood of confusion must be appreciated globally, taking account of all relevant factors,
• the matter must be judged through the eyes of the average consumer, of the goods/services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant – but who rarely have the chance to make direct comparisons between marks and must instead rely upon the imperfect Picture of them he has kept in his mind;
• the average consumer normally perceives a mark as a whole and does not proceed to analyze its various details. Therefore, the visual, aural, and conceptual similarities of the marks must be assessed by reference to the overall impression created by the marks bearing in mind their distinctive and dominant components,
• the lesser degree of similarity between the marks may be offset by a greater similarity between the goods (or services), and vice versa,
• there is a greater likelihood of confusion where the earlier trademark has a highly distinctive character, either per se or because of the use that has been made of it.
CONCLUSION:
The likelihood of confusion in trademark law, which is only one of the relative grounds for refusal in trademark registration, is regulated in the first clause of the 6th article of the Turkish Industrial Property Law No. 6769. This relative ground of refusal is one of the most crucial reasons used in the objection to the publication of trademark applications before TÜRKPATENT, as well as in trademark invalidity, infringement, and similar lawsuits.
In the article, we tried to examine, in general terms, what the concept of likelihood of confusion means, which criteria are accepted for the likelihood of confusion between trademarks.
As it is mentioned in many decisions of the Turkish Constitutional Court, the Turkish Supreme Court of Appeals, and other Supreme Courts, it is essential that each individual case shall be evaluated within its own circumstances on a case-by-case basis. Therefore, in each concrete case, to conclude that there is a likelihood of confusion between trademarks, the reasons pointed out in this article as exemplary, and other related reasons should carefully be examined and investigated by the Courts and other concerned authorities.
Written by:
N.Berkay KIRCI
Attorney at Law
Trademark & Patent Attorney
BIBLIOGRAPHY:
Arslan, Kaya, 2006. Marka Hukuku.
Bainbridge, David I. 2018. Intellectual Property. Tenth. London, UK: Pearson.
Dirikkan, Hanife. 2003. Tanınmış Markanın Korunması. First. Ankara, Turkey: Seçkin Yayıncılık.
Şanal, Osman. 2004. Markanın Hükümsüzlüğü. Ankara, Turkey: Adalet Basım Yayınevi.
Tekinalp, Ünal. 2005. Fikri Mülkiyet Hukuku. Fourth. İstanbul, Turkey: Arıkan Basım Yayım.
Yasaman, Hamdi. 2004. Marka Hukuku. First. İstanbul, Turkey: Vedat Kitapçılık.