Turkish Court of Cassation’s Comparison of Goods in Different Subclasses

During 2022, the 11th Civil Chamber of the Turkish Court of Cassation (the CoC) issued several decisions regarding trade marks covering goods in class 5. The CoC formed its evaluation on the likelihood of confusion by comparing the subclasses of class 5. The details of the decisions are provided below:

Aster v Paster

A cancellation action was filed against the Office’s decision rejecting the opposition filed against the trade mark PASTER in class 5 relying upon the plaintiff’s trade mark ASTER in class 5.

The IP Court stated that the trade marks are confusingly similar and there is a likelihood of confusion for ‘Medicines for human and animal health, chemical products for medical purposes, chemical elements. Dietary supplements for medical and veterinary purposes, herbs and herbal beverages adapted for medicinal purposes. Dental products (excluding instruments/devices). Detergents for medical purposes.’ in class 5 and accepted the case partially for those goods.

Upon appeal, the matter was reviewed by the Regional Court of Appeal (RCA). The RCA confirmed that there is likelihood of confusion regarding the goods ‘Medicines for human and animal health, chemical products for medical purposes, chemical elements’ by comparing the scope of the trade marks. However, the RCA underlined that the plaintiff’s trade mark ASTER only covers ‘medical preparations’ which is listed in the first subclass of class 5 whereas the disputed trade mark PASTER covers the remaining subclasses of class 5. Since those subclasses appeal to different consumers, have different distribution channels and purpose of use, there is no likelihood of confusion for the goods listed in the other sub-classes of class 5. As a result, the RCA reversed the IP Court’s decision and accepted the case partially for ‘Medicines for human and animal health, chemical products for medical purposes, chemical elements only. Upon further appeal by the office, RCA’s decision was upheld by the CoC.

Nepton v Hepton

A cancellation action was filed against the Office’s decision which rejected the opposition filed against the trade mark NEPTON in class 5 relying upon the plaintiff’s trade marks HEPTON and BEPTON in class 5.

The IP Court stated that the trade marks are confusingly similar but there is no likelihood of confusion between the trade marks for several goods listed in the subclasses 5-1, 2, 3, 4 and 7, considering the high attention level of the relevant consumers. The IP Court decided that there is likelihood of confusion between the trade marks for ‘Preparations for destroying vermin, fungicides, herbicides and rodents. Dietary supplements, nutritional supplements, food for babies. Diapers made of paper and textiles for children. Deodorants, other than for human beings or for animals, air fresheners and air deodorising preparations. Disinfectants, antiseptics’ in class 5 and accepted the case partially for those goods.

Upon appeal by the parties, the matter was reviewed by the RCA. The RCA stated that the trade marks do not refer to an active ingredient or a disease, nor do they result from a generic phrase, therefore there is likelihood of confusion, even for the informed consumers. As a result, the RCA reversed the IP Court’s decision and accepted the case in total. Upon further appeal of the parties, the RCA’s decision was upheld by the CoC.

Tio-Relax v Bio-Relax

This decision relates to a cancellation action filed against the Office’s decision which had rejected the opposition filed against the trade mark BIO-RELAX relying upon the plaintiff’s mark TIO-RELAX.

The IP Court stated that the similarity condition is satisfied for the goods ‘medicines for human and animal health, chemical products for medical purposes, chemical elements. Dietary supplements for medical and veterinary purposes, preparations for slimming purposes, food for babies, herbs and herbal beverages adapted for medicinal purposes’ in class 5 covered by the plaintiff’s TIO-RELAX trade mark as those products do not only appeal to healthcare professionals but also to patients and pharmacy technicians. Therefore, the IP Court partially accepted the case for those goods.

Upon appeal by the defendants, the matter was reviewed by the RCA. The RCA underlined that the nature, distribution channel and use of ‘medical preparations’ within the scope of the plaintiff’s trade mark and ‘Dietary supplements for medical and veterinary purposes, preparations for slimming purposes, food for babies, herbs and herbal beverages adapted for medicinal purposes’ are different. Therefore, the RCA stated that the similarity condition is not satisfied for those goods. Furthermore, the RCA stated there is no likelihood of confusion even for the goods listed in subclass 5-1, since ‘relax’ has a settled meaning and informed consumers would not confuse the trade marks beginning with Tio and Bio despite the limited similarity between the trade marks. Upon further appeal by the plaintiff, RCA’s decision was upheld by the CoC.

Comment

It is a settled principle that informed consumers should be taken into account during the similarity evaluation of goods in class 5, especially when comparing the goods with medicines. This principle has been strictly applied by the Courts, and in many cases it has been decided that healthcare professionals would not confuse the trade marks.

However, in recent decisions, it is remarkable to see that the Courts do not automatically apply this principle to all goods in class 5 and conduct a detailed examination by comparing the goods carefully, even for the specific ones listed in different subclasses. It is also striking that such scrutiny is made in cases where only one letter is different between the trade marks.

First published by PTMG - Law Lore & Practice September 2023 Edition in 20.09.2023.