Turkish Court of Cassation’s Highlighting Decisions on Conceptual Similarity Evaluation
In the 1st paragraph of Article 6 of the Industrial Property Law no. 6769, which regulates the relative refusal grounds in trademark registration, the existence of a likelihood of confusion requires the condition of “identicalness or similarity” of the trademarks along with the similarity of the goods and/or services. During the evaluation of the similarity between the trademarks, the focus is commonly gathered on visual, aural and semantic similarity. The existence of any one of these, alongside the similarity of the goods and/or services, is considered sufficient to accept the likelihood of confusion between the trademarks. In two decisions issued around the same time by the Court of Cassation (CoC) regarding the trademarks featuring the product packaging of well-known tea companies, the CoC not only evaluated the usual visual, aural and semantic similarities, but also discussed conceptual similarity in detail. In both decisions, discussions primarily focus on how to balance the assessment of similarity when it comes to composite trademarks that incorporate different well-known word trademarks in a similar composition.
In the case addressed in the CoC’s first decision, it was requested for the invalidation of the defendant’s trademark shown in Table 1 below, on the grounds that it creates a likelihood of confusion with the plaintiff’s trademarks presented in Table 2. The plaintiff also requested a determination of trademark infringement and unfair competition.
The first instance Court decided for the dismissal of the case on the grounds that there is no likelihood of confusion between the trademarks. Upon the appeal filed by the plaintiff, the Regional Court has grouped the similarity evaluation under three main headings.
- – Within the scope of conceptual similarity, whether the trademark in questions was created by combining the elements incorporated into the trademarks shown as grounds for the case,
- – Instead of evaluating similarity based solely on one or a few elements of the trademarks, the overall appearance of the trademarks should be considered,
- – Focusing on common features between the trademarks instead of differences,
The Regional Court, during its similarity evaluation conducted under these three headings, concentrated particularly on conceptual similarity between the trademarks noting that the main word trademarks which are written in white placed on a red background and that the dominant color is the same in both the defendant’s and the plaintiff’s trademarks and the green color is used in a scattered manner along the edges of the packaging. Overall, all these elements are found to create a similarity with the plaintiff’s trademarks, and it was concluded that while the defendant has unlimited freedom of choice, his choice to register a sign conceptually similar to the plaintiff’s trademarks is contrary to the principle of good faith. In conclusion, the Regional Court decided for the rescission of the first instance Court’s decision and accepted the case.
In the decision of the Regional Court, which was ratified by the CoC and finalized, in addition to the visual, aural and semantic similarity assessments, the trademarks are also evaluated in terms of their concepts too and found confusingly similar.
In the other case for which the comparative visuals of the disputed trademarks are presented in the table below and which was held between the same parties, it was requested for the invalidation of the defendant’s trademark shown in Table 1.
The first instance Court concluded that the disputed trademarks are similar and decided for the invalidation of the defendant’s trademark. Upon the appeal filed by the defendant, the Regional Court evaluated whether any similarity exists between the disputed trademarks in terms of their concepts. Unlike the previous decision, when comparing the defendant’s trademark with the plaintiff’s trademarks that incorporate visuals from its products packaging, it was concluded that there is no similarity that would cause confusion in terms of compositional elements -particularly emphasizing the thick lines used in light and dark colors at the bottom of the defendant’s trademark- apart from the colors used in the disputed trademarks. This decision of the Regional Court was also ratified by the CoC and finalized.
As can be seen, different outcomes have been reached in these decisions regarding similar trademarks belonging to the same parties. Therefore, it appears that the CoC does not have a uniform implementation regarding conceptually similar trademarks. On the other hand, in both decisions, it is pointed out that in dispute of this nature, where visual, aural and semantic similarities as well as conceptual similarity are evaluated, the holistic structure of the trademarks, the colors used, the placement of each element and additional elements should be taken into consideration. Thus, these decisions provide insights into the criteria to be considered when evaluating conceptually similar trademarks.
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