The Turkish Court of Cassation (the CoC) issued several decisions regarding pharmaceutical trade marks during 2020. This paper aims to provide the details of the CoC’s several finalized decisions on pharmaceutical trade marks and to remark on their importance.
Samumed v Sanimed
Decision No: 2020/273 K.., 1 January 2020
A trade mark application SAMUMED covering all goods in class 5 was filed before the Turkish Patent and Trademark Office (the Office) and was rejected upon a third party’s opposition based on SANIMED trade mark covering the same goods in class 5.
The applicant filed a cancellation action against the Office’s decision by arguing that there is no likelihood of confusion between the trade marks since MED is commonly used in the sector as an abbreviation of medical, the main elements of the trade marks are SAMU and SANI, SAMU does not refer to the goods within the scope of the application whereas the trade mark which is the basis of the rejection is weak considering that SANI is an abbreviation of sanitary.
The first instance Civil IP Court (the IP Court) determined that the trade marks are confusingly similar and due to the high similarity level between them, average consumers may purchase them mistakenly especially for over-the-counter products since these products can technically be sold on the same shelves. As a result of this assessment, the IP Court rejected the case.
Upon appeal of the plaintiff, the matter was reviewed by the Regional Court of Appeal (the RCA).The RCA stated that pharmaceuticals are prescribed by physicians and sold in pharmacies, therefore healthcare professionals should be taken as the average consumers. The RCA also stated that even for purchasing over-the-counter pharmaceuticals, average consumers’ attention would be above normal. Therefore, the RCA concluded that trade marks are not confusingly similar considering the high-level attention of pharmaceuticals’ consumers.As a result, it partially revoked the IP Court’s decision and partially cancelled the Office’s decision for 'pharmaceuticals'.
Upon further appeal of the defendants, the CoC upheld the RCA’s decision and the SAMUMED trade mark has been registered only for pharmaceuticals.
Zinco v Zincoral Pediatrik Şurup
Decision No: 2020/2599 K., 3 June 2020
A cancellation action was filed against the Office’s decision which rejected the opposition filed against ZINCORAL PEDIATRIK ŞURUP (zincoral pediatric syrup in English) trade mark based on ZINCO trade mark.
The IP Court stated that the trade marks are confusingly similar and there is a likelihood of confusion between the trade marks since doctors and pharmacists are not the only concerned consumers but also pharmacy technicians working in pharmacies and consumers may also purchase paediatric syrups without a prescription.
Upon appeal of the defendant, the matter was reviewed by the RCA. The RCA stated that goods in class 5 concern informed consumers and the term ZINCO may be used for dietary supplements containing Zinc.As a result, the RCA reversed the IP Court’s decision and rejected the case. RCA’s decision was upheld by the CoC.
Atromax v Aromax
Decision No: 2020/2976 K., 17 June 2020
A cancellation action was filed against the Office’s decision which partially rejected the application ATROMAX for 'Medicines for human and animal health, chemical products for medical and veterinary purposes, radioactive chemicals' because of an opposition based on AROMAX trade mark
The IP Court stated that ATRO refers to an active ingredient of ATROPIN and ARO is associated to aroma, therefore the trade marks are not confusingly similar and there is no likelihood of confusion between them.As a result, the IP Court accepted the case and cancelled the Office’s disputed decision. Upon appeal of the defendants, the CoC reviewed the matter and upheld the IP Court’s decision.
Tripam v Triplixam
Decision No: 2020/4954 K., 11 November 2020
A cancellation action was filed against the Office’s decision which rejected the opposition filed against TRIPAM trade mark in class 5 based on TRIPLIXAM trade mark in class 5.
The IP Court stated that TRIPLIXAM is distinctive and TRIPAM is not derived from the name of an active ingredient. Considering the common/similar goods within the scope of the trade marks, the IP Court partially accepted the case. During the appeal phases, the matter was finally reviewed by the CoC and the CoC upheld the IP Court’s decision.
Importance of these recent decisions
In general, the Office, the first instance IP Courts and the RCA’s decisions are in line with the CoC’s decisions. However, these decisions reveal that courts may adopt contrary opinions even if there is a strict approach for evaluating pharmaceutical trade marks. Some details of the trade marks such as the etymology and the nature of the products being mostly sold under prescription are significantly taken into consideration by the CoC. In future 2021 decisions, we will see whether the Courts’ approach will bring any further developments or discussions for pharmaceutical trade marks.
First published by PTMG - Law Lore & Practice May 2021, in 08.05.2021