According to Article 4 of the IP Code a sign should be distinctive in order to benefit from trademark protection. Distinctiveness is an essential factor in determining the scope of protection of a trademark, and the protection scope of trademarks differs according to the distinctiveness level of the component(s) that form the trademark.
The trademarks composed of non-distinctive components, or components where the distinctiveness is weak, are called “weak trademarks.” Although the distinction of "strong" or "weak" trademarks does not have a legal basis, it is considered as an essential distinction in determining the scope of protection to be given to the trademark in both the doctrine and judicial decisions.
The doctrines of the European Court of Justice (CJEU) and European Union Intellectual Property Office (“EUIPO”) agree that the protection of weak trademarks is not extensive, unlike those with high distinctiveness traits. A person who registers a weak trademark must endure the use of similar signs by third parties, which may be expected to cause the likelihood of confusion with that trademark. Indeed, the addition of minor components is sufficient to distinguish the trademarks from each other. It is not possible for a person to have an absolute right on a low distinctive sign, even if it is registered as a trademark.
In respect thereof, the Court of Appeals (CoA), in an earlier decision dated 02.10.2013, decided that the BLUEDIAMOND trademark that had been registered for goods and services relating to jewelry should be invalidated, since it creates the likelihood of confusion with the earlier dated trademarks of DIAMOND, DIAMOND MUCEVHERAT (‘mücevherat’ means jewelry) and NACI DIAMOND, that cover goods and services relating to jewelry. Having assessed the allegations of the defendant, and determining that ‘Diamond’ has a low level of distinctiveness for goods and services relating to jewelry, the CoA accepted that the trademarks were not sufficiently different from each other, and ruled that a trademark will grant all legal rights to its owner, unless a finalized cancellation decision is rendered as a result of a cancellation action. According to this previous approach of the CoA, the trademark holder would be entitled to use all legal rights arising from the registration of their trademark, and may not be restrained from such use for the descriptiveness or weakness of the sign. This approach of the CoA was criticized on the grounds that it would lead to an absolute right on descriptive phrases and generic names if they were registered as a trademark, in any manner.
Upon examination of the recent decisions of the CoA, it is clear that the Court has a different approach and, since the CoA has issued many decisions determining the fundamental principles of assessment of likelihood of confusion of trademarks that include descriptive phrases, these have become established precedents. In a decision rendered in 2015, the CoA stated that “The scope of the protection of weak trademarks had to be narrower… In short, the trademarks that are formed with inspiration from descriptive phrases, or phrases designating nature, are weak trademarks. The possibility of confusion between these trademarks may be eliminated with a minor change.” In a decision from 2017, the Court of Appeals, once again, stated that “The trademarks, formed with inspiration from descriptive words that are not allowed to be monopolized, are weak trademarks.”
In a similar way, in its recent decision dated December 18, 2019, regarding the “CHESTERFIELD BLUE LINE,” and “BLUE LINE” trademarks that cover goods in class 34, the CoA upheld the decision of the District Court, which states that “Although the trademark that is the grounds of the action must be protected since it is registered, the person who registers a phrase with low distinctiveness has to bear the consequences of this. In this case, BLUE LINE has low distinctiveness for tobacco and tobacco products in class 34, and the addition of CHESTERFIELD is sufficient to distinguish the trademarks. Therefore, the trademarks will not lead to a likelihood of confusion on the part of the public.” In its decision, the CoA stated that “Considering that BLUE LINE has low distinctiveness for tobacco and tobacco products in class 34… it is required to uphold the decision of the District Court.”
This approach of the CoA is in line with the decisions of the CJEU and EUIPO, and there must be clearer protection for weak trademarks. While evaluating the likelihood of confusion between two trademarks that include the same low distinctive phrase, the impact of non-common elements as to similarity should be evaluated depending on the circumstances of each case.
First published by Marques - Class 46 in 03.05.2020.