Similarity Assessment in Trademark Applications Containing Low Distinctive Elements in the Light of the Court of Cassation Decisions
In trademark law, the existence of distinctive character is one of the main criteria for the registration of a trademark, and the overall impression of the trademarks and the elements they contain should be examined in detail when evaluating the likelihood of confusion between trademarks. In cases conducted by the European Union Intellectual Property Office (“EUIPO”), it is mentioned that, in addition to the distinctive elements of a trademark, the low distinctive elements should also be taken into consideration and the assessment of similarity between trademarks should be conducted globally.
Some examples provided by the Guideline[1] prepared by EUIPO, where it was decided that there is a similarity between the trademarks in regard to the common goods and services within their scope, are shared below:
- The trademarks “
” and “iHotel” according to the Decision referenced T-277/11 and dated 13.06.2012. - The trademarks “SHE” and “
” according to the Decision referenced T-642/13 and dated 15.10.2015.
Numerous decisions have been rendered by the Turkish Court of Cassation regarding the similarity of trademarks that comprise low distinctive phrases in common. Below are examples of such decisions of the 11th Civil Chamber of the Court of Cassation:
- Decision dated 07.02.2024 (2022/4637 Merit No., 2024/848 Decision No.): It was decided that there was similarity between the trademarks with the phrase “FIT” and the trademark application with the phrase “MOM’S FIT”, relying upon the common and dominant phrase “FIT”.
- Decision dated 28.05.2024 (2023/923 Merit No., 2024/4382 Decision No.): It was decided that there was a similarity between the trademarks “COOK” and “COOKSHOP” and trademark “COOKS”, as the essential element is “COOK” and there is a likelihood of confusion between the trademarks.
- Decision dated 18.09.2023 (2022/1197 Merit No., 2023/5059 Decision No.): It was decided that there was a likelihood of confusion between the “AKLEZİZ”, “LEZİZ” and “LEZİZBEY” trademarks, as “LEZİZ” is the dominant element in the trademarks. Furthermore, it was emphasised that there are similar precedent regarding the trademarks “Leziz - Lezizim” and “Leziz - Lebleziz”.
- Decision dated 02.12.2019 (2019/1049 Merit No., 2019/7730 Decision No.): It was considered that there was a similarity between the trademarks “FİT”, “FİT X” and “FİT INDEXS” and the trademark “ÇOKOFİT”, and it was concluded that there was a likelihood of confusion between the trademarks on the grounds that the element of “ÇOKO” was not distinctive and referred to chocolate products.
- Decision dated 13.02.2024 (2022/4766 Merit No., 2024/986 Decision No.): It was stated that there was a likelihood of confusion between the “DENTA” and “DENTAMIN” trademarks in terms of the goods concerned, and it was decided that the phrase “DENTA” was dominant, whereas the suffix “MIN” was not sufficient to ensure distinctiveness.
- Decision dated 18.11.2020 (2020/942 Merit No., 2020/5185 Decision No.): It was decided that the trademarks bearing the essential “FRUTTI” element and the trademarks “TAMEK FRUITY” are similar and that the phrase “TAMEK” is not effective in decreasing the degree of similarity.
- Decision dated 03.02.2021 (2020/1410 Merit No., 2021/800 Decision No.): It was decided that the “ETİ ÇAY KEYFİ” trademark and “YENİ ÇAY KEYFİNİZ” trademark were similar, as the common element was “ÇAY KEYFİ” and that there was a likelihood of association between the trademarks by the average consumer.
- Decision dated 10.03.2022 (2020/7041 Merit No., 2022/1724 Decision No.): It was decided that there was a visual, phonetic and conceptual similarity between the trademarks “MACRO&MORE”, “MACROCENTER”, “MACRONEWS” and the trademark “MAKRO TEKNİK GLASS WOOL”.
- Decision dated 07.05.2024 (2023/223 Merit No., 2024/3634 Decision No.): It was stated that there was a similarity between the brands “MOBİL” and “MOBİL İLAÇLAMA & PEYZAJ” and that there was a likelihood of association between the trademarks by the average consumer.
As can be seen, the similarity between trademarks that have elements in common with low distinctiveness is evaluated by taking into consideration the goods and services for which the trademarks seek to be registered and the attention level of the relevant consumers. In a recent decision of the 11th Civil Chamber of the Court of Cassation[2], which at first may seem to contradict the Court of Cassation’s above-listed decisions but in fact keeps in line with its principles regarding similarity, it was ruled that the common phrase “HÜP” (characterized as a sound made when drinking), will not lead to similarity between the trademarks. The Plaintiff argued that there were several trademarks containing the phrase “HÜP” and argued that the trademark application for “DANONE KIDS HÜPPER” constitutes likelihood of confusion among the consumers. The Defendant argued that the expression “HÜPPER” was derived from the word “SÜPPER” and that the word “HÜP” was a descriptive one in the food sector. The First Instance Court and the Regional Court of Appeal stated that the word “HÜP” has low distinctiveness and that the degree of trademark protection for such words should be limited.
Conclusion
As a result, it is possible to conclude that even if the dominant and common element of a trademark can be considered as a weak phrase, it may be accepted that the trademarks are similar by making an assessment in terms of the scope of goods and services covered. On the other hand, if it is determined that this common element has a low distinctiveness and descriptive in terms of the goods and services for which registration is sought, it may be considered that the trademarks differ from each other. Indeed, in cases where the distinctive strength of the secondary word element is weak or not distinctive, it may be foreseen that an examination may be made based on the overall perception created by the trademarks and no similarity between the trademarks may be found. However, it is observed that not all decisions comply with this general rule[3].