The issue of how the similarity assessment will be carried out in the signs containing house marks is discussed in the Trademark Examination Guideline of the Turkish Patent and Trademark Office, by providing several precedents on this topic.
House mark, also referred to as the main, parent or umbrella trademark, is, as the name suggests, an upper concept that serves as a roof to bring together the families of trademarks created by companies.
House marks are signs that have the function of emphasizing the top company and creating a certain image in the eyes of the consumer. Because when consumers see the house mark on a product or service, a certain company and the customary quality, guarantee and image created by that company are envisaged in their minds.
Numerous brands such as Apple, Google, P&G can be shown as examples of house marks. Trademarks such as MacBook, iPhone, iPad for Apple; Chrome, Play, Gmail for Google; and Head & Shoulders, Pampers, Ariel for P&G can be given as examples of sub-trademarks under the relevant house marks.
House marks exemplified above are sometimes used on the same or similar product groups, and sometimes on different product groups, according to the brand expansion strategies of the relevant firm. In terms of trademark law, the question of how the similarity assessment between the trademarks should be made in cases where the house mark is included in the trademark registration or application with the sub-trademark can come up. As a matter of fact, many trademarks in which house marks are included with secondary word elements are frequently seen in practice. Numerous brands such as Amazon Prime, Amazon Dash, Amazon Alexa for Amazon; Nivea Men, Nivea Sun, Nivea Essentials for Nivea can be given as examples of trademarks in which the house mark and sub-trademark are used together.
The issue of how the similarity assessment will be carried out in the signs containing house marks is also discussed in the Trademark Examination Guideline dated 2021 of the Turkish Patent and Trademark Office.[1]
According to the Guideline, if the signs identical or similar to the secondary word elements with house marks are included in another trademark as an independent distinctive element, the assessment of similarity will be made by keeping the house mark in the background. The guideline exemplifies this issue by citing many precedents. As it can also be seen in many precedents of the Re-Examination and Evaluation Board (“the Higher Board”), if the secondary word element, which is included in the house mark and has a distinctive feature, is also included as an independent distinctive element in the other trademark, the similarity assessment between these two trademarks will be carried out based on these two common distinctive elements.
For example, in its decision numbered 2016-M-5386 concerning TORKU BORDO – BORDON trademarks, the Higher Board stated that the phrase “TORKU” in “TORKU BORDO” would be considered as a house mark, whereas “BORDO” would be seen as a sub-trademark; and the phrases “BORDO” and “BORDON” have visual and phonetic similarity to each other, so there would be likelihood of confusion between the trademarks in comparison.[2] As it can be seen, if the previous trademark includes the house mark, the house mark is kept in the background during the similarity assessment.
Again, in another decision numbered 2017-M-8619, the Higher Board evaluated the similarity of “ETİ Moji”, which is requested to be registered, and the signs of “Mojee” and “Mojee Turquoise” which are the grounds for the opposition. In this evaluation, the Higher Board stated that there is a high degree of phonetic similarity between “mojee” and “moji”, and concluded that additional elements in the trademarks (such as the house mark “ETİ”) would not be sufficient to differentiate these signs from each other and as a result, found the trademarks to be similar enough to create likelihood of confusion.[3] In parallel with the first case, where the senior trademark includes the house mark, the house mark is kept in the background and the comparison is made between the common distinctive elements in this case well, where the junior trademark includes the house mark.
In its decision numbered 2017-M-2580 included in the Guideline, the Higher Board evaluated the similarity between the signs " " and "ÇITIR". Also in this decision, the Higher Board evaluated that the phrase “çıtır” is the common element in both signs and this phrase also constitutes the dominant element in both trademarks, and therefore decided that these signs are similar enough to create likelihood of confusion.[4] This decision is interesting, since the word “çıtır” (En. ‘crispy’), which is the common and dominant element of both trademarks has a very low distinctive feature in terms of goods/services covered by the trademarks. Therefore, it is thought-provoking that the Higher Board made its decision based on the phrase “çıtır”.
In the decision of the Higher Board numbered 2016-M-8241, the similarity of " " and " " has been evaluated and it has been concluded that there is a similarity at a level that creates likelihood of confusion due to the commonness of the phrase "V-Care", which is included in the signs and has a distinctive feature.[5] As it can be seen from the decision, despite the fact that both signs in comparison have distinguishable house marks, the Higher Board kept the house marks in the background anyway, and focused on the secondary distinctive element, which is “V-Care”, and found the trademarks confusingly similar. In the case where both trademarks contain house marks, the examination is once again made by excluding the house mark from the assessment.
In summary, in the light of the precedents of the Turkish Patent and Trademark Office that is mentioned in the Guideline, it can be said that the examination will be performed by keeping the house mark in the background, in cases where at least one of the trademarks in comparison involves a house mark.
There are also judicial decisions given on this topic. For instance, the Court of Cassation examined the similarity of the trademarks "Fit" and " ", in the decision of the 11th Civil Chamber of the Court of Cassation, with the merit number of 2019/4410, the decision number of 2020/2319 and dated 04/03/2020. The Court of Cassation made the following assessment in its decision:
"The case is found admissible on the grounds that the phrase 'Fit' is the main element in the trademarks of the parties, that the goods and services within the scope of the trademark application and trademark which is the ground for the opposition are the same or similar, therefore there is likelihood of confusion. It has been decided to cancel the decision of the Office and to invalidate the trademark numbered 2014 16928 since it is already registered.”
Again, in another decision of the 11th Civil Chamber of the Court of Cassation, with the merit number of 2020/2288, the decision number of 2021/3428 and dated 07/04/2021, the similarity assessment between the signs “Frutti” and “Tamek Fruty” was conducted, and the Court made the following statements on the subject:
“The case is found admissible on the grounds that the phrase “Fruty” constitutes the main element in the trademark of the defendant, “Tamek Fruty”, that the phrase "Frutti", which is the main element in the registered trademarks of the plaintiff, is similar to “Fruty”, and there is likelihood of confusion, It has been decided to cancel the Higher Board decision numbered 2010- M-4555 of the Office, and to invalidate the trademark numbered 2009 20436, as well as to delete the same from the trademark registry.”
Moreover, the decision of the 11th Civil Chamber of the Court of Cassation, with the merit number of 2020/1786, the decision number of 2021/1669 and dated 24/02/2021, is in the same direction. In the referred precedent, "PANDA STIX", "STIX" and "STICK" trademarks of the plaintiff and "ETİ Çikolata Sticks" trademark of the defendant were found to be similar, and it has been decided to invalidate the trademark "ETİ Çikolata Sticks" on the grounds that the phrase 'sticks' in the application of the defendant means sticks in English and constitutes the main element of the application, that the phrase 'eti' in the application is the house mark of the defendant company, and that the phrase 'chocolate' in the application is a descriptive element.
As can be seen from the precedent decisions, in terms of the signs that include house marks such as “UNO”, “TAMEK” or “ETİ” and secondary word elements such as “Fit & Fun”, “Fruty” and “Sticks”, the house marks “UNO”, “TAMEK” and “ETİ” were kept in the background while conducting the similarity assessment, due to the fact that the secondary word elements of these signs are the same or similar to the independent distinctive elements such as “FIT”, “Frutti” and “STIX” involved in the other signs.
Moreover, although not being a final judgement, in the decision with the merit number of 2019/1129, the decision number of 2021/339 and dated 05/04/2021, rendered by the 20th Civil Chamber of the Ankara Regional Court of Appeal, the Chamber found the trademarks “Süt dilimi + şekil” and “ETİ Süt Dürümü” confusingly similar. The Chamber justified its decision on the grounds that “The phrase 'ETİ' in the application subject to the lawsuit is the distinctive part of the trade name of the defendant company and the house mark, in this respect, the essential element of the application consists of the phrase of ‘Süt Dürümü’ and there is a similarity between this phrase and the phrase ‘Süt Dilimi’, which constitutes the essential element of the plaintiff's trademarks and has a distinctive feature, to a degree that causes likelihood of confusion.”. The justification in the decision given by the Regional Court of Appeal sets another precedent regarding the discourses in the Guideline on how to conduct similarity assessment in terms of house marks.
Exceptionally, if the distinctiveness of the common element in the trademarks is low, it is possible to conclude that there is no similarity between the signs. For example, in the decision of the Higher Board numbered 2009-M-4695, which was approved by judicial review as well, the trademarks “ ”and “ ” were found to be dissimilar since the phrase “Slim” was not distinctive and it was put out to be descriptive in the decision of the Court of Cassation saying that “It is also known to be used as an expression that defines ‘thinner than normal’ products in many products.”.
Again, another decision of the 11th Civil Chamber of the Court of Cassation, with the merit number of 2018/1779, the decision number of 2019/3438 and dated 06/05/2019, the plaintiff's "CEP" formative trademarks and the defendant's "İŞCEP PARAKOD" trademark were found dissimilar. The court gave the following statements as the justification of its decision: “The trademark application is used together with the defendant's house mark; the phrase "CEPPARAKOD" as a whole, and the house mark "İŞ" in the defendant's application will attract the perception of the average consumer in terms of financial services and banking services found in class 36 within the scope of registration; that the expression 'CEP' can be widely used as the direct name for mobile phone and communication services; that the consumers encountering these trademarks can perceive the difference between them; for this reason, it was decided to dismiss the case on the grounds that the trademarks of the plaintiff and the trademark application of the defendant are not similar, there is no likelihood of confusion, and the commonness of the phrase 'CEP' which has low distinctive character will not lead to the likelihood of confusion.” The court did not find the trademarks similar, considering that the "CEP" (used as a shortening version of “Mobile phone”) phrase, which constitutes the common element between the trademarks, has low distinctiveness in terms of the relevant goods and services, and that the perception of the consumer may be directed to the house mark "İŞ" in the trademark of the defendant.
In conclusion, based on the precedents above, in the evaluation of the similarity of the trademarks containing secondary word elements together with the house marks, it can be said that, as a general practice, the level of distinctiveness of the secondary word element will be examined and if the secondary word element is distinctive, the house marks will kept in the background in the similarity assessment and the evaluation will proceed through the secondary word elements. On the contrary, in cases where the level of distinctiveness of the secondary word element is weak or where the secondary word element is not distinctive, it can be said that an evaluation can be made over the holistic perception of the trademarks and it can be concluded for dissimilarity of the trademarks. However, it is observed that every precedent does not comply with this general rule, and each case shall be examined based on its own conditions.