Turkish Average Consumers: Healthcare Professionals or End Users?

In December 2019, the Court of Appeal issued two decisions in which the nature of consumers has been scrutinized while assessing likelihood of confusion between pharmaceutical trade marks.

Infantum v Infanta

A trade mark application INFANTUM was filed before the Turkish Patent and Trademark Office (the Office) covering goods in classes 3 and 5, against which an opposition was filed based on the prior registered trade mark INFANTA covering the same classes.The opposition was accepted in its entirety by the Office based on the likelihood of confusion.

The applicant filed an action for the cancellation of the Office's final decision by arguing that there is no likelihood of confusion between the trade marks since the target consumers of the medical goods should be considered as well- informed and highly educated.

The first instance IP Court (the IP Court) determined that the basis of the parties’ trade marks is INFANT and questioned the meaning of it. It stated that INFANT is commonly used in medical goods although it is not derived from a name of an active ingredient.Therefore, the IP Court decided that the additional letters sufficiently differentiate the subject trade marks especially for medical goods.

As a result of the above assessment, the IP Court determined that there is likelihood of confusion between the trade marks for all the goods in class 3 and 'dietary supplements (including dietary supplements and animal feed additives for non-medical purposes, pollen as dietary supplement). Sanitary preparations (pads, tampons, plasters for medical purposes, materials for dressing, diapers made of paper and textile for children)' in class 5 since their end consumers are not medical professionals.

Overall, the IP Court decided the partial acceptance of the case and for the partial cancellation of the Office’s decision with regard to 'medicine for human and animal health, chemical products of medical purposes, chemical elements, dietary supplements for medical purposes; preparations for slimming purposes, for food babies, preparations and herbal beverages for medical purposes, dental products (excluding instruments/devices), disinfectants, antiseptics, detergents for medical purposes.' in class 5 since their end consumers are medical professionals.

The matter was finally reviewed by the Court of Appeal upon both of the parties’ appeals. The Court of Appeal first explained that pharmaceutical trade marks which originate from non-distinctive phrases or are the name of an active ingredient can be registered if they have distinctive characteristics.

The Court of Appeal further explained that subject trade marks are not derived from the name of a treatment or an active ingredient.Therefore, the professional nature of the end users (being healthcare professionals such as doctors, pharmacists and dentists) does not eliminate the high level of confusing similarity between the trade marks.

Hence, the Court of Appeal concluded that the case should also be dismissed for all the goods even if their end consumers are healthcare professionals. As a result of the above assessment, the Court of Appeal rejected the appeal of the plaintiff and overturned the IP Court’s decision for the benefit of the defendant.The case was sent back to the IP Court. As to the next steps, a case will be re-recorded and a trial will be opened where the IP Court will decide whether to comply with the Court of Appeal’s ruling or not.

Certican v Septican

The trade mark application SEPTICAN was filed before the Office covering goods in class 5, against which an opposition was filed based on the prior registered trade mark CERTICAN covering the same goods.The opposition was rejected in its entirety by the Office.

The opponent filed a cancellation action against the Office’s decision before the IP Court. In its decision, the IP Court determined that even though pharmaceuticals shall be prescribed by doctors and sold in pharmacies, pharmacists may not have the same level of medical knowledge as a physician.The IP Court added that pharmacy technicians are also working in pharmacies and helping customers. Since there is similarity between SEPTICAN and CERTICAN and these products can technically be sold on the same shelves, the IP Court decided to partially accept

the case with respect to the pharmaceuticals in class 5.

The decision was initially upheld by the Court of Appeal. Upon the Applicant’s second appeal, the Court of Appeal re- examined the case and pointed out that the knowledge level of the target consumer is important while evaluating similarity and likelihood of confusion between trade marks and determined that the relevant consumers of the goods covered by these trade marks are doctors and pharmacists and that CER- and SEP- prefixes are highly different.Therefore the Court of Appeal ruled that there is no confusing similarity, no likelihood of confusion between the trade marks and overturned the IP Court’s decision which decided for the partial acceptance of the case.

Importance of these recent decisions

The Office and first instance Courts had a very strict approach to the evaluation of trade marks covering goods in class 5, which were in line with many of the Court of Appeal’s decisions. In Turkey, the majority of pharmaceuticals are in principle subject to a prescription and can only be sold in pharmacies.Therefore the Court of Appeal opined that end consumers do not have any influence during the prescription and purchase of pharmaceuticals.Thus healthcare professionals should be taken as the average consumers while assessing likelihood of confusion for pharmaceutical trade marks.This interpretation has been strictly applied and in many cases Courts decided that healthcare professionals would not confuse the trade marks in question.

The above-mentioned proceedings show that the Courts and the Court of Appeal consider the professional nature of pharmaceutical trade marks’ relevant consumers as a factor decreasing the likelihood of confusion where there is no high level of similarity between the trade marks. However, we can assume that based on its recent decisions, the Court of Appeal does not ignore the high similarity between the pharmaceutical trade marks while evaluating likelihood of confusion, even if the relevant consumers are healthcare professionals.

First published by PTMG - Law Lore & Practice June 2020 in Jun 05, 2020.

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