On 30 September 2019 the Turkish Patent and Trademark Office issued guidelines regarding the examination standards for trademark applications in terms of absolute grounds, which were the first of their kind under Turkish law. Recently, a new chapter concerning the substantive examination standards for the assessment of confusing similarity has also been published.
The new chapter covers the topics below:
- the concept of ‘likelihood of confusion’;
- the similarity of goods and services taking into account the role of the Nice Classification;
- the relevant consumers and their level of attention;
- the distinctiveness of the prior trademark;
- the comparison of the signs from an aural, visual and conceptual point of view;
- all the factors to be used for the determination of the likelihood of confusion (ie, the similarity of goods/services, the relevant consumers and their attention level, the distinctiveness of the prior trademark and the comparison of the signs); and
- frequently faced situations when assessing the likelihood of confusion between certain types of mark (eg, names and surnames, house marks, pharmaceutical marks, slogan marks, one-letter marks, two or three-letter marks, colour marks and three-dimensional marks).
The guidelines now consist of 681 pages and include several examples of decisions from the Turkish Patent and Trademark Office, Re-examination and Evaluation Board and courts, as well as decisions from the European Union Intellectual Property Office and Court of Justice of the European Union.
In particular, the similarity of goods and services is discussed in detail, providing examples of similar / related goods and services under separate subheadings. For instance, the similarities between complementary goods/services, substitute goods/services and competing goods/services are covered, taking into consideration their distribution channels, consumers, trade sources, nature and purpose.
Regarding the similarity of trademarks and the likelihood of confusion, the new chapter discusses the impact of the level of distinctiveness and dominant element of the marks on confusing similarity, and covers the similarity of word marks, device marks and word-and-device marks from an aural, visual and conceptual point of view. For example, the new chapter examines the assessment of similarity for trademarks with similar beginnings/endings, short/long trademarks, one letter trademarks, and trademarks consisting of words with identical/similar meanings, among others.
It is hoped that this detailed chapter, as well as being a valuable resource for practitioners, will improve the consistency and quality of the Patent and Trademark Office’s decisions. It will be important to update the guidelines periodically by reflecting possible changes in law and precedents.
First published by WTR, in 22.09.2021