Short Marks Composed of Four Letters With Different Last Two Consonants Held to be Confusingly Similar
The Ritz Hotel Limited & The Ritz-Carlton Hotel Company, LLC v Sami Yorulmaz, 27.09.2016, 2016-M-7845 (ﬁnalized early 2017). Re-Examination and Evaluation Board of the Turkish Patent and Trade Mark Ofﬁce
In this landmark decision, the Re-Examination and Evaluation Board (‘Board’) of the Turkish Patent and Trade Mark Ofﬁce (‘Ofﬁce’) concluded that, in some cases, one of the elements creating the mark can have a greater effect on average consumers. Thus these elements should be evaluated by themselves rather than as part of the trade mark as a whole. The Board rejected the con-tested RIDS mark for being confusingly similar to the op-ponents’ well-known RITZ and RITZ-CARLTON marks.
Legal context and facts
On 28 December 2015 the applicant (Sami Yorulmaz) ﬁled an application for a RIDS mark, seeking registration for services in class 43. Following the publication of the appli-cation on the Ofﬁcial Trade Mark Bulletin of 12 January 2016, the opponents (world-famous hotel management companies, namely The Ritz Hotel Limited & The Ritz-Carlton Hotel Company, L.L.C.), having registrations for RITZ and RITZ-CARLTON marks in many countries around the world, including Turkey – especially for the ser-vices in class 43 among others -, ﬁled a joint opposition to this application on 12 April 2016 on the grounds of:
- likelihood of confusion between the contested RIDS mark and the opponents’ RITZ and RITZ-CARLTON marks as per Article 8/1(b) of the Decree Law no. 556 on the Protection of Trademarks, and
- well-known status of RITZ and RITZ-CARLTON marks as per Article 8/4 of the Decree Law no. 556 on the Protection of Trademarks.
The Trade Marks Department Directorate (‘TDD’) of the Ofﬁce, however, rejected this joint opposition on 20 April 2016, ﬁnding lack of any similarity that would lead to con-fusion between the marks. Following this rejection, the op-ponents ﬁled a joint appeal before the Board of the Ofﬁce on 14 June 2016 with the request for the re-examination of their joint opposition.
After examining the appeal on 27 September 2016, the Board reversed the decision of the TDD, conﬁrmed the op-ponents’ claims with respect to the likelihood of confusion between RITZ and RIDS marks and decided for the rejec-tion of the RIDS application in its entirety.
In its reasoned decision, the Board justiﬁed its conclusion for likelihood of confusion with the following reasoning:
- The average consumer does not usually have the chance to make a direct comparison between the marks but instead they only take the incomplete im-ages of the marks remaining on their minds. Therefore, in some cases, the comparison cannot be made only in terms of the overall impression of the marks because one of the elements creating the mark can have a greater effect on average consumers. In this respect, the distinctiveness and reputation of the marks do affect the likelihood of confusion as well.
- Both the contested RIDS and the main element of the opponents’ marks RITZ has four letters and the order of R and I letters is the same in these marks. Besides, the marks ending with D-S and T-Z letters also have a very similar pronunciation.
- In addition to the above, considering the distinctive-ness and the well-known status of RITZ and RITZ-CARLTON marks, there is likelihood of confusion between the contested RIDS mark and the oppo-nents’ RITZ and RITZ-CARLTON marks.
The applicant was entitled to ﬁle a cancellation action against this decision before Ankara Civil IP Courts within two months as of the notiﬁcation of the decision. However, since the applicant did not ﬁle a cancellation action against this decision in due time, the Board’s decision became ﬁnal in the early 2017.
Over the past few years, the Ofﬁce has tended to adopt a strict approach regarding short marks and reject the oppo-sitions/appeals on the grounds that the use of one or two different letters removes the likelihood of confusion be-tween the trade marks as they will not be perceived as simi-lar in terms of their overall impression.
This recent landmark decision, on the other hand, illus-trates how the Ofﬁce’s evaluations have improved within the past couple of years with regard to the assessment of the likelihood of confusion between short marks having no ﬁgurative elements.
Indeed, the Ofﬁce renounced its strict approach with this decision and accepted that there is likelihood of confu-sion between these trade marks, even though RITZ-CARLTON is a two-word mark, due to the fact that RITZ has a signiﬁcant impact on consumers in their perception of the RITZ-CARLTON; furthermore, although the last two letters of RITZ and RIDS marks are visually different, they have a similar pronunciation.
Besides, with this decision the Ofﬁce also decided that the dis-tinctiveness and well-known status of RITZ and RITZ-CARLTON marks increases the chance of ﬁnding a likelihood of confusion between them and marks bearing a similarity to RITZ.
Overall, this decision sets a current precedent for oppo-sition cases where the contested mark is a short mark giv-ing a similar aural impression with the main element of the ground marks although its last letters are visually different from the ground trademarks and emphasizes that the distinctiveness and well-known status of ground marks should be taken into consideration while evaluating the similarity and likelihood of confusion.
First published by Oxford University Press – Journal of Intellectual Property Law and Practice Volume 13 Issue 1, in 27.11.2017