Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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MONDAY, 18 MARCH 2013
ESPE and the final consumer: when being professional is not enough
The owner of the ESPE trade mark opposed in part an application
to register as the trade mark the word ESPERLA . Following dismissal of its
opposition by the Turkish Patent Institute (TPI), the mark’s owner filed a
cancellation action against this refusal, seeking invalidation of the ESPERLA trade
mark for the goods and services “dental care products and products for
The Ankara No.1 Intellectual Property Court determined
that ESPE and ESPERLA were confusingly similar trade marks, especially
considering that no convincing evidence was provided by the applicant to the
contrary; on that basis, it was obvious that the word ESPERLA had been derived
from the ESPE trade mark.
The trade mark applicant based its defence on the
argument that “dental care products and products for dentistry” did not target the
average consumer but healthcare professionals, and that end-users of the
products did not make a choice between the products. Relying on this, the applicant company alleged that the degree of
attention of healthcare professionals was higher than that of the ordinary
consumer. Accordingly, there would not
be a likelihood of confusion.
The IP Court however stated that the fact that the
targeted consumers of goods and services bearing the applicant’s mark were highly-educated
professionals did not decrease the likelihood of confusion between the respective
trade marks because the similarity between the trade marks did not arise from a
technical necessity of their being used in the same field. Moreover, since ESPE
was not a generic term, it was not possible to allow its use as the root of
another trade mark just because professionals were the targeted consumer.
Finally, the IP Court ruled that the trade marks did not target only health
professionals but also average end consumer.
Separately, the IP Court determined that ESPE was a
well known mark in the light of the criteria set by the WIPO,. However the dispute did not require the
application of the effect of a well known mark since the disputed goods and
services were similar too.
The decision of the IP Court has been upheld by the
Courts of Appeal and finalized.
Source: Selin Sinem Yalıncaklı (Mehmet Gun & Partners, Istanbul, Turkey)
Posted by: Blog Administrator @ 05.07
Turkey, targeted consumers,
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