In a decision published on 18 December 2019, the Turkish Court of Cassation (COC) ruled that trade marks inspired by descriptive words, which are not allowed to be monopolized, are weak trade marks and cannot be protected like trade marks with a high distinctiveness. Even small differences can make these trade marks distinctive, and owners of weak marks cannot oppose the registration of the same signs with different elements. Mutlu Yıldırım Köse explains

Plaintiff's trade mark application

Defendant's trade mark

The plaintiff filed a trade mark application for CHESTERFIELD BLUE LINE covering goods in class 34. An opposition was filed against this application relying on the prior dated trade mark registration BLUE LINE covering goods in class 34. The Turkish Trade Mark Office accepted the opposition and rejected the trade mark application. The applicant filed a court action against this decision and the first instance court accepted that there would be no likelihood of confusion between the marks.

Appeal rejected

The defendant filed an appeal before the District Court and the appeal was rejected. The District Court stated in its decision that although the trade mark which is the ground of the opposition must be protected since it is registered, the person who registers a phrase with low distinctiveness has to bear the consequences of this. In this case BLUE LINE has low distinctiveness for tobacco and tobacco products in class 34 and the addition of CHESTERFIELD is sufficient to distinguish the trade marks.

Therefore, the trade marks will not lead to a likelihood of confusion on the part of the public. The COC upheld the District Court’s decision. It said that trade marks that are formed with inspiration from descriptive words, which are not allowed to be monopolized, are weak trade marks and cannot be protected like trade marks with high distinctiveness. Even small differences can make these trade marks distinctive, and weak trade mark owners cannot oppose the registration of the same signs with different elements.

In line with Europe

This approach of the COC is in line with the decisions of CJEU and EUIPO that there has to be narrower protection for weak trade marks. When evaluating the likelihood of confusion between two marks which include the same low-distinctive phrase, the impact of non-common elements on similarity should be considered, depending on the circumstances of every case.

Mutlu Yıldırım Köse is a Partner of Gun+Partners and a member of the MARQUES Copyright Team