The Turkish Patent and Trademark Office updated the Trademark Examination Guideline on 18 August 2021. Mutlu Yıldırım Köse reports.
The previous Guideline defined the criteria regarding the examination of trade mark applications on absolute grounds within the scope of the Industrial Property Code (IP Code). The updated Guideline defines the criteria regarding the likelihood of confusion examination as per Article 6/1 of the IP Code.
The main purpose of the Guideline is to clarify the principles of the confusing similarity examination and ensure consistency in the Office’s decisions.
Within this context, the main principles of the confusing similarity examination are examined in seven main sections. The Guideline consists of 681 pages and includes a great number of detailed examples. The examples are given by taking the decisions of the Office and the Courts and recent EU developments into consideration.
While the Guideline includes details and great number of examples, the highlighted points can be summarized as follows:
In the first section, the factors that should be taken into consideration in the likelihood of confusion examination are defined. Referring to the Court of Cassation’s decisions and the CJEU’s Case C-39/97 Canon, it is stated that in the course of assessment of the likelihood of confusion, the similarity between trade marks and the similarity between goods and services covered by trade marks and the level of distinctiveness/well-known status of the previous trade mark must be considered and discussed “all together and interrelated” and that in some cases, less similarity between the trade marks may be balanced by a higher degree of similarity between the goods and services within the scope of the trade marks or vice versa.
The following section covers similarity of goods and services and the role of the Nice Classification. It is stated that the Nice Classification is created for administrative purposes only and therefore the classification of goods and services cannot be decisive for determining similarity.
The relevant consumers and their attention level and the distinctiveness of the prior trade mark are also examined in the updated Guideline. It is clearly set out that distinctiveness is an essential factor in determining the scope of protection and the likelihood of confusion risk differs according to the distinctiveness level of the trade mark.
The Guideline includes a great number of examples especially regarding the similarity of goods and services and the aural, visual and conceptual similarities of signs.
Regarding the similarity of goods and services, the similarity of some goods in some classes which are frequently encountered in practice are examined with examples such as classes 25 (clothes) – 24 (fabric), 25 (clothes) – 18 (bags, suitcases), 25 (clothes) – 18 (bags, suitcases) – 14 (Jewellery) – 9 (glasses, sun glasses) – 3 (Perfumes) , 33 (Alcoholic beverages) – 32 (non-alcoholic soft drinks), 29-30-32 (foods and beverages) – 43 (Food and drink providing services), retailing services in class 35 etc.
In the examples, whether the goods and services are complementary, substitutes or in competition and the distribution channels, related consumers and trade source are considered. It is also clearly stated that the examples of similar classes given are not definitive. The competition in the market and the changing trends of the sector may have effects on the similarity assessment over time, increasing or decreasing the similarity, and should not be ignored.
Regarding comparison of the aural, visual, and conceptual similarities of the signs, the Guideline includes many examples regarding: trade marks with the same beginnings or endings; short-long trade marks; word, and word plus device trade marks; device trade marks and word plus device trademarks; device marks; stylized marks; single letter trademarks; words replacing trademarks etc.
The Guideline also includes examples that are frequently encountered when evaluating the likelihood of confusion, such as names and surnames, house trade marks, pharma trade marks, slogan marks, coloured signs, 3D signs etc.
It is expected that the Guideline will clarify the principles of confusing similarity examination and provide consistency in the Office’s decisions. The Guideline is available here.
Mutlu Yıldırım Köse, Gün+Partners, is a member of the MARQUES Anti-Counterfeiting & Parallel Trade Team