Mutlu Yıldırım Köse Dilan Sıla Kayalıca report on an interesting decision in Turkey.

In a recent case, the General Assembly of Civil Chambers of the Turkish Court of Cassation ruled that although the defendant argued that the earlier trade mark CERAN originates from the word “ceramic”, this is not the case and CERAN functions as a trade mark for Turkish consumers.

Therefore it can block the latter trade mark CERAMO from being registered for similar goods.

History of the dispute

The dispute dates back to 2015. Schott opposed the Turkish trade mark application CERAMO based on its several trade marks with the word CERAN as a common and dominant element. The Turkish Patent and Trade Mark Office rejected Schott’s opposition and appeal at the administrative stage, and Schott brought a court action to cancel the Office’s decision and to invalidate the relevant trade mark.

After the first instance trial in 2017, the IP Court found that Schott’s claims were legitimate and decided to invalidate the trade mark registration for similar goods. The Regional Court of Appeal also aligned with the IP Court’s decision.

However, upon further appeal, the 11^th Civil Chamber of the Court of Cassation reversed the decision in 2019, based on the reasoning that the common letters CERA- in the parties’ trade marks refer to the fact that the goods bearing these trade marks are made of “ceramic” and thus consumers would not confuse the trade marks.

The IP Court had heard the case in the light of the reversal decision and decided to insist on its first decision in 2020, by underlining that the average Turkish consumer would not perceive the CERAN and CERAMO trade marks as referring to “ceramic”, and they may confuse the trade marks. The Turkish Trade Mark Office appealed this decision once again and brought the matter before the General Assembly of Civil Chambers of the Court of Cassation, arguing that the CERAN trade mark originates from the word “ceramic”.

Court’s reasoning

In late 2022, the General Assembly agreed with the reasoning of the IP Court and upheld the IP Court’s ruling in favour of Schott. In summary, the General Assembly decided that although the defendant argued that the earlier trade mark CERAN originates from the word “ceramic”, this is not the case and CERAN would be perceived as a trade mark but not as a generic name. Therefore it can block the junior trade mark CERAMO registered for similar goods, due to the likelihood of confusion between these trade marks.

This decision is remarkable considering the detailed reasoning provided by the General Assembly of Civil Chambers of the Court of Cassation. It is notable that the level of knowledge and the perception of average Turkish consumer are taken into consideration while evaluating its capability to block a junior trade mark registration in Turkey.

It is quite rare for the IP Courts to insist against the reversal decisions of the Court of Cassation, but when they do so, the cases are referred to the General Assembly of Civil Chambers of the Court of Cassation and the General Assembly delivers detailed and accurate decisions as in the present case.

The General Assembly is the highest board of the civil chambers in the Court of Cassation and its decisions are final. Thus, its precedents are taken into consideration seriously by the lower instance courts and seen as unifying the decisions.

Mutlu Yıldırım Köse is a Partner and Dilan Sıla Kayalıca is a Senior Associate at Gün+Partners, which acted for the trade mark owner in this case. Mutlu Yıldırım Köse is a member of the MARQUES Anti-Counterfeiting & Parallel Trade Team