In trademark law, the existence of distinctive character is one of the main criteria for the registration of a trademark, and the overall impression of the trademarks and the elements they contain should be examined in detail when evaluating the likelihood of confusion between trademarks. In cases conducted by the European Union Intellectual Property Office (“EUIPO”), it is mentioned that, in addition to the distinctive elements of a trademark, the low distinctive elements should also be taken into consideration and the assessment of similarity between trademarks should be conducted globally.
Some examples provided by the Guideline[1] prepared by EUIPO, where it was decided that there is a similarity between the trademarks in regard to the common goods and services within their scope, are shared below:
Numerous decisions have been rendered by the Turkish Court of Cassation regarding the similarity of trademarks that comprise low distinctive phrases in common. Below are examples of such decisions of the 11th Civil Chamber of the Court of Cassation:
As can be seen, the similarity between trademarks that have elements in common with low distinctiveness is evaluated by taking into consideration the goods and services for which the trademarks seek to be registered and the attention level of the relevant consumers. In a recent decision of the 11th Civil Chamber of the Court of Cassation[2], which at first may seem to contradict the Court of Cassation’s above-listed decisions but in fact keeps in line with its principles regarding similarity, it was ruled that the common phrase “HÜP” (characterized as a sound made when drinking), will not lead to similarity between the trademarks. The Plaintiff argued that there were several trademarks containing the phrase “HÜP” and argued that the trademark application for “DANONE KIDS HÜPPER” constitutes likelihood of confusion among the consumers. The Defendant argued that the expression “HÜPPER” was derived from the word “SÜPPER” and that the word “HÜP” was a descriptive one in the food sector. The First Instance Court and the Regional Court of Appeal stated that the word “HÜP” has low distinctiveness and that the degree of trademark protection for such words should be limited.
Conclusion
As a result, it is possible to conclude that even if the dominant and common element of a trademark can be considered as a weak phrase, it may be accepted that the trademarks are similar by making an assessment in terms of the scope of goods and services covered. On the other hand, if it is determined that this common element has a low distinctiveness and descriptive in terms of the goods and services for which registration is sought, it may be considered that the trademarks differ from each other. Indeed, in cases where the distinctive strength of the secondary word element is weak or not distinctive, it may be foreseen that an examination may be made based on the overall perception created by the trademarks and no similarity between the trademarks may be found. However, it is observed that not all decisions comply with this general rule[3].
[1] EUIPO, “Guidelines for Examination in the Office”, Part C, Opposition, 2020, p. 932.
[2] The Court of Cassation 11th Civil Chamber’s decision with the Merits no. 2022/7256, Decision No.2024/3452 and dated 02.05.2024.
[3] Ibid.
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