Relative Grounds for Refusal in Trademark Registrations

February 2020 Zeynep Ezgi Yanarateş
% 0

Article 6 of Industrial Property Code (“IPC”) numbered 6769, which was entered into force on January 10, 2017, regulates relative grounds for refusal in trademark registrations. This Article aims to protect the rights of those who have been so entitled prior to the trademark application. Since, contrary to absolute grounds for refusal, in the case of relative grounds for refusal, there is no situation that concerns the public interest, the grounds are not taken into account by the Turkish Patent and Trademark Office (“Office”) ex officio, but are examined on objection.

Pursuant to Article 18 of the IPC, "relevant persons" may submit oppositions to the Office within two months of the publication of the trademark, on the grounds that the trademark application published in the Bulletin is contrary to absolute and relative grounds. Relevant persons should be understood as registered trademark owners, trademark application owners, persons who use the subject trademark and/or it’s similar without registration, and those whose legitimate interests may be damaged.

Below, Article 6 of the IPC, which is related to the relative grounds for refusal, is reviewed in detail.

Likelihood of Confusion

According to Article 6/1 of the IPC, “An application for trademark registration shall be refused upon opposition if there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to the identity with, or similarity to, the earlier trademark, and the identity or similarity of the goods or services covered.” In this case, in the event of an objection, the following three issues are examined by the Office in detail. These are i) the trademark application is identical or similar to an earlier trademark ii) the goods/services within the scope of the application are identical or similar to the goods/services of the earlier trademark, and iii) there is a possibility of association, including confusion among the consumers, due to these similarities. In addition, the Office evaluates different factors interdependently, such as the recognition and distinctiveness of the earlier trademark, the level of attention of the average consumer, and the conditions specific to the relevant sector.

In the similarity assessment, all relationships and features between goods and services, such as addressing similar consumer environment, meeting similar needs, having a raw material-product relationship and common distribution channels, being sold in the same departments, and having similar target audience, should be taken into account. When evaluating whether trademarks are similar, a holistic evaluation should be made to see whether the trademarks are visually, aurally and conceptually similar. In this context, the generic elements the trademarks contain should be left out of the evaluation.

If there is a similarity among the trademarks that may be perceived visually, this similarity is accepted as visual similarity[1]. For example, although the word elements of the "Helvacı Dede + device" trademark, whose invalidation was requested from the Court of Cassation, and the registered trademarks, "Grandfather device" and "KREM HELVA + Grandfather device," are different, the Court of Cassation decided to invalidate the "Helvacı Dede + device" trademark since there is a visual similarity originating from the "old man shape."[2]

The trademark whose invalidation was requested. / Earlier trademarks of the plaintiff

Aural similarity is the similarity that occurs due to the pronunciation of trademarks. For example, the European Union Intellectual Property Office ("EUIPO") decided that the trademarks "4 US - FOR US" are aurally similar[3]. The Court of Cassation also ruled that the trademarks PIERRE CASSI and PIERRE CARDIN are aurally similar[4].

Finally, the conceptual similarity of trademarks can be seen in terms of the mark and image left in the average consumer’s mind[5]. In another decision of the Court of Cassation, it decided that the trademark may cause conceptual confusion with the crocodile shape of Lacoste[6].

Trademark Application by a Commercial Agent or Representative in His Own Name without Consent

Article 6/2 of the IPC regulates that “A trademark application for the registration of an identical or indistinguishably similar trademark filed by a commercial agent or representative in his own name without the trademark proprietor’s consent, and without any justifiable grounds, shall be refused upon the trademark proprietor’s opposition.” In accordance with the relevant provision, unless there are justifiable reasons, such as the trademark owner sacrificing the Turkish market, he does not renew his trademark registration after it expires, then the referred trademark application of the commercial agent or representative will be rejected.

Registration of the Trademark Without the Consent of the Prior Right Holder

Article 6/3 of the IPC regulates that “If a right to a non-registered trademark or to another sign used in the course of trade was acquired prior to the date of application, or the date of the priority claimed for the application for registration of a trademark, the trademark application shall be refused upon opposition of the proprietor of that prior sign.” Accordingly, the person who has gained the right on an unregistered trademark through prior use has been granted the right to prevent the trademark registration. In this case, the prior right holder is given a priority right against registration.

Protection for Well-Known Trademarks

According to Article 6/4 of the IPC, “Trademark applications that are identical or similar to well-known marks within the context of Article 6 bis of the Paris Convention[7] shall be refused upon opposition in respect of identical and similar goods or services.”

In addition, Article 6/5 of the IPC regulates that “A trademark application that is identical, or similar, to an earlier registered trademark or application, irrespective of whether the goods or services for which it is applied or registered are identical, similar to, or not similar, to those for which the latter trademark is applied for, and i) the use of the latter trademark without due cause would take unfair advantage of, or ii) be detrimental to the distinctive character, or iii) the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey, shall be refused upon opposition of the proprietor of that earlier trademark.”

In this case, unlike Article 6/4 of the IPC, well-known trademarks in Turkey have broader protection against similar trademark applications regardless of whether the application is made for similar or totally different goods or services. However, in order to prevent registration of an application for goods and services in different classes, the well-known trademark must be registered in Turkey, or its application has to be made. Indeed, within the scope of Article 6/5 of the IPC, being a well-known trademark does not constitute relative grounds for refusal on its own, but also one of the three other conditions in the Article must be satisfied.

For example, in the DİDO decision, the Court of Cassation decided to accept the case and refuse the registration of the trademark, DİDO Bistro, on the grounds that the well-known status of the trademark, DİDO, which is known for chocolate and similar food items, will be adversely affected by the registration of the trademark, DİDO Bistro, the consumers may have negative associations with the trademark, and it may enjoy unfair advantage from its well-known status[8].

Registration of the Name, Photograph, Copyright or Industrial Property Rights of Others

Article 6/6 of the IPC regulates that “An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photograph, copyright, or any other intellectual property right of another.”

In this case, names and surnames that have been identified with another person, and are known in society, cannot be registered as a trademark. Within this scope, the trademark applications of TIGER WOODS, MICHAEL JORDAN and BEYONCE,[9] have been rejected by the Court of Cassation[10].

Within the context of the relevant paragraph, copyright owners are also entitled to oppose if the trademark application is made for signs that are the subject of copyright protection. Accordingly, if cartoon characters, such as Winnie the Pooh, Betty Boop, or the name of a famous work of an author (such as Crime and Punishment), are sought to be registered as a trademark by someone else, the application may be refused upon opposition.

Unauthorized registration of the business name of another company may also be prevented using this paragraph of the Article. However, the application may only be refused for the related goods and services after comparing the activities of the company in the registry record with the goods and services that are within the scope of the trademark application.

Trademark Applications filed in Bad Faith

Pursuant to Article 6/9 of the IPC, “Trademark applications filed in bad faith shall be refused upon opposition.” Examples of these cases are i) trademark applications that are original and cannot be randomly selected or created, and which contain phrases or devices registered or used in Turkey or abroad; ii) trademark applications that are likely to benefit from trademark recognition; iii) the same or indistinguishable trademark applications that were made by someone who has a contract, pre-contract, or trade or employee-employer relationship with the prior trademark owner. The situation in which the trademark applicant makes trademark applications systematically for trademarks that are registered in Turkey or abroad, and which have high level of recognition, will be accepted as trademark applications filed in bad faith, as well.

Other Situations

Although it is generally not seen in practice, according to Article 6/7 of the IPC, “An application for registration of a trademark that is identical to or similar to a collective mark or a guarantee mark with identical or similar goods or services, and which is filed within three years following the expiration of the protection of the collective mark or guarantee mark due to non-renewal, shall be refused upon opposition of the previous right holder.” and pursuant to Article 6/8 of the IPC, “An application for registration of a trademark that is identical to or similar to a registered trademark with identical or similar goods or services that is filed within two years following the expiration of the protection of the registered trademark due to non-renewal shall be refused upon opposition of previous trademark proprietor provided that the trademark has been used during this period.”

Conclusion

Pursuant to Article 6 of the IPC, relative grounds for refusal in trademark registration are examined by the Office in accordance with the objection of the relevant persons. Especially the likelihood of confusion, the well-known status of the trademark, prior right owner principle and applications made in bad faith are the issues put forward by the relevant persons within the scope of the relative grounds of refusal and frequently evaluated by the Office.

[1] Çolak, Uğur: “Türk Marka Hukuku”, 4th ed., 2018, p. 226.

[2] CC Assembly of Civil Chambers, E. 2012/111569, K. 2013/750, 22.05.2013.

[3] The Manual Concerning Opposition – Identity and Likelihood of Confusion, Part 2.3, p. 18.

[4] 11. CC, E. 2007/11742, K. 2009/741, 26.11.2009.

[5] Çolak, p. 232.

[6] 11. CC, E. 2006/11719, K. 2007/372, 18.01.2007.

[7] Article 6 bis of the Paris Convention regulates that well-known trademarks cannot be registered without the consent of the trademark owner.

[8] 11. CC, E. 2009/10326, K. 2011/9106, 20.07.2011.

[9] 11. CC, E. 2011/777, K. 2012/9254, 30.05.2012.

[10] Çolak, p. 405.

All rights of this article are reserved. This article may not be used, reproduced, copied, published, distributed, or otherwise disseminated without quotation or Erdem & Erdem Law Firm's written consent. Any content created without citing the resource or Erdem & Erdem Law Firm’s written consent is regularly tracked, and legal action will be taken in case of violation.

Other Contents

Newsletter Articles
The Rule of the Inalienability of the Author's Moral Rights

The relationship between the author and the product of their creative activity is protected by moral rights. The moral rights of the author set out in the Intellectual and Artistic Works Act numbered 5846 (“IAWA”) include the authority to disclose the work to the public, the authority to designate the name...

Intellectual Property Law 30.06.2022
Newsletter Articles
Evaluation of the Decisions of the 11th Civil Chamber of the Court of Cassation on the Similarity of Trademarks in 2022

The Court of Cassation has evaluated the criteria related to the similarity of the trademark in all of these decisions, and while showing how the criteria will be applied, it has also helped to determine the boundaries of the term “likelihood of confusion”. In this article, four different 2022 decisions...

Intellectual Property Law 30.06.2022
Newsletter Articles
NFTs In Terms of Intellectual Property Law

The right to property, which is one of the concepts and values underlying the liberal economic and legal system, regulates the ownership relationship between the person and goods. The scope of the term “goods,” which is the subject of the concept of property...

Intellectual Property Law February 2022
Newsletter Articles
Protection and Registration of Designs
Intellectual Property Law June 2021
Newsletter Articles
Assignment of the Author’s Economic Rights
Intellectual Property Law April 2021
Newsletter Articles
Protection of Trade Secrets
Intellectual Property Law December 2020
Newsletter Articles
Trademark License Agreements
Intellectual Property Law October 2020
Newsletter Articles
Absolute Grounds for Refusal in Trademark Registration
Intellectual Property Law November 2019
Newsletter Articles
Newsletter Articles
Genuine Use of the Trademarks
Intellectual Property Law March 2019
Newsletter Articles
Coexistence Agreements
Intellectual Property Law December 2018
Newsletter Articles
Malicious Registration within the Scope of Trademark Law
Intellectual Property Law August 2018
Newsletter Articles
Possibilities and the Results of Trademark Confusion
Intellectual Property Law April 2018
Newsletter Articles
Employee Inventions
Intellectual Property Law January 2018
Newsletter Articles
Trademark Right Infringements on the Internet
Intellectual Property Law August 2017
Newsletter Articles
Patent Rights under Industrial Property Law
Intellectual Property Law May 2017
Newsletter Articles
Intellectual Property Rights of the Employers
Intellectual Property Law April 2017
Newsletter Articles
Trade Mark Rights under Industrial Property Law
Intellectual Property Law January 2017
Newsletter Articles
Industrial Property Law Bill
Intellectual Property Law June 2016

For creative legal solutions, please contact us.