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In many countries, absolute grounds for trademark refusal covers only the obstacles causing refusal based on the mark’s own features and public interest. Earlier marks are not stated in these grounds.
This is why many of our clients are confused when they learn the following: earlier marks can be cited against their application during absolute grounds examination by the Turkish Patent and Trademark Office (TPTO) and that, even if the clients pass the examination successfully, the owner of those earlier marks may then successfully oppose the later application.
Naturally, the clients question that if the marks are not found confusingly similar by the TPTO in ex officio examination, then how come a previous owner can succeed in opposition proceedings by using exactly the same mark that is not found similar to their application before.
"Likelihood of confusion cannot be evaluated at the preliminary examination stage but only upon a third party opposition."
In Turkey, we have quite an interesting position because earlier marks are indicated among absolute grounds and also in relative grounds. This was the case during our former Trademark Decree Law no 556 and the same system kept in our New IP Code no 6769, which has been in force since January 2017.
According to the Turkish IP Code no 6769, similarity of a later mark to the prior marks and similarity of goods/services covered are assessed by the TPTO at two separate stages:
- a) During the ex officio examination pursuant to absolute grounds. The related article 5/1 (c) reads as follows: “Absolute grounds for rejection in trademark registration: Signs which are identical to or indistinguishably similar to a mark which has been registered or has been applied for registration, relating to identical goods/services or to identical type of goods/services shall not be registered.”
- b) During the examination upon third party oppositions in terms of relative grounds where article 6/1 is as follows: “Relative grounds for rejection in trademark registration: An application for the registration of a mark shall be rejected upon an opposition, if there exists likelihood of confusion before the public including the likelihood of association with prior mark, due to identity with or similarity to the prior mark and the identity or similarity of the goods/services covered.”
What is the difference here? Although the wordings of those articles appear alike, the similarity levels sought by them differ: the level sought by article 5/1(c) is higher than that sought by article 6/1.
Making a comparison
In its Examination Guidelines, the TPTO set some rules on how it applies article 5/1(c). For instance, marks must be identical or be perceived as identical and must cover identical goods/services (size, colour, font differences do not affect identicalness of word marks); as long as there is no high level of visual similarity between them, being identical or similar aurally has no importance. If the common word in both marks has a low degree of distinctiveness then, in principle, the marks cannot be regarded as being confusingly similar, etc.
However, to refuse an application upon a third party opposition in terms of article 6/1, it is sufficient that the marks are similar before consumers at the level that may cause likelihood of confusion, or even merely an association with each other.
The main difference between these two comparison procedures is that likelihood of confusion cannot be evaluated at the preliminary examination stage, but only upon a third party opposition.
The following case we have dealt with is a good example of such cases.
We filed an application for the mark ‘Ulus motors’ (word mark) in classes 35, 37 and 39, and the application was partially refused due to a prior figurative mark for ‘Ulus’ in the same classes where some of the services were overlapping.
We objected to the refusal decision and it was accepted by the TPTO. In its decision, the TPTO stated the following:
Since the common element of the marks ‘Ulus’ means ‘nation’ in Turkish, and Ulus is the name of a district in Ankara, the term has a low degree of distinctiveness.
The marks consist of elements other than ‘Ulus’ (a device element and a word element: ‘motors’).
Overall, the marks are neither identical nor indistinguishably similar within the context of article 5/1(c) and this approach is consistent with the Turkish Appeal Court precedents. Likelihood of confusion (before consumers) can be evaluated only upon a third party opposition and the TPTO has no discretion to examine such during ex officio examination.
Ozlem Futman is a founding partner of IP firm OFO Ventura. She can be contacted at: email@example.com
likelihood of confusion, trademark, jurisdiction report, Turkish Patent and Trademark Office, TPTO, Trademark Decree Law, Ozlem Futman, OFO Ventura