Within the established practice of the Turkish Patent and Trademark Office (“TPTO”), the similarity test between the trademarks consisting of a combination of word and device elements has always been an arguable topic. Particularly, the approach on whether the combination marks which only differ in figurative elements but coincide in identical word elements should be rejected on the basis of the absolute grounds for refusal or whether they should pass the ex officio examination but may only be rejected on the basis of relative grounds for refusal if there is a third party opposition has always been a topic open to different views and interpretation.
The TPTO has been generally inclined to disregard the device elements of trademarks and examine similar trademarks that are composed of both device and word elements by almost only focusing on the word element in the event that the word elements are identical. Such approach has triggered a high number of ex officio refusal decisions since the examiners mostly do not evaluate the difference created by the figurative elements of combination marks sufficient enough to differentiate the trademarks even at the stage of absolute refusal ground examination. Yet, in principle, a very high threshold should be applied to trademark examinations within the scope of absolute refusal grounds pursuant to Article 5(1)(ç) of the Industrial Property Law (formerly Article 7/1(b) of the Decree Law No. 556) since it shall only cover identical or indistinguishably similar trademarks for the same or same type of goods or services. In line with these provisions, the TPTO examiners are required to only reject an application at the first examination stage on the absolute grounds of refusal if the applied trademark is identical or indistinguishably similar to an earlier trademark and seeks to be registered for the same or same type of goods or services.
TPTO’s implementation has been criticized for years and most of the times a correct implementation was only achievable at the court level when the decisions of the TPTO were challenged. The Intellectual Property Court and the Court of Appeals were overruling TPTO’s decisions stating that device elements shall also be included in absolute grounds of refusal examinations and trademarks coinciding only in word elements despite figurative differences shall not always be considered as identical or indistinguishably similar on the absolute grounds of refusal.
A recent decision has revealed that the TPTO is now inclined to reiterate its established precedent. Lately, “” trademark application was refused due to Article 7/1(b) of the Decree Law numbered 556 by the trademark examiner as only the word elements of “BERG” were taken into account and the remaining figurative differences were ignored. The later dated trademark application was found identical or indistinguishably similar with the earlier “” trademark. The decision of the Trademarks Department Directorate was indicating a broader interpretation of the Article 7/1(b) and was clearly putting forward TPTO’s ignorance of the device element. Yet, after an appeal arguing that the absolute refusal grounds shall be adopted narrowly by the TPTO and that the device elements shall also be taken into consideration while comparing similar trademarks; a promising and positive decision was issued by the Re-Examination and Re-Evaluation Board (REEB) of the TPTO.
On the aforementioned decision; REEB thoroughly discussed the definitions and differences between the concepts of “being identical” and “being indistinguishably similar” in terms of trademark comparison. The REEB stated that trademarks in comparison may only be accepted as “identical” if they are the exact copies of one another and that trademarks with even minor differences shall not be classified as “identical”. Also, on the subject decision, REEB follows “In other words, the concept of “indistinguishable similarity” means that a trademark application is not completely identical with the earlier dated trademark registration, but is “identical to the extent of not being differentiable at first glance” where the similarity condition shall not even need to be proved and such trademarks bear phrases or figures where the differences could be only noticed after an in-depth examination. In this regard, in order to implement the Article 7/1(b), the similarity between the trademarks should be strong and evident to a degree which renders an additional examination unnecessary.”
By taking into consideration the general principles clearly listed on the decision, the REEB ruled to acceptance of the appeal on the grounds that the “” trademark application does not bear a strong resemblance so that an additional examination would be unnecessary and concludes that the trademarks in comparison differ in terms of visual general perception as per the absolute grounds of refusal.
In this manner, the REEB clearly revealed that the examiner of the Trademarks Department Directorate had a very strict and inaccurate understanding of the Article 7/1(b) of the Decree Law numbered 556. Going forward; this decision was of critical importance since it clearly reflected the logic behind an ideal examination on the basis of absolute grounds of refusal particularly for combination marks and we hope that the implementation of the TPTO will progress consistently in this direction.