Turkish court of appeal clarifies under what conditions a senior trademark/ trademark application can constitute a bar for a trademark application where there is no opposition

With its decision rendered in February 2012, the Court of Appeal has established and solidified the difference of scope and implementation between Articles 7/1(b) and 8/1(b) of the Turkish Decree Law numbered 556 pertaining to the Protection of Trademarks. Article 7/1(b) provides to the Turkish Patent Institute (“TPI”) the right to reject ex-officio trademark applications identical to or indistinguishably similar with senior trademarks or trademark applications. Whereas Article 8/1(b) foresees the rejection of confusingly similar trademark applications upon the opposition of prior right owners.

In its decision numbered 2010/10214E., the 11^th Civil Chamber of the Court of Appeal has concluded that the trademark application “SELEX” cannot be rejected per Article 7/1(b) of the Decree Law due to the trademarks “SSSS+SSSSELEKSSSS” and “SELEKS KARGO, SELEKS LOJİSTİK – SELX CARGO SELX LOGISTICS”. The Court of Appeal has stated that the term “indistinguishably similar” present in the article means that the signs are perceived as identical since the differences between the compared signs are so low that the general impression left on the average consumer buying the relevant good or service will not be taken into consideration.

As a result, when the examination in terms of Article 7 is conducted by the TPI, if there is a similarity requiring the assessment whether there will be likelihood between the signs among average consumers, it should not be possible to reject the application ex-officio due to “indistinguishable similarity”, since this cannot count as an acceptance in advance of a strong and clear likelihood between the signs. The Court of Appeal has repeated that if the examination also requires taking into account the determination whether there is likelihood of confusion between the signs among average consumers, then one cannot argue that there is indistinguishable similarity between the signs.

Turkey is one of the few countries in Europe where senior trademarks/trademark applications registered for the same goods constitute an ex-officio bar for the registration of junior trademark applications even in the case proprietor of the senior trademark/trademark application provides a letter of consent.  It is hoped that the decision will affect the current rigid practice of the TPI and the number of applications rejected based on Article 7/1(b) will gradually decrease.

Uğur Aktekin
Güldeniz Doğan