Under Article 5(1)(ç) of Industrial Property Code No. 6769, concerning absolute grounds for refusal in trademark registration, “signs identical to, or indistinguishably similar from, a trademark that has been registered — or for which an earlier application has been filed — in relation to the same or the same type of goods or services” shall not be registered as a trademark.
This provision requires the simultaneous presence of two conditions:
The goods and/or services must be identical or of the same type.
The marks must be identical or indistinguishably similar.
Where both conditions are met together, the later-filed application is refused, in part or in whole, in respect of the overlapping goods and/or services.
“Identical” marks are those that are visually identical to one another, containing no elements enabling consumers to tell them apart; differences in typeface or colour do not alter the assessment of “identity.” Marks that are “indistinguishably similar” are those whose differences would not be noticed easily, or at first glance, by the average consumer — in other words, differences that are negligible in significance. In such cases, despite the differences between the marks, the consumer will assume that the goods or services bearing them originate from the same person and/or undertaking.
As to whether goods and/or services are identical or of the same type: goods/services falling within the same group under the Classification Communiqué are considered identical or of the same type.
THE CORRESPONDING PROVISION UNDER DECREE-LAW NO. 556 WAS AS FOLLOWS:
Under Article 7(1)(b) of Decree-Law No. 556, concerning absolute grounds for refusal in trademark registration, “trademarks identical to, or indistinguishably similar from, a trademark registered — or for which an earlier application has been filed — for the same or the same type of goods or services” could not be registered as a trademark.
Article 7(1)(b) of Decree-Law No. 556 likewise required two conditions together: the goods and/or services must be identical or of the same type; and the marks must be identical or indistinguishably similar. Where both conditions are met together, the later-filed application is refused, in part or in whole, in respect of the overlapping goods and/or services.
As to whether goods and/or services are identical or of the same type: goods/services falling within the same group under the Classification Communiqué are considered identical or of the same type. Article 4 of the relevant Communiqué provided that “in determining goods or services of the same type under Article 7(1)(b) of Decree-Law No. 556, the groups listed in the annexed schedule are taken as a basis. However, the Institute may, when examining trademark applications or oppositions, assess these groups more broadly to include narrower or different groups of goods or services when determining goods or services of the same type.”
The broader assessments applied in the context of relative grounds are not applicable here. For instance, where relative grounds are being assessed and word marks are at issue, what is protected is the word itself — whether written in upper or lower case is immaterial; what is protected is the word, not the manner in which it is written.
Written by: Deniz Çelikel • Patent and Trademark Attorney
This text is drawn from expert witness reports prepared by Deniz ÇELİKEL since 2010.
