(HGK., E. 2017/73 K. 2017/1048 T., May 31, 2017)
A decision last year from the highest body within the Turkish Court of Appeal system held that the addition of a house mark does not mitigate likelihood of confusion.
The conflict began when a major Turkish food and beverage company called Tamek Gida ve Konsantre (translation: Tamek Food and Concentrate) filed an application in Class 32 for the mark TAMEK FRUITY, which combined its house mark TAMEK and the (rather descriptive) beverage product name FRUITY. Another major Turkish beverage company called Uludağ Maden Sulari Türk (translation: Uludağ Turkish Mineral Water) opposed, claiming that Tamek’s mark is confusingly similar to the opponent’s prior registrations for in the same class.
The Turkish Patent and Trademark Office (“TPTO”) rejected the opposition, so Uludağ filed a lawsuit seeking to overturn the TPTO’s decision. In response, Tamek and the TPTO sought dismissal of the suit, arguing that Uludağ’s trademark lacked distinctiveness. The Court of First Instance sided with Tamek, reasoning that the dominant and distinctive element of Tamek’s mark is the TAMEK house mark, thus rendering the parties’ trademarks different overall.
Uludağ appealed to the Court of Cassation, which overruled the Court of First Instance’s decision. In its appeal, Uludağ argued that both Tamek’s house mark and the product name FRUITY should be considered dominant, and the Court of Cassation agreed, finding likelihood of confusion. However, when the case was sent back to the Court of First Instance for re-examination, the court stood by its earlier decision in favor of Tamek. Therefore, the case was escalated again, this time to the highest body within the Court of Cassation, the Assembly of Civil Chambers (“Assembly”).
In bringing the saga to a close, the Assembly agreed with the Court of Cassation’s decision in favor of Uludağ, thus confirming the similarity between the parties’ marks despite Tamek’s inclusion of its house mark, and apparently despite the descriptiveness of the term FRUTTI/FRUITY. In this case, Tamek’s house mark and product name were presented in the same font stylization and typeface size, so the Assembly found that both elements of the mark were dominant; in other words, no particular weight was given to the TAMEK house mark in comparison to the FRUITY element. The fact that the parties’ marks covered the same class also supported a finding of likelihood of confusion.
This decision illustrates the current view of Turkish trademark practice, which is that the addition of a house mark does not necessarily render the house mark more dominant than the other element(s) of the mark. Applicants in Turkey should thus take care to choose distinctive marks, as they cannot rely on a house mark to avoid citation or opposition. (Whether the result would have been different in a trademark infringement lawsuit is unknown.) It is particularly interesting to note that in this case, the common element between the two marks was FRUTTI/FRUITY, a descriptive term. However, this did not seem to influence the Court’s decision to deem the product name element just as dominant as the TAMEK house mark.