How to Perform Similarity Analysis in Trademark Registration?

In the case of a trademark registration application, if it can be determined that the subject trademark is similar to goods or services that have been previously registered or applied for registration, it will be rejected in accordance with Article 5 of the Industrial Property Law No. 6769.

According to the Industrial Property Law, the criterion for similarity of trademarks is defined as "signs that are identical or indistinguishably similar to trademarks that have been registered or applied for in the past in connection with the same or similar goods or services." Among registered trademarks, unless they are canceled, it is not possible for other individuals or legal entities to use and register them for the same type of goods.

What Are the Signs of Similarity Between Trademarks?

The criteria for the similarity of trademarks and their distinctive features are not explicitly stated in the Industrial Property Law during the trademark registration application. Therefore, examinations of similarity between trademarks are conducted after a detailed analysis of the criteria provided in court decisions and the "Trademark Examination Guide" published by the Turkish Patent and Trademark Office. Similarity in trademarks can be observed in cases of "identity" or "similarity to identity." In this context, "identity" implies that the elements that create trademarks are entirely the same, whereas "similarity to identity" indicates a level of resemblance where they cannot be distinguished.

In a general sense, a trademark signifies distinctive characteristics of a product or service that differentiate it from others. The Industrial Property Law Article 4 outlines which signs can constitute a trademark. Therefore, a trademark can encompass various types of signs, including words, colors, shapes, sounds, numbers, and the packaging of goods, among others, provided that it is capable of distinguishing one product or service from others and is presented in a clear and definite manner in the registry, as long as it ensures the protection afforded to the trademark owner.

Trademarks serve as tools for distinguishing businesses from one another and for attracting consumer preference through the reputation they establish. Consequently, conducting similarity assessments is crucial in terms of competition among trademarks. However, as the types of signs that can constitute trademarks are defined in the Industrial Property Law, the criteria for similarity between trademarks are not explicitly specified. Therefore, conducting a thorough analysis of similarity between trademarks is important.

How is the Similarity Assessment Conducted?

The similarity assessment is conducted as follows:

• For one brand to be considered identical to another, every element constituting the brands must be entirely the same. Even if the dimensions are different or the word marks have different fonts or character styles, the brands are not considered identical as long as all elements that make up the brands are not exactly the same.
• If the word or design elements of the brands are the same but secondary elements in one of the brands are applied differently, these brands are not considered identical. However, they may still undergo an examination to determine if the similarity is such that they cannot be distinguished.
• In cases where all elements of two brands are identical but their arrangement and positioning within the brands are different, the brands should still undergo an examination to determine if they are identical or if the similarity is such that they cannot be distinguished.
• Even if every detail of the brands, including the arrangement of these details within the brand, is the same, if the dominant elements of the compared brands undergo changes, the brands are not considered identical. However, it is recommended that they undergo an examination to determine if the similarity is such that they cannot be distinguished.

How is the Assessment of Indistinguishable Similarity (Near Identity) Conducted?

In cases of indistinguishable similarity, it should be noted that although the compared signs are not identical, the impressions they leave on average consumers are nearly identical.

The 11th Civil Chamber of the Court of Cassation has fully defined the scope of Article 5/1 (c) with its jurisprudence dated 12.10.2010 and numbered 2008/14092 E. 2010/10118 K. The principles set forth in this particular decision of the Court of Cassation can be considered as precedent both in many other decisions of the Court of Cassation and in the decisions of First Instance Courts. In reaching the conclusion of indistinguishable similarity, the Court of Cassation has considered the impressions left on the consumer as a whole, taking into account all the signs compared as a whole.

Accordingly, after evaluating the overall impression created by the graphic designs, shape, or word elements of the compared marks along with their mixed features, appearance, writing, and style of arrangement, the identified similarity resulting from this general impression should be clear and strong enough to render an assessment against the likelihood of confusion unnecessary. Otherwise, a rejection situation under Article 5/1 (c) of the Industrial Property Law will not arise.

In order for the acceptance of indistinguishable similarity, the relevant consumer must clearly and unequivocally perceive this similarity based on the signs subject to comparison without the need for any examination or research among them.

According to the decision of the Court of Cassation, in order for a situation of indistinguishable similarity to be considered, it is crucial to take into account the mixed qualities of the marks in terms of their shapes and expressions, as well as the impressions they leave on the consumer in terms of spelling, appearance, and arrangement.

For marks to be registered independently or to enable the differentiation of goods and services from others, the protection provided to the trademark owner should be clearly and explicitly displayed in the registry in a way that allows for a clear understanding. However, it is still necessary to undergo a similarity examination conducted by the Turkish Patent and Trademark Office (TPTO).

Trademark registration requests that do not meet the mentioned criteria and cannot satisfy similarity examinations that are not limited to TPMK will be rejected by the TPMK, and trademark owners whose registration requests are rejected can exercise their rights by objecting in accordance with Article 20 of the Industrial Property Law.

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