Likelihood of Confusion in Trademark Law
The Industrial Property Law w.no.6769 (IPL) makes a definition for the trademark as any sign capable of distinguishing the goods or services of one enterprise from the goods or services of other enterprises. According to this definition, there are two essential elements in the concept of the trademark. The first of these elements is “distinctive character,” and the second is “all kinds of signs." The distinctive character means trademarks’ differences between them, and it prevents the confusion of products belonging to enterprises by consumers. According to Article 5/1 (ç) of IPL, signs which are identical to or indistinguishably similar to a trademark, which has been previously registered, or which has been applied for registration shall not be registered as a trademark. The aim of regulations is to prevent consumers from confusing trademarks.
In the Supreme Court decisions and doctrine, the existence of two elements is sought in order to reveal the possibility of confusion of the trademarks. These elements are;
● Whether the trademarks are identical/similar,
● Whether the trademarks are used in the same/similar classes of goods and services.
The fact that trademarks are identical means that there are no differences between the trademarks. The fact that trademarks are confusingly similar means that there are small differences between trademarks that cannot be noticed at first glance. The similarity assessment is based on the average consumer that the trademark addresses.
In the assessment of the likelihood of confusion, trademarks are also required to be in the same or similar classes of goods and services. For example, it is not an expected situation under normal conditions that blending a clothing trademark with the trademark used for meat products. The exception of this rule is that the well-known trademarks. Even if the application is filed for different goods or services, if; (i) there is the unfair benefit of the well-known trademark from the recognition level reached in the society, (ii) its reputation will be harm, or (iii) its distinctive character will be damaged, the new application may be rejected.
According to the IPL, the likelihood of confusion is stipulated as an absolute ground for refusal in article 5/1 (d) of the IPL and as a relative grounds for refusal in Article 6/1 of the IPL. In this regard, it is intended to prevent the registration of a second trademark, which may be confused with a trademark previously registered or has been applied for registration.
In the event that a trademark is registered despite the existence of absolute and relative grounds for refusal, the relevant person may request from the Court the invalidation of the trademark. The registered trademark holder may also request from the Court to prevent infringement action in case of using a mark from the same or similar class of goods. When two trademarks are likely to be confusion, deliberate behavior and harm are not necessary for the previous trademark holder to resort to these means.
If the trademark is unregistered, the protection can also be provided in accordance with the provisions of unfair competition in the Turkish Commercial Code. Unfair competition provisions may be applied against the holders of enterprises if they put their goods or services on the market by confusing them with another trademark.
In addition to the aforementioned remedies, a penal arrangement is regulated in Article 30 of the IPL: “A person who produces or provides services, puts on the market or sales, imports or exports, buys for commercial purposes, possesses, transports or stores, while infringing a trademark right through quotation or likelihood of confusion, shall be sentenced from one year to three years of imprisonment and punished with judicial fine up to twenty thousand days.” However, for the implementation of this article, the trademark must be registered in Turkey.
The above-mentioned confusion conditions should be considered specifically in each concrete case, and according to the results of the evaluation, it should be applied to legal remedies to prevent confusion.