The Turkish Court of Appeal has overturned lower court decisions in a case concerning likelihood of confusion between trade marks sharing a common weak element. Güldeniz Doğan Alkan and Ayşenur Çıtak explain.

Origins of the dispute

Türkiye İş Bankası A.Ş., which is a popular bank and holder of the well-known trade mark Türkiye İş Bankası in Turkey, filed an application for the mark shown on the right in classes 9 and 36.

An opposition was filed against the application relying on the prior registered trade mark CEPMATIK in class 9. The Turkish Patent and Trademark Office partially accepted the opposition for goods in class 9. İş Bankası filed an action for the cancellation of the Office's final decision, arguing that the trade marks are not similar and there is no likelihood of confusion.

Before passing to the details of the case, it should be noted that CEPMATIK can be directly translated to English as MOBILEMATIC. As explained on the website of İş Bankası, İşCepMatik is a new generation ATM allowing cardless cash withdrawal & cash deposit using a smartphone (detailed information can be seen here).

Lower court rulings

The first instance IP Court determined that the main and distinctive element of the parties’ trade marks is the CEPMATIK phrase. It stated that the average consumer of goods in class 9 would inevitably associate the trade marks due to the indistinguishable similarity between their main elements and they would perceive them as serial trade marks. As a result, the IP Court decided to dismsiss the case (Ankara 2nd IP Court, Merit No: 2916/284 E., Decision No: 2017/202 K., Decision Date: May 11, 2017).

İş Bankası appealed the decision before the District Court and the appeal was rejected (20th Civil Chamber of Ankara District Court, Merit No: 2018/299 E., Decision No: 2018/995 K., Decision Date: October 04, 2018). The matter was finally reviewed by the Court of Appeal upon further appeal.

Decision of the Court of Appeal

The Court of Appeal considered the mark Cepmatik to be a weak trade mark. Also, it pointed out that the subject application includes the well-known Türkiye İş Bankası and İş trademarks. Considering the existence of these well-known trade marks, the Court considered that the application is sufficiently differentiated from the prior trade mark CEPMATIK.

The Court of Appeal further explained that it is not possible for average consumers of goods in class 9 to incline to goods bearing the disputed trade mark even if their aim is to buy goods bearing the prior CEPMATİK trade mark. Therefore, the Court of Appeals concluded that there is no likelihood of confusion between the marks (11th Civil Chamber of Court Of Appeals, Merit No: 2018/5860 E., Decision No: 2019/7003 K., Decision Date: November 11, 2019).

As a result of this assessment, the Court of Appeal overturned the lower courts’ decisions and the case was sent back to the IP Court. As to the next steps, a trial will be opened for the case and the IP Court will decide whether to comply with the Court of Appeal’s ruling or not.

Comprehensive evaluation

The decision of the Court of Appeal shows that likelihood of confusion between trade marks should be evaluated comprehensively, especially if the contested phrase includes additional well-known trade marks as an element. Therefore, one common phrase is not sufficient for trade marks to be confused, even if it is the main element in the mark. 

However, in another earlier dispute, the Court of Appeal’s Assembly of Civil Chambers ruled that there the application Blue diamond & device is similar to earlier trade mark DIAMOND & device, disregarding the weakness of the prior registered trade mark. In this decision, the Court of Appeal ignored other additional elements. But we can assume that, based on its recent decision, the Court of Appeal takes into consideration the weakness or descriptiveness of the main element of the earlier trade mark.

Güldeniz Doğan Alkan and Ayşenur Çıtak of Gün + Partners, a MARQUES member