If a trademark includes more than one element, the main element must be sufficiently different
Işık Özdoğan, March 2005 / INTA Bulletin

The Turkish Supreme Court, in its decision dated May 5, 2003 case no. 2002/12018, once again clarified what a mark must have to be considered trademark.

In a case reviewed by the Supreme Court, the plaintiff claimed that his trademark “PORT” was registered in class 25 on 27.05.1994 before the Turkish Patent Institute and that he has opposed the defendant’s application for the registration of the defendant’s trademark “INTERPORT”. Upon refusal of his opposition by the Institute, the plaintiff appealed the case to the Re-examination and Re-evaluation Board, the second and ultimate administrative institution to decide about oppositions, but all the plaintiff’s claims were refused on appeal by the Board. Afterward, the plaintiff applied to the First Instance Court for the annulment of the Institute’s and the Board’s decisions on the grounds that the trademark INTERPORT has no distinctive quality from the trademark PORT. The First Instance Court has also refused the defendant’s claims.

On appeal, the Supreme Court has decided that the root and common word in both trademarks is “PORT”. Furthermore, the Supreme Court stated that this word is confusingly similar, for an average person, to plaintiff’s earlier registered trademark in terms of spelling, pronunciation and appearance and that the word “INTER” is not sufficient to give this mark a distinctive character. The Supreme Court added that the defendant chose this word to gain unfair advantage from the plaintiff’s trademark.

As a result, the Supreme Court annulled the Turkish Patent Institute’s and the Re-examination and Re-evaluation Board’s decisions, which had paved the way to the registration of the defendant’s trademark INTERPORT. This is because if a trademark includes more than one element ( i.e. words, letters, numbers etc.), the main element must be sufficiently different so as to make a distinct impression on the viewer.

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