Jurisdiction: Turkey
Subject Heading: Similarity of Marks
Case Name and Citation:

1- (4th Ankara Court of Intellectual and Industrial Rights, Case No. 2011/431- Decision No.2012/28, March 14, 2012)
2- (Supreme Court 11th Civil Chamber, Decision No: E.2009/13331- 2011/5967, May 16, 2011)





Marks Associated with Goods/Services:

The plaintiff has sought to register in Turkey the trademark PLIAZON through international application No: 826998 in respect of “Pharmaceutical preparations for human use in the field of oncology” in class 05.

The defendant (2) ÝSTANBUL GALENOS ECZ DEPOSU TÝCARET VE SANAYÝ AÞ is the registrant of the trademark reg. no: 2003/02736 for PIOZON trademark registered in respect of all goods in sub-classes of classes 05, 16 and 35.

Nature of Case:

The action has been instituted for the withdrawal of the final decision of the Turkish Patent Institute where the application of PLIAZON trademark was rejected due to prior registration for PIOZON trademark on the basis of undistinguishable similarity.

Prior Decisions:

The Defendant’s opposition against the publication of PLIAZON trademark application based on his prior PIZON trademark was accepted by the Turkish Patent Institute due to similarity of trademarks in the sense Article 8/1(b)1, Decree-Law no. 556 For Protection of Trademarks. Upon objection against this refusal decision Higher Council of the Turkish Patent Institute upheld that the trademarks in question are similar, accordingly the application of PLIAZON trademark would be rejected.

Overview of Decision and Ruling:

The plaintiff has asserted the following points in his petition:
- The importance of consumers which the trademarks address is an essential point in the evaluation of the similarity
- The applied PLIAZON trademark is the name of a drug which would be used in the treatment of cancer and therefore does have to be sold with prescription necessarily
- ZON indication has a weak distinctive character, therefore the holder of a trademark which is bearing such an indication must bear the consequences of it.
- The usage are of the trademarks in question namely the drugs are different
and requested the cancellation of the Higher Council Decision ruling that the PLIAZON and PIOZON trademarks are indistinguishably similar to each other.

The First defendant THE TURKISH PATENT INSTITUTE’s petition against the above assertions has been motivated in that:
- The trademarks in question are similar to each other in the sense of Article 8/b(1)
- The specifications covered by the trademarks are identical and similar
- The similarity does not arise from a use of an active substance of the drugs in question as an indication
- The trademarks in question may lead even the doctors and pharmacist who do pay high attention to confusion
therefore the prior decision of Higher Council is well-grounded and the present case must be rejected.

The second defendant GALENOS put forward in his petition that:
- The trademark of the plaintiff is indistinguishably similar to his prior trademark due to covering same specifications
- The similarity between trademarks may lead the consumers to confusion, therefore there is likelihood of confusion.

In the light of the evidences submitted by the parties and of the experts report which are in plaintiff’s favor, The 1st Instance Court contrary to the conclusions of the Experts report retained that:
- since the PLIAZON trademark is applied for “Pharmaceutical preparations for human use in the field of oncology” goods in class 05 and the prior PIOZON trademark is registered in all sub-classes of 05, 16 and 35, the trademarks overlaps in the first sub-classes of class 05.
- the trademarks in question are not identical but similar in the sense of Article 8/1(b) in respect of visual and phonetic aspects due to common initial P letter and last three ZON letters as well as two letter difference of L and A.
- the consumers may consider that the trademarks belong to the same or associated company
- even though PLIAZON trademark is applied for the “Pharmaceutical preparations for human use in the field of oncology”, it has revealed that there is no application for any regulatory authorization for both PLIAZON and PIOZON trademarks before the Ministry of Health, accordingly the active ingredients of the drugs are not known. Moreover, the PIOZON trademark is registered for the all sub-classes in class 05, it was not determined that on which drugs the trademark would be used.
- despite the fact that the trademarks used on drugs are firstly subject to authorization by the Ministry of Health and then sold through pharmacists upon prescription written by doctors, there is no special regulation or provision for this practice in the Article 8/b of the Decree-Law no. 556 for the protection of the trademarks, so this fact can not be a point to be taken into consideration for assessing similarity.
- the ZON indication is not a weak indication since such a weakness is only acceptable on the condition that a trademark consist of an indication which indicates an active substance in the drug.
- to oblige the doctors, pharmacist and the patients to pay high attention in distinguishing the trademarks does not comply with the “distinctiveness” function of the trademark while there are no technical necessities and there are many options in choosing another distinctive indication.
and ruled that there is likelihood of confusion between the trademarks PLIAZON and PIOZON thus upholding the TPI’s decision of refusal.

The decision was appealed by the plaintiff and the Supreme Court with its decision (2) overturned the decision of the 1st Instance Court on grounds that:
- since PLIAZON trademark would be used on drugs used in the treatment of cancer, it is not possible for such a drug to be sold without control of doctor and without prescription. In this respect its use can not be subject to same conditions as for non-prescription drugs.
- In accordance with the above-mentioned point, it was determined in two experts reports that there is no likelihood of confusion between the trademarks in taking into account the involvement of doctors and pharmacists in the choice and use of the drugs under the trademark PLIAZON.

Upon the reverse of the judgment, the First Instant Court upheld in compliance with the Supreme Court decision and ruled the cancellation of subject Higher Council decision and the continuation of the application process of PLIAZON trademark since there is not a indistinguishable similarity between PLIAZON and PIOZON trademark.

Importance of Case:

This case is important because according to the current practice of Turkish Trademark Law, similarity of goods and services is evaluated on the basis of sub-classes. In other words, even though the goods and services are different, they are deemed similar in case they fall under the same subclasses. With this decision, the Court ruled that even though the goods of PLIAZON trademark, “Pharmaceutical preparations for human use in the field of oncology” fall under the first sub-class of class 05 which was covered wholly by PIOZON trademark, the goods of the trademark must not be evaluated as similar considering the fact that the drugs for treatment of cancer can only be bought upon prescription written by doctors.

1 Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions:

b)Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing.