Jurisdiction: Turkey
Subject Heading: I.D.1. Similarity of Marks
Case Name and Citation:

TEKNOVET ILAÇ SANAYI VE TICARET LIMITED ŞIRKETI vs TURKISH PATENT INSTITUTE & CEVA SANTE ANIMALE Case No. 2009/243; Decision No.2011/6 (3rd Ankara Court of Intellectual and Industrial Rights)





Marks Associated with Goods/Services:

Plaintiff's trademark application no.2007/67132 “SPIROTEK” covering goods in class 5 and defendant’s trademark registrations no.2006 03329 “SPIROVET” registered in class 05.

Nature of Case:

Court action instituted for the withdrawal of the TPI’s decision of refusal of the trademark application no.2007/67132 upon acceptance of defendant’s (CEVA SANTE) opposition.

Prior Decisions:

CEVA SANTE’s opposition filed against plaintiff’s application was rejected by the Institute. However upon CEVA SANTE’s objection against the refusal of its opposition before the Higher Council, the trademark application SPIROTEK was partially rejected for “Medication for human and animal health; chemical products and elements for medical purposes…” Therefore the applicant has filed subject court action asking the withdrawal of the TPI’s administrative decision as the final legal step.

Overview of Decision and Ruling:

The plaintiff claimed that:
- the trademark SPIROTEK has been composed by the prefix “SPIRO” which stands for “SPIRAMYSIN” which is INN name and for the second part by the suffix “TEK” which originates from its tradename “TEKNOVET”;
- the pharmaceuticals are being sold through pharmacists and/or under doctor’s supervision
- the packaging of goods are different
and requested from the Court to order for the withdrawal of the TPI’s decision and registration of their application.

The defendant TPI underlining that the only difference between subject trademarks are “T-K” letters replaced with “V-T” and the dominant part of the subject trademarks is the common SPIRO denomination requested from the Court to reject the action

The defendant CEVA SANTE asserted that:
- SPIROVET comprising SPIRAMYSIN as the active substance, is used in medication for animal health
- Trademarks SPIROTEK and SPIROVET composed of 8 letters (6 of them are in the same line) and 3 syllables, written in simple format, bearing non-other dominant characters are indistinguishable in their entirety and
- Since both trademarks are used against the non-prescription drugs, target consumer should be accepted as average consumer,
and asked the rejection of the action.

In the expert’s report issued during the action, it has been stated that CEVA SANTE’s trademark including of SPYRAMISIN is especially used as a veterinary drug, and both trademarks which will be used in respect of the goods including the same active substance will be absolutely used for prescriptive drugs.

In the light of the technical expert report and the evidences submitted, the Court has determined that:
- CEVA SANTE’s trademark SPIROVET bearing the denomination SPIRO referring to the active substance SPYRAMISIN has not a strong distinctiveness and other actors of the same sector are allowed to overcome this prior trademark by small changes/ additional elements.
- Target consumer of the subject trademarks are physicians and/or professionals having sound knowledge concerning the uses purposes, applications rules and active substances of the subject goods and
decided that there is no risk of confusion between the trademarks.

The court has ruled to the partial acceptance of the court action by withdrawing TPI’s decision concerning the partial rejection of the plaintiff’s trademark.

Importance of Case:

Although there is a little difference between the trademarks composed of 6 common letters in the same line up, the Court taking into consideration that the common part of the trademarks refers to the INN name SPYRAMISIN and that trademark’s target consumer are experts and professionals having sound knowledge, has decided that this little difference will be sufficient to avoid the risk of confusion between the trademarks.


Contributing Firm: Deris Attorneys At Law Partnership