A recent decision by the Court of Cassation regarding trademark similarity in the food supplements and vitamins sector offers a different perspective on the criteria for assessing trademark similarity. This decision provides valuable guidance for launching these products in compliance with both trademark law and sector-specific conditions.
Background
The decision of the 11th Civil Chamber of the Court of Cassation ("CoC") dated May 28, 2024 (case no. E. 2023/911, K. 2024/4358), involved a dispute over the similarity between the trademarks "Totalvit" and "Todavit". On April 17, 2019, the applicant filed a trademark application to register "Totalvit" for goods in class 05, including the food supplements. The opponent filed an opposition against the trademark application, arguing that there is a likelihood of confusion between the applicant's trademark and their own registered trademark "Todavit" dated November 22, 2018, in class 05.
The Spanish word "Toda" translates to "Total" in English. Additionally, the term "vit" in both trademarks is commonly understood as an abbreviation for "vitamin." Since vitamins are non-prescription products, available without the need for approval from a doctor or pharmacist, the relevant consumers for these trademarks are not limited to healthcare professionals with high attention to detail. Instead, the general public is considered the target market, which affects the assessment of the likelihood of confusion.
In the decisions issued by the Turkish Patent and Trademark Office ("the Office") Re-Examination and Evaluation Board ("the Board"), the opposition was rejected, citing that there was no likelihood of confusion between the trademarks "Todavit" and "Totalvit".
Court Process
The applicant filed a cancellation action against the Office's decision. The Court of First Instance ruled that there was no likelihood of confusion between the trademarks. The court noted that the term "vit", a common element in both trademarks, has low distinctiveness within the sector. While "Toda" and "Total" are conceptually similar, they differ phonetically. The court also emphasized that "Total" is a more widely recognized term, both nationally and internationally. This decision was also upheld by the Regional Court of Appeals. The plaintiff then appealed, but the Regional Court of Appeals' decision was subsequently approved by the CoC in its ruling dated May 28, 2024.
Legal Opinions
The CoC's decision provides important guidance, particularly for the food supplement sector, by offering a fresh perspective on the criteria for trademark similarity. Traditionally, conceptual similarity has been a primary focus when assessing trademark similarity. However, in this case, a different approach has been taken by emphasizing visual and aural similarities instead.
The Spanish word "Toda" and the English word "Total" have the same meaning, which could potentially cause consumer confusion due to their conceptual similarity. However, the decision does not rely on this conceptual similarity. Instead, it focused on the visual and aural differences between the two trademarks, offering a new perspective on how to assess the likelihood of confusion. This approach marks a departure from the CoC's usual jurisprudence, which suggests that when evaluating similarity and the likelihood of confusion, the "general impression left by trademarks as a whole" should be considered1. The CoC's decision here suggests a more segmented analysis, where the trademarks are broken down into their individual elements.
- The Importance of Visual and Aural Similarities: A particular emphasis was placed on the visual and aural differences between the two trademarks. Although the words "Total" and "Toda" share similar meanings, the phonetic and visual distinctions between them significantly reduce the likelihood of confusion. The Regional Court of Appeals' focus on these differences rather than just conceptual similarities represents a significant shift in trademark evaluation.
- The Phrase "Vit" and the Vitamin Sector: The term "vit" in both trademarks is a common abbreviation, especially in the vitamin sector. The Regional Court of Appeals emphasized that "vit" has low distinctiveness and does not increase the risk of confusion. Since this term is widely used in industry, its presence in the trademarks weakens their distinctiveness, further reducing the likelihood of consumer confusion.
- Consumer Perspective and Sectoral Differences: Vitamins and food supplements are products that can be obtained without a prescription, often without the oversight of a doctor or pharmacist. The Court reasoned that consumers are typically able to differentiate between trademarks based on their visual and aural features. Given that the consumer base for these products is broad, the likelihood of confusion is reduced.
Additionally, in the food supplement sector, proper labelling and naming are essential to ensure accurate consumer information. The distinguishing factors highlighted in the CoC's decision can help reduce confusion in the marketplace and promote clarity for consumers.
Production and Marketing Rules for Food Supplements
In the food supplement sector, various regulations govern the import, production, processing, and marketing of these products. One key regulation in Türkiye is the Regulation on Import, Production, Processing and Launching of Food Supplements which specifies that the Turkish Food Codex Regulation on Labelling and Provision of Food Information to Consumers ("Labelling Regulation") applies to the labelling of such products.
The Labelling Regulation aims to ensure that consumers receive clear, accurate, and understandable information about a product's content. It mandates specific details that must appear on product labels to ensure both safety and quality, enabling consumers to make informed choices. A key principle is that the name and content of the product should not mislead consumers, and product names must accurately reflect their true content.
Particularly relevant are the rules surrounding product names. The names of food products must align with official or commonly accepted names under applicable legislation. They should accurately represent the product's ingredients, and a specific trademark name must not be used in a misleading manner. According to the Labelling Regulation, mandatory information provided alongside the product name must follow established rules to ensure transparency.
In this context, trademarks such as "Totalvit" and "Todavit" are unlikely to face obstacles under the Labelling Regulation, as both names can be used appropriately to describe food supplement products, and their content can be clearly reflected in accordance with labeling standards.
Evaluations
The CoC's decision emphasizes key factors that should be considered when creating a food supplement trademark. While conceptual similarity remains important, the visual and aural differences between trademarks must also be evaluated. Linguistic differences and their meanings can cause consumer confusion, which underscores the need for trademarks to be unique and distinctive.
The food supplement sector is known for having many trademarks with similar names that could easily be confused. Therefore, highlighting distinctive features and differences between trademarks becomes essential. Compliance with the Labelling Regulation is also crucial to ensure accurate positioning in the market and to avoid consumer confusion.
In conclusion, sectoral regulations should be considered alongside linguistic and visual elements when developing a food supplement trademark. Creating an original trademark that complies with legal requirements while appealing to the target audience's perception is critical for standing out in the competitive market and avoiding legal disputes.
Footnote
1. Court of Cassation General Assembly of Civil Chambers decision numbered E. 2017/11-16, K. 2021/198 and dated 04.03.2021; Court of Cassation General Assembly of Civil Chambers decision numbered E. 2020/11-658, K. 2022/1316 and dated 19.10.2022.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.