Trademark law regulates that the phrase to be registered as a trademark for certain goods and services should not describe the goods and services for which the phrase will be registered. The reason behind this fundamental understanding is that any trademark registration provides an untouchable territory for its proprietor, meaning that the registered phrase would be allocated to its owner for trademark-related uses on the goods and services that are in the scope of the trademark until the trademark protection is over. Accordingly, the descriptive words for certain goods and services are not allowed to be registered for related goods and services to have them not allocated for a singular proprietor. The distinctive character, or descriptiveness from a different point of view, of the phrase "süzme" (cottage cheese, in English) for milk and dairy products has been a long-standing issue before courts and the Turkish Patent and Trademark Institute (TURKISHPATENT) and the dispute on this is finally over now.
II. The history of the issue
The descriptiveness of the phrase "süzme" for milk and dairy products is an on-going issue before Turkish IP Courts. Indeed the Turkish High Court of Appeals rendered many precedents1 ruling that the phrase "süzme" is descriptive for milk and dairy products. Since the phrase is commonly used for a certain way of cheese manufacture in Turkey, many companies engaged in the milk and dairy products sector, such as SÜTAS, Pinar, Içim or Bahçivan, pursued litigations or prosecutions before courts and TURKISHPATENT over the years.
While the mere use of "süzme" for milk and dairy products is found to be descriptive, umbrella branding is accepted as a way of discriminating the found-to-be descriptive phrase of "süzme".2 A trademark opposition against the trademark application of "IÇIM Süzme" based on several "süzme" trademarks had been filed and was rejected by TURKISHPATENT. Following, the opponent filed an action against the rejection decision, yet the High Court of Appeals confirmed that the umbrella branding, i.e. the "IÇIM" phrase at the beginning, discriminated the phrase sufficiently to eliminate the descriptiveness. A very similar case3 also goes for the trademark application "Bahçivan Bembeyaz Süzme Peynir".
III. The case before EUIPO
It has been set forth that the understanding and the settled practice regarding the phrase "süzme" before Turkish IP Courts and TURKISHPATENT showed the tendency for evaluation of the phrase as a descriptive one for milk and dairy products. The key point of this practice was that the evaluations are always made by considering the targeted consumers as Turkish consumer, by nature. Nevertheless, a very recent EUIPO decision evaluated the descriptiveness of the phrase "süzme" for milk and dairy products once again and reached a different conclusion.
- The case before EUIPO Opposition Division
Sütas Süt Ürünleri A.S. ("Sütas") brought a case before EUIPO Opposition Division as a trademark opposition case against a trademark application of Yadex International GmbH ("Yadex"), based on its trademark "süzme peynir". The subject matter trademark application is a trademark, designating the European Union in its international registration for a figurative trademark that contains the phrase "PINAR Tam Kivaminda Süzme Peynir Yumusacik Ve Leziz" for the goods of "Butter; buttercream; curdled milk; milk-based desserts; dips [dairy products]; low fat spreads from dairy products; cream cheese; yogurt; yogurt drinks; cheese; cheese dips; white cheese; hard cheese; cheese mixtures; kephir [milk beverage]; margarine; milk; milk creams [yogurt]; drinking milk or milk-containing beverages; milk products; powdered milk for food purposes; milkshakes; whey; dairy products; quark; cream [dairy products]; edible oils; edible fats; soymilk [milk substitute]; rice milk [milk substitutes]" of Class 29. The applicant has applied for a phrase indicating the word "süzme" for milk and dairy products.
The EUIPO Opposition Division examined the opposition and decided to accept the opposition of Sütas due to the presence likelihood of confusion. The EUIPO Opposition Division stated in its acceptance decision that (i) the dominant parts of trademarks, i.e. süzme peynir, are mutually present in both the trademark and the additional elements of the opposed trademark, to wit "pinar", "tam kivaminda" and yumusacik ve leziz" are secondary elements of the trademark and thus cannot be subjected to a similarity examination; (ii) there is a low visual similarity between the trademarks while there is an average aural similarity; and (iii) conceptually the phrases of both trademarks do not have any meaning for English-speaking consumers, so the conceptual similarity does not have any effect on the likelihood of confusion.
Finally, The EUIPO Opposition Divisions found the similarities sufficient to create a likelihood of confusion without considering the earlier trademark descriptive for milk and dairy products and accepted the opposition. The acceptance decision has been appealed before the EUIPO Board of Appeals.
- The case before EUIPO Board of Appeals
The Board of Appeals firstly evaluated the targeted consumers and stated that the goods and services in the scope of both trademarks are every day, low-priced product for the general public and that the average consumer of these products is not very well aware or highly conscious about the minor differences between two trademarks.4 Additionally, as the trademarks are European Union trademarks and the settled practice addresses that finding a risk of confusion for only a part of the relevant public targeted in the European Union is sufficient to reject the registration of the contested trademark application regardless of whether or not this part of the public is primarily targeted by the business activities of the parties concerned. Therefore, it complies with the procedural economy to consider the average consumer as an English-speaker, although there are considerable numbers of Turkish-speakers in English-speaking areas.
As to the similarity comparison of the trademark, the Board of Appeals states that even though the allegation that Turkish-speaking consumers will understand the meaning, it is the English-speaking consumer who should be taken into consideration, with reference to the above explanations. Therefore, the dominant element of the earlier trademark is the verbal element "süzme peynir", which means that the "süzme peynir" phrase is the dominant element and "PINAR" is the co-dominant element of the later trademark application. In that sense, the trademark is found to be similar in an average degree both visually and aurally, but they are not to be found conceptually similar as they both have no meaning as explained above. Overall, the Board of Appeals found the trademarks similar.
As another step of the similarity examination, the similarity of the goods or services is examined and found to be identical, highly similar, or similar. Accordingly, the outcome of the similarity examination now depends on the global assessment of other relevant factors.
The said global assessment of the Board of Appeals contains the distinctive character and global likelihood of confusion. The Board of Appeals stated that, since the English-speaking community will not understand the Turkish words, it has been concluded that the distinctiveness of the trademarks is normal. On the other hand, the differences between the trademarks are found to be insufficient to conclusively exclude a likelihood of confusion.
Based on the examination summarized above, the Board of Appeals confirmed the appealed decision of the Opposition Division and decided that there is a likelihood of confusion between the trademarks. The confirmation about the effect of language on descriptiveness falls under this confirmation as well.
The decisions of EUIPO have an advisory role for Turkish IP Law practice, as the European IP Law regulations are the regulative source of Turkish IP Law regulations. Therefore the subjected decision of EUIPO has an important effect on Turkish IP Law practice. The heart of this decision is "the distinctiveness examination of a phrase based on language."
The Turkish practice regarding the phrases of this case is completely different than the practice of EUIPO. The fundamental difference as to the distinctiveness is surely due to the language of the average consumer. Indeed, the Turkish Courts decided for annulment of the trademark "süzme peynir" based on descriptiveness, but EUIPO decided to accept the opposition that is filed based on the trademark "süzme peynir" without considering any descriptiveness. The main difference between these practices is the language spoken by the related consumer.
This decision might pave the way for descriptive words in foreign languages to be registered as trademarks in Turkey. Any word having a descriptive meaning in any language for certain goods or services can, with such interpretation, be registered in Turkey as a trademark, since the word would possibly not mean anything for Turkish-speaking consumers and not being used by them to define the relevant goods or services. However, it should also be kept in mind that the judicial and administrative bodies in Turkey acknowledge English as a commonly spoken language by Turkish people too.
The Turkish practice regarding the trademark "süzme peynir" is settled with the acknowledgement that it is descriptive for milk and dairy products. On the other hand, EUIPO explained in both examination stages that this word should be evaluated according to the English-speaking community and it should be acknowledged that the contested phrase has no meaning for these consumers. Accordingly, EUIPO decided to accept the opposition relying on the trademark "süzme peynir". Consequently, the Turkish word "süzme peynir" could be protected as a trademark in EU jurisdiction, while it was denied registration as a trademark due to being descriptive for milk and dairy products in Turkey.
The opposite outcome of these two practices is surely due to the language spoken by the consumers in those jurisdictions, which shows the role of average consumer profile in such evaluations related to trademarks. Having said that, it can also be concluded that any descriptive word in any language can be registered as a trademark in Turkey for the described goods and services.
This article was first published in Legal Insights Quarterly by ELIG Gürkaynak Attorneys-at-Law in December 2020. A link to the full Legal Insight Quarterly may be found here
1 For example: the precedent of High Court of Appeals 11th Civil Chamber dated 25.09.2019 and numbered 2018/3941 E., 2019/5827 K.;
2 The precedent of High Court of Appeals 11th Civil Chamber dated 07.01.2020 and numbered 2018/3381 E., 2020/86 K.
3 The precedent of High Court of Appeals 11th Civil Chamber dated 14.01.2020 and numbered 2019/2241 E., 2020/368 K.
4 See: https://euipo.europa.eu/eSearchCLW/#basic/*///number/2126%2F2019-1 (Last accessed on October 24, 2020)
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