- The 'interdependence principle' was clearly established by the CJEU in Canon
- In two recent cases, the Patent and Trademark Offi ce explicitly mentioned and set out the conditions for the application ofthe interdependence principle
- In one of the cases, the offi ce also found that an application including the dominant element 'camelbak' could not havebeen fi led in good faith
The interdependence principle
For an application to be rejected under Article 6/1 of the Turkish Intellectual Property Code (IP Code), the following conditionsmust be met:
- the trademarks must be similar;
- the goods and/or services must be similar; and
- there must be a likelihood of confusion among the public, including a likelihood of association.
In the assessment of the likelihood of confusion, the 'interdependence principle' - which was clearly set out in the Court ofJustice of the European Union (CJEU)'s Canon decision (Case C-39/97) - has been adopted internationally. The CJEU establishedthe interdependence of the similarity factors by stating that a "lesser degree of similarity between the goods or services may beoffset by a higher degree of similarity between the marks, and vice versa" (Canon, Paragraph 17).
Recent Patent and Trademark Offi ce decisions
In two recent decisions, the Turkish Patent and Trademark Offi ce explicitly mentioned and set out the conditions for theapplication of the interdependence principle.
In the fi rst case, an opposition was fi led against a trademark application which consisted of the opponent's trademark in itsentirety and the additional non-distinctive element 'com.tr'. Although the trademarks did not cover identical services, the offi ceheld that a low level of similarity between the signs could be offset by a high degree of similarity between the goods/services,and vice versa. Therefore, the high degree of similarity between the contested application and the earlier trademark wassuffi cient to create a likelihood of confusion or association in respect of the remaining services covered by the application.
In the second case, an opposition was fi led by Camelbak Products LLC, relying on its CAMELBAK trademarks, against anapplication for the mark depicted below, covering different classes:
The offi ce evaluated that the visual and phonetic similarity between the application, which included the word 'camelbak' as itsmain element, and the earlier CAMELBAK trademark was quite high. The offi ce further found that the degree of similaritybetween the trademarks - on the grounds provided above with regard to the similarity of trademarks - and high distinctivenessof the earlier trademark could compensate the comparatively low degree of similarity between the goods/services. The offi ce,after indicating that a low level of similarity between signs can be offset by a high degree of similarity between thegoods/services, and vice versa, concluded that there would be likelihood of confusion, including a likelihood of association,between the trademarks in terms of all of the goods/services covered.
Further to the evaluation of the interdependence principle, the offi ce also assessed the bad-faith claim raised by Camelbak in itsopposition. The offi ce stated that the application consisted of a word which has been used by Camelbak in many countries formany years and which is highly distinctive, as well as Camelbak's domain name, and covered goods which are closely related toCamelbak's fi eld of activity. Accordingly, the applicant could not have been unaware of Camelbak's original CAMELBAKtrademark, which originated in the United States and is used globally. The offi ce concluded that the application could not havebeen fi led by coincidence and, therefore, could not be regarded as an attempt made in good faith.
The decision is signifi cant for companies which operate globally when it comes to the protection of their trademarks.
In order to apply the interdependence principle, the existence of a high degree of similarity between the trademarks, or betweenthe goods/services, is required. However, the offi ce's usual practice is to reject a bad-faith claim when it relies simply on the highdegree of similarity/identity between the trademarks. In the present case, despite the additional phrase 'maximum air controlsystems', the application included Camelbak's mark in its entirety, as well as Camelbak's domain name with the addition of the'.tr' country-code top-level domain - which gave the impression that this was Camelbak's Turkish website. Overall, based onCamelbak's registrations abroad, its business activities and the high level of similarity between the marks, the offi ce concludedthat there was a likelihood of confusion for all the goods and services covered, and that the application could not have beenfi led in good faith.
In these two decisions, the offi ce upheld the following principles:
- As stated in Article 11/4 of the IP Code, "goods or services shall not be presumed as being similar on the ground that they arein the same class, and goods or services shall not be regarded as being dissimilar on the ground that they are in differentclasses";
- The interdependence principle is not regulated in the IP Code, but has been adopted in the Trademark Law; and
- The criteria used to uphold a bad-faith claim.
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.