- The Turkish courts have ruled in favour of the owner of a mark consisting of a very common expression
- The courts found that, even though 'İyi Yaşam' is a common expression, the plaintiff's intensive use strengthened the distinctiveness of the mark
- Arguably, such outcome is not in line with previous Court of Cassation decisions
In a recent decision, the Court of Cassation has favoured the registrant of a weaklydistinctive sign in the similarity examination by ignoring the principle of the overallimpression created by the marks.
Background
The plaintiff was the owner of the mark İYİ YAŞAM (meaning 'good/well life' in English),registered in Classes 3, 5, 9, 10, 14, 16, 21, 24, 25, 28, 29, 30, 31, 32, 35, 36, 37, 38, 41,43 and 44 since 2006. The plaintiff opposed the defendant's application for the markdepicted below ('İyi Yaşam Festivali' meaning 'Good/Well Life Fest') in Classes 35 and 41before the Turkish Patent and Trademark Office (PTO):
The opposition was based on a likelihood of confusion, genuine right ownership, well-known status, copyright and bad-faith filing.
Following the PTO's final decision dismissing the opposition on all grounds, the plaintifffiled a court action to cancel the PTO's decision and invalidate the defendant's trademark.
IP Court decision
- In the first-instance trial, the IP Court found as follows:
- The main element of the plaintiff's trademark is 'İyi Yaşam'.
- The plaintiff's intensive use strengthened the distinctiveness of its trademark.
The element 'well' in the defendant's trademark conveyed the concept of 'wellness',while 'fest' in the defendant's trademark conveyed the idea of a 'festival'. Therefore,the disputed mark would be perceived as meaning 'Good/Well Life Fest' and, due tothe conceptual similarity between the marks, could be confused with the plaintiff'sİYİ YAŞAM mark.
The IP Court not only found that there was a likelihood of confusion, but also allowedsome of the plaintiff's other claims, such as genuine right ownership and well-knownstatus.
Appeal decisions
Upon appeal, the Regional Court of Appeals upheld the IP Court's decision, noting thateven though 'İyi Yaşam' is a common expression, the plaintiff had used this markintensively and the defendant's trademark was confusingly similar to the plaintiff'strademark. Therefore, it was appropriate for the IP Court to acknowledge a likelihood ofconfusion pursuant to Article 6/1 of the IP Code. On the other hand, the Regional Court ofAppeals did not comment on the genuine right ownership and well-known status claims.
In the last round of appeal, the Court of Cassation simply upheld the ruling withoutassessing the merits of the dispute, and the decision was finalised in favour of the plaintiff.
Comment
Arguably, although the IP Court found – and the Regional Court of Appeals confirmed –that the plaintiff had used the İYİ YAŞAM mark intensively and could thus be grantedextended protection against confusingly similar signs, 'İyi Yaşam' is a very commonexpression which has a very low distinctive character for the goods/services at issue.Therefore, it should not be granted such a broad protection.
Further, the opposed mark contains distinctive elements, namely a stylised 'W' and thestylised element 'Wellfest' in a bigger font, while the expression 'İyi Yaşam Festivali' atthe bottom of the mark is used as a secondary element describing the nature of thefestival, hence preventing a likelihood of confusionwhen the overall impression created bythe marks is considered.
In line with decisions of the Court of Justice of the European Union and the EUIPO, theowner of a weak trademark must endure the registration and use of similar signs by others(as emphasised in various decisions of the Turkish Court of Cassation), and the addition ofeven minor elements is sufficient to distinguish signs from each other. However, this recentruling does not align with former decisions of the Court of Cassation and provides theregistrant of a weakly distinctive trademark with an absolute right.
First published by WTR in Jun 18, 2025.
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.
