The Analysis of the General Court's TOTU – TOTTO Decision (T-633/19) with a Perspective from Turkey
In cases where the word elements of trademarks are written in a stylized manner and where letters of the word elements cannot be easily distinguished due to the stylized writing style; determining how the word element should be perceived constitutes a problematic area in evaluating likelihood of confusion.
In Turkey, trademark applicants are required to write down the word element of the trademark in the relevant section of the application form that are filed with the Turkish Patent and Trademark Office. At this point, the applicants and/or their agents have the wrong expectation that the stylized word elements will be perceived by the Office in the exact same way that they have presented it on paper. This expectation is erroneous, because the main point of consideration for the Office is not how the applicant perceives the word element of the trademark or how it is specified it in the application form, but how the average consumer will perceive and evaluate the word element.
The situation is no different for the European Union Intellectual Property Office (EUIPO) and the European Union judiciary.
In our opinion, the decision of the General Court of Court of Justice of the European Union No. T-633/19, dated July 8, 2020, that we will discuss in this article, will enable our readers to understand the issue more clearly from the EU perspective.
In 2017, the People's Republic of China-based company “Shenzhen Liouyi International Trading Co. Ltd.” filed an application with EUIPO for the registration of the mark, which can be seen below, for some goods in Class 18.
An opposition was filed against this application by the Costa Rica-based company “Essential Export SA”, based on two EU trademarks, the representations of which are given below.
The EUIPO Opposition Division and subsequently the Board of Appeal refused the opposition on the grounds that there was no similarity between the application and the trademarks specified as the grounds for opposition and that therefore the likelihood of confusion between the trademarks was not possible.
The Board of Appeal started off its decision on the assumption that the goods were identical within the framework of procedural economy. The Board then determined that the goods appealed to average consumers. Subsequently, the critical part of the decision, namely the comparison of the signs, began.
The Board first found that none of the signs contained visually dominant elements.
The Board held that the sign applied for and the signs that are the grounds for opposition () were not visually similar signs on the grounds that the trademark applied for would be perceived as an abstract figurative sign, composed of black lines and red dots or as a figurative representation added to the word elements "ro" and "ril" or "ro" and "rij" and that the trademarks that have been given as the grounds for opposition would be perceived as figurative representations of the term “totto”. In the light of these findings, the Board did not find the trademarks similar either visually, phonetically and also conceptually since the application was devoid of meaning within the context of how it would be perceived.
It was concluded that there was no likelihood of confusion among the trademarks since the signs were not found to be similar, and the opposition was rejected by the Board of Appeal.
The opposing party filed a lawsuit against this decision and requested the annulment of the decision of the EUIPO Board of Appeal. The case was heard by the Court of Justice General Court.
According to the complainant, the trademark applied for () is not a figurative mark composed of black lines and red dots as EUIPO claims, as the black lines and red dots on the mark form the letters "T", "O", "T", "U", and therefore the application contains the word element "TOTU". This is also confirmed in the application form and the mark has been registered as “TOTU” in the databases of EUIPO such as “eSearch plus” and “TMview”, and also the defendant clearly stated that the trademark contained the word element “TOTU” in the reply petition submitted in response to the opposition.
In view of these findings, according to the complainant, the elements that should be compared are the word elements "TOTU" and "TOTTO" and they are similar both visually and phonetically. In this framework, the complainant argues that since the conclusion that should have been reached, considering that the goods are identical, should have been acceptance of the opposition on the grounds of likelihood of confusion, the decision of the Board of Appeal including a contrary decision is erroneous and should be canceled.
The decision of the General Court began, as always, by reference to relevant case-law (the said part will not be included in this article).
According to the court; the red dots in the application () are clearly distinguishable from the black lines in the application since they are of different colors and shapes, and this will be easily perceived by the relevant public. The relevant public will evaluate the red dots in the application as elements separating and highlighting the black elements, rather than perceiving them as complementing those black elements to form capital letters making the word “TOTU”. Such a perception by the relevant public is more probable, since the term “TOTU” has no meaning that will attract the attention of the consumer in terms of the goods covered by the application. In this respect, as EUIPO argues, there are no elements within the trademark that invite or assist the relevant public to perceive the sign as “TOTU”.
In the light of these findings, it is not necessary to discuss whether or not the sign is perceived by the relevant public as "ro" - "ru" and "rij" - "ril" or merely as figurative motifs.
The fact that the applicant has indicated the word elements of the trademark as "TOTU" in the application form or trademark description is not a factor that affects how the relevant public will perceive the trademark. The trademark description shows how the trademark is perceived by the trademark applicant, and its purpose and effect are not to show how the relevant public will perceive the trademark. The basis of the assessment of the likelihood of confusion is the perception of the relevant public. The fact that the application is referenced as "TOTU" in EUIPO's databases such as “eSearch plus” and “TMview”, is also not considered as a factor affecting the perception of the relevant public for the same reasons. How the applicant perceives the application is stated in the specified databases and how the relevant public will perceive the trademark is independent of the information contained in these databases.
As a conclusion, according to the General Court, the application will not be perceived as the word mark "TOTU" by the relevant public, and all arguments of the complainant based on its claim in this direction are without merit, and the application and the earlier trademarks are not similar, and for these reasons, there will be no likelihood of confusion between the said trademarks. As a result of this, the decision of the Board of Appeal was uphold and the case was dismissed.
In our opinion, the conclusion to be drawn from the decision of the General Court in question is that it should be clearly stated that it is inconsequential, in terms of examination, for stylized word marks as to how the trademark has been specified in the application form or in the description by the applicant and that it should be emphasized that the examination should be made on the basis of the word element that will be determined by the administration based on the perception of the relevant public. It is obvious that contrary arguments will not be accepted either by the Turkish PTO or the EUIPO.
Originally published 12 August, 2020
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