The trade mark application for "NUANCE" numbered 2016/68710 filed before the Turkish Trademark and Patent Office (the Office) was opposed by a third party relying upon the following trade marks:
The opposition was based on the grounds of likelihood of confusion, prior rights of the opponent on the mark, well-known status of the opponent’s marks and bad faith of the applicant.
The Office rejected the opposition, and a subsequent appeal filed against the refusal decision was also rejected by the Re-examination and Evaluation Board (the Board) of the Office. The Board decided that there existed no room for likelihood of confusion between the trade marks in question.
Court proceedings
The opponent filed a court action for cancellation of the Board’s decision before the Ankara 3rd IP Court.
The First Instance Court determined that except for the trade mark [Image 2] numbered 2011/18714, there exists no similarity between the trade marks of the plaintiff, i.e. “NUA” phrased trade marks and the defendant when they are considered as a whole. It was further decided that there is no risk of confusion between the “[Image 2]” trade mark and the opposed trade mark as they do not cover similar goods.
Following the issuance of the court decision, the plaintiff filed an appeal before the Regional Court of Appeal, which affirmed the IP Court’s decision.
Then, the plaintiff brought the case before the Court of Cassation (the CoC) and the CoC also rejected the plaintiff’s appeal with the same reasoning.
The CoC further decided that there is no risk of confusion between the application mark "NUANCE" and the opponent’s “NUA” phrased marks which cover similar classes of goods, i.e. class 5 vs class 10, since the trade marks are not confusingly similar. It was evaluated by the CoC that the word mark "NUA” is a created trade mark that does not have any meaning. Even if the expression "NUA" was contained in the opposed mark, there exists no conceptual similarity between the marks in question since the mark "NUANCE" is an English word meaning "subtle difference".
Stated thus, the CoC concluded that there was no likelihood of confusion between the trade marks when examined as a whole. (Decision of the 11th Chamber of the Court of Cassation dated 08.11.2022, Merits No 2021/3821, Decision No 2022/7895)
Comment
Pursuant to IP Code no. 6769 of Turkey, the conditions of (i) similarity between the trade marks, (ii) similarity between the goods and/or services covered, and (iii) existence of the likelihood of confusion before the relevant public must be fulfilled for refusal of an application in case of an opposition by an owner of an earlier trade mark. What is crucial to this assessment is that these factors should be evaluated together and interdependently.
The CoC’s decision is valuable as it underscores that it is essential to consider the similarity of the marks, similarity of goods and services, and risk of confusion interdependently without giving undue weight to any one of these factors.
Accordingly, although the trade marks "NUANCE" and “NUA” could be considered similar to some extent and cover similar goods, those factors were found to be insufficient to lead to confusion since the marks themselves did not present confusing similarity before the relevant public due to the fact that “NUA” is a three lettered short trade mark with no meaning and “NUANCE” has a meaning, and hence the trade marks are not conceptually similar.
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