With its recent decision dated March 9 2017 and numbered
2016/14857 E, 2017/1442 K, the Turkish Court of Appeals (CoA),
by reversing its previous decision in the same dispute, held
that the trade marks Uludağ Zero and Panda Zero cannot be
considered confusingly similar on the basis of the commonness
of the term "zero" since this term is descriptive for
beverages.
The decision concerns a cancellation action filed by the
plaintiff against the decision given by the Turkish Patent and
Trade Mark Office, regarding the refusal of the plaintiff's
trade mark application Uludağ Zero, covering beverages in
class 32, on the ground of likelihood of confusion with the
defendant's trade mark Panda Zero, which also covers beverages
in class 32.
The case was first evaluated by the first instance IP Court
and the Court held that the term "zero", which is the focus
point of the dispute, evokes "sugar free, fat free, zero
calorie" in the Turkish consumers' minds due to the effect of
recent intensive advertising campaigns for beverages.
On that basis, the Court held that the term "zero" is a
descriptive term for beverages in class 32, in that it
indicates that the relevant product does not include sugar.
Therefore, the Court concluded that the main elements of the
trade marks in dispute are "Uludağ" and "Panda" and there
is no likelihood of confusion between them.
Upon the defendant's appeal, the CoA evaluated the matter
and held that the term "zero" is one of the main elements of
the trade marks and by considering that beverages are fast
moving consumer goods purchased without much thought, concluded
that the trade marks are confusingly similar, on the basis that
they include the common term "zero" as a predominant and
attention-grabbing element. Accordingly, the CoA overruled the
first instance IP Court's decision. However, the IP Court
resisted this decision.
Upon the defendant's second appeal, the case returned to the
CoA, but this time the CoA reversed its own previous decision
and held that the term "zero" is a descriptive term for the
dispute. Accordingly, the CoA decided that the initial decision
of the first instance IP Court, concluding that the trade marks
are not confusingly similar, is appropriate.
With this recent decision, the CoA confirmed that the
non-Turkish term "zero" is descriptive for beverages and would
be perceived by the Turkish consumers as an indication that the
relevant product does not include sugar. Arguably, the most
remarkable aspect of the CoA's decision is that it puts forward
that non-Turkish terms can be perceived as descriptive by
Turkish consumers, provided that these terms are advertised in
Turkey intensively for the relevant product and therefore
become widely known by Turkish consumers. In this respect, the
decision sets a precedent for future disputes where the subject
of the dispute focuses on a common non-Turkish term in the
trade marks, which can be regarded as descriptive or having a
low degree of distinctiveness, despite being non-Turkish.
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Güldeniz
Doğan Alkan |
Alkım
Akan |
Gün + Partners
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Zincirlikuyu 34394
İstanbul, Turkey
Tel: + (90) (212) 354 00 00
Fax: + (90) (212) 274 20 95
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