Similarity Assessment Between Trademarks : Critieria Determined by the Decision of the General Assembly of the Court of Civil Chambers

In the decision, an application for the trademark "MAKRO SOFT" was filed, and it was rejected due to its similarity with the already registered trademark "MACRO". General Assembly of Civil Chambers reviewed the case against the Regional Court of Justice's resistance decision and made its ruling. The reasons stated in the decision contain significant and instructive elements.

1. Similarity Element

The GACC evaluates the similarity element in considering the relative and absolute grounds for refusal of trademark registration beyond the assessment based on the class numbers to which the goods and services belong, examining aspects such as the relationship between raw materials and finished products, marketing conditions, purposes, and the identity in the customer environment arising during the after-sales service and repair processes, where one can be substituted for the other.

2. Likelihood of Confusion and Interpretation of the Trademark as a Whole Element

To mention the likelihood of confusion among the public regarding a trademark with a registered or applied-for trademark, the GACC does not deem it sufficient for the goods and services to be identical but also seeks for similarities or identity in their signs. Moreover, when conducting a similarity assessment, the GACC believes it is necessary to consider the possibility of establishing a connection between the trademarks, taking into account all the characteristics of the marks in the eyes of the public.

In the GACC 's decision, the public is defined as the "average consumer who is not a professional but directly concerned," and it is noted that the use of the term "likelihood" in the context of confusion is deliberate. The concept of likelihood encompasses "shape, sound, meaning, overall appearance, impression, or presence in a series." Therefore, the GACC considers it sufficient to acknowledge the existence of any form of "connection" between the compared signs to establish the presence of similarity.

3. Distinctiveness Element of the Registered Trademark

The GACC takes into account the distinctiveness of different elements of the examined trademarks or additions made to common elements. Additionally, in cases where the distinctive nature of the registered (prior) trademark is considered low, it is of the opinion that the likelihood of confusion can be eliminated even in minor differences.

4. Element of Recognition of the Trademark

When evaluating the element of whether the prior mark is recognized, the GACC emphasizes the need to consider whether the trademark sought to be registered is similar or identical in terms of the same or similar goods and services.

In conclusion, as the GACC has concluded that there is substantial similarity between the "MAKRO SOFT" and "MACRO" terms, the resistance decision of the Regional Court of Justice has been overturned.

The decision elaborates in detail on the factors and scope to be considered in examining the protection, registration, and obstacles to registration of trademarks, and this decision will serve as a guide for assessments regarding the similarity of trademarks.


Ebrar Turan, Associate
Ece Gümüş, Legal Intern