This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Session 4
Court of Cassation of Türkiye, Grand Civil Chamber [2024]: Migros Joint Stock Company v Turkish Patent and Trademark Office, Makro Technic Industry Joint Stock Company, 2023/11-426 and 2024/35
Date of judgment: March 31, 2024
Issuing authority: Court of Cassation of Türkiye, Grand Civil Chamber
Level of the issuing authority: Final instance
Type of procedure: Judicial (Civil)
Subject matter: Trademarks
Plaintiff: Migros Joint Stock Company
Defendants: Turkish Patent and Trademark Office; Makro Technic Industry Joint Stock Company
Keywords: Weak trademarks, Distinctiveness of earlier trademark, Likelihood of confusion, Acquired distinctiveness
Basic facts: Makro Technic Industry Joint Stock Company filed a trademark application for “MAKRO TEKNİK GLASS WOLL”.
Migros Joint Stock Company filed an opposition against this application, citing earlier trademarks, i.e., “Makro”, “Makro supercenter” “Macro service”, and others.
The Turkish Trademark Office rejected the opposition and registered the trademark in classes 06, 07, 11, 17, and 35.
Migros Joint Stock Company filed an appeal against this decision.
The first instance court affirmed the likelihood of confusion between the trademarks, thereby upholding the plaintiff's claims.
Turkish Patent and Trademark Office and Makro Technic Industry Joint Stock Company LLC appealed the first instance ruling to the District Court of Appeal (DCA). The DCA, upon hearing the case in appeal, overturned the first instance ruling, concluding that there was no likelihood of confusion between trademarks.
Migros Joint Stock Company appealed the DCA’s decision before the Court of Cassation, 11th Civil Law Chamber. The Court of Cassation, 11th Civil Law Chamber, accepted the appeal, overturning the DCA's decision and affirming the first instance court’s ruling on the likelihood of confusion.
Upon re-evaluation, the DCA issued a decision of insistence, once again ruling in favor of the defendants and dismissing the claim on the likelihood of confusion.
The dispute was subsequently appealed to the Grand Civil Chamber of the Court of Cassation.
Held: The Grand Civil Chamber of the Court of Cassation determined that there was a likelihood of confusion due to the shared element “macro” in the trademarks.
Relevant holdings in relation to the strength of trademarks, weak elements, and their enforcement:
The Court of Cassation Grand Civil Chamber concluded that the likelihood of confusion might occur due to the similarity of the elements of trademarks in the same classes; the defendant’s trademark was not sufficiently distinctive compared to the plaintiff’s marks with the element “macro”. On the other hand, the plaintiff’s trademark “MACRO” and other trademarks with the element “macro” were not weak and had acquired distinctiveness through use.
An important factor in assessing the similarity of signs and the likelihood of confusion is the degree of distinctiveness of the earlier mark. When the earlier trademark has low distinctiveness, the likelihood of confusion can be overcome even with minor differences. In such cases, attention should be paid to the distinctiveness of any differing elements or additions to shared elements between the earlier trademark and the new application, and whether these differences are sufficient to distinguish the two trademarks.
Relevant legislation:
· Turkish Industrial Property Code