89 Union of Turkish Bar Associations Review 2023 Dilara Naz GÜLÜM and infringement actions.10 This is because, in cases of reasons of trademark invalidity as stipulated in Article 25/1 of the IPC, the presence of the grounds specified in Article 5 or 6 of the IPC is sought. Therefore, if a trademark has been registered despite the existence of a ground for refusal by TURKPATENT, an action for invalidation can be initiated, and within the scope of the case, the determination of identity/similarity of goods/services will be necessary. Similarly, the use of an unregistered trademark that may lead to confusion with a registered trademark constitutes an infringement of trademark rights under Article 29/1-a of the IPC (due to the reference to Article 7 of the IPC). Consequently, actions for declaratory judgment, prevention of infringement, cessation of infringing activities, prohibition of infringement, and claims for compensation can be filed as stipulated in Article 149/1 of the IPC.11 In this case, undoubtedly, the determination of similarity of goods/services will also be necessary. However, making such determination, especially in terms of the “similarity” of goods/ services, is quite challenging.12 In the subsequent sections of the study, solutions developed by doctrine and practice on how to overcome this difficulty will be explained. Relationship Between Similarity of Goods/Services and Likelihood of Confusion Determination of whether goods and services are similar or not holds significance in the context of likelihood of confusion, as it plays a crucial role in determining the point at which similarity of goods and services might lead to confusion. The common consensus is that the presence of a likelihood of confusion depends on the prerequisite of the similarity of goods/services.13 This conclusion is also evident from the explicit provision of Article 6/1 of the IPC. Moreover, under the IPC, the registration of a trademark for goods/services different 10 Ali Paslı, Marka Hukukunda Ürün Benzerliği (Product Similarity in Trademark Law), Istanbul 2018, p. 2. 11 Uzunallı, p. 676. 12 Paslı, p. 2; Uzunallı, p. 678. 13 Paslı, p. 6; Uzunallı, p. 678; TURKPATENT 2021 Trademark Examination Guideline, p. 383 (https://www.turkpatent.gov.tr/TURKPATENT/resources/temp/ CFF1AE84-9563-42D6-BC18-1EF3597D01CC.pdf, Last accessed: 17.10.2021). Throughout the remainder of the study, “2021 Guideline” will be used as a brief reference.
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