Approaches To Trademark Similarity In The Food Supplement Sector – Food and Drugs Law
A recent decision by the Court of Cassation regarding trademark
similarity in the food supplements and vitamins sector offers a
different perspective on the criteria for assessing trademark
similarity. This decision provides valuable guidance for launching
these products in compliance with both trademark law and
sector-specific conditions.
Background
The decision of the 11th Civil Chamber of the Court
of Cassation (“CoC”) dated May 28, 2024 (case no. E.
2023/911, K. 2024/4358), involved a dispute over the similarity
between the trademarks “Totalvit” and
“Todavit”. On April 17, 2019, the applicant filed a
trademark application to register “Totalvit” for goods in
class 05, including the food supplements. The opponent filed an
opposition against the trademark application, arguing that there is
a likelihood of confusion between the applicant’s trademark and
their own registered trademark “Todavit” dated November
22, 2018, in class 05.
The Spanish word “Toda” translates to
“Total” in English. Additionally, the term
“vit” in both trademarks is commonly understood as an
abbreviation for “vitamin.” Since vitamins are
non-prescription products, available without the need for approval
from a doctor or pharmacist, the relevant consumers for these
trademarks are not limited to healthcare professionals with high
attention to detail. Instead, the general public is considered the
target market, which affects the assessment of the likelihood of
confusion.
In the decisions issued by the Turkish Patent and Trademark
Office (“the Office”) Re-Examination and Evaluation Board
(“the Board”), the opposition was rejected, citing that
there was no likelihood of confusion between the trademarks
“Todavit” and “Totalvit”.
Court Process
The applicant filed a cancellation action against the
Office’s decision. The Court of First Instance ruled that there
was no likelihood of confusion between the trademarks. The court
noted that the term “vit”, a common element in both
trademarks, has low distinctiveness within the sector. While
“Toda” and “Total” are conceptually similar,
they differ phonetically. The court also emphasized that
“Total” is a more widely recognized term, both nationally
and internationally. This decision was also upheld by the Regional
Court of Appeals. The plaintiff then appealed, but the Regional
Court of Appeals’ decision was subsequently approved by the CoC
in its ruling dated May 28, 2024.
Legal Opinions
The CoC’s decision provides important guidance, particularly
for the food supplement sector, by offering a fresh perspective on
the criteria for trademark similarity. Traditionally, conceptual
similarity has been a primary focus when assessing trademark
similarity. However, in this case, a different approach has been
taken by emphasizing visual and aural similarities instead.
The Spanish word “Toda” and the English word
“Total” have the same meaning, which could potentially
cause consumer confusion due to their conceptual similarity.
However, the decision does not rely on this conceptual similarity.
Instead, it focused on the visual and aural differences between the
two trademarks, offering a new perspective on how to assess the
likelihood of confusion. This approach marks a departure from the
CoC’s usual jurisprudence, which suggests that when evaluating
similarity and the likelihood of confusion, the “general
impression left by trademarks as a whole” should be
considered1. The CoC’s decision here
suggests a more segmented analysis, where the trademarks are broken
down into their individual elements.
- The Importance of Visual and Aural
Similarities: A particular emphasis was placed on the
visual and aural differences between the two trademarks. Although
the words “Total” and “Toda” share similar
meanings, the phonetic and visual distinctions between them
significantly reduce the likelihood of confusion. The Regional
Court of Appeals’ focus on these differences rather than just
conceptual similarities represents a significant shift in trademark
evaluation. - The Phrase “Vit” and the Vitamin
Sector: The term “vit” in both trademarks is a
common abbreviation, especially in the vitamin sector. The Regional
Court of Appeals emphasized that “vit” has low
distinctiveness and does not increase the risk of confusion. Since
this term is widely used in industry, its presence in the
trademarks weakens their distinctiveness, further reducing the
likelihood of consumer confusion. - Consumer Perspective and Sectoral Differences:
Vitamins and food supplements are products that can be obtained
without a prescription, often without the oversight of a doctor or
pharmacist. The Court reasoned that consumers are typically able to
differentiate between trademarks based on their visual and aural
features. Given that the consumer base for these products is broad,
the likelihood of confusion is reduced.
Additionally, in the food supplement sector, proper labelling
and naming are essential to ensure accurate consumer information.
The distinguishing factors highlighted in the CoC’s decision
can help reduce confusion in the marketplace and promote clarity
for consumers.
Production and Marketing Rules for Food Supplements
In the food supplement sector, various regulations govern the
import, production, processing, and marketing of these products.
One key regulation in Türkiye is the Regulation on Import, Production, Processing and
Launching of Food Supplements which specifies that the Turkish Food Codex Regulation on Labelling and
Provision of Food Information to Consumers (“Labelling
Regulation”) applies to the labelling of such products.
The Labelling Regulation aims to ensure that consumers receive
clear, accurate, and understandable information about a
product’s content. It mandates specific details that must
appear on product labels to ensure both safety and quality,
enabling consumers to make informed choices. A key principle is
that the name and content of the product should not mislead
consumers, and product names must accurately reflect their true
content.
Particularly relevant are the rules surrounding product names.
The names of food products must align with official or commonly
accepted names under applicable legislation. They should accurately
represent the product’s ingredients, and a specific trademark
name must not be used in a misleading manner. According to the
Labelling Regulation, mandatory information provided alongside the
product name must follow established rules to ensure
transparency.
In this context, trademarks such as “Totalvit” and
“Todavit” are unlikely to face obstacles under the
Labelling Regulation, as both names can be used appropriately to
describe food supplement products, and their content can be clearly
reflected in accordance with labeling standards.
Evaluations
The CoC’s decision emphasizes key factors that should be
considered when creating a food supplement trademark. While
conceptual similarity remains important, the visual and aural
differences between trademarks must also be evaluated. Linguistic
differences and their meanings can cause consumer confusion, which
underscores the need for trademarks to be unique and
distinctive.
The food supplement sector is known for having many trademarks
with similar names that could easily be confused. Therefore,
highlighting distinctive features and differences between
trademarks becomes essential. Compliance with the Labelling
Regulation is also crucial to ensure accurate positioning in the
market and to avoid consumer confusion.
In conclusion, sectoral regulations should be considered
alongside linguistic and visual elements when developing a food
supplement trademark. Creating an original trademark that complies
with legal requirements while appealing to the target
audience’s perception is critical for standing out in the
competitive market and avoiding legal disputes.
Footnote
1. Court of Cassation General Assembly of Civil Chambers
decision numbered E. 2017/11-16, K. 2021/198 and dated 04.03.2021;
Court of Cassation General Assembly of Civil Chambers decision
numbered E. 2020/11-658, K. 2022/1316 and dated
19.10.2022.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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