PIOZON CASE SUMMARY
|Subject Heading:||Similarity of Marks|
|Case Name and Citation:||
MERCK KGAA vs THE TURKISH PATENT INSTITUTE&ÝSTANBUL GALENOS ECZ DEPOSU TÝCARET VE SANAYÝ AÞ,;
1- THE TURKISH PATENT INSTITUTE
|Marks Associated with Goods/Services:||
The plaintiff has sought to register in Turkey the trademark PLIAZON through international application No: 826998 in respect of “Pharmaceutical preparations for human use in the field of oncology” in class 05.
The defendant (2) ÝSTANBUL GALENOS ECZ DEPOSU TÝCARET VE SANAYÝ AÞ is the registrant of the trademark reg. no: 2003/02736 for PIOZON trademark registered in respect of all goods in sub-classes of classes 05, 16 and 35.
|Nature of Case:||
The action has been instituted for the withdrawal of the final decision of the Turkish Patent Institute where the application of PLIAZON trademark was rejected due to prior registration for PIOZON trademark on the basis of undistinguishable similarity.
The Defendant’s opposition against the publication of PLIAZON trademark application based on his prior PIZON trademark was accepted by the Turkish Patent Institute due to similarity of trademarks in the sense Article 8/1(b)1, Decree-Law no. 556 For Protection of Trademarks. Upon objection against this refusal decision Higher Council of the Turkish Patent Institute upheld that the trademarks in question are similar, accordingly the application of PLIAZON trademark would be rejected.
|Overview of Decision and Ruling:||
The plaintiff has asserted the following points in his petition:
The First defendant THE TURKISH PATENT INSTITUTE’s petition against the above assertions has been motivated in that:
The second defendant GALENOS put forward in his petition that:
In the light of the evidences submitted by the parties and of the experts report which are in plaintiff’s favor, The 1st Instance Court contrary to the conclusions of the Experts report retained that:
The decision was appealed by the plaintiff and the Supreme Court with its decision (2) overturned the decision of the 1st Instance Court on grounds that:
Upon the reverse of the judgment, the First Instant Court upheld in compliance with the Supreme Court decision and ruled the cancellation of subject Higher Council decision and the continuation of the application process of PLIAZON trademark since there is not a indistinguishable similarity between PLIAZON and PIOZON trademark.
|Importance of Case:||
This case is important because according to the current practice of Turkish Trademark Law, similarity of goods and services is evaluated on the basis of sub-classes. In other words, even though the goods and services are different, they are deemed similar in case they fall under the same subclasses. With this decision, the Court ruled that even though the goods of PLIAZON trademark, “Pharmaceutical preparations for human use in the field of oncology” fall under the first sub-class of class 05 which was covered wholly by PIOZON trademark, the goods of the trademark must not be evaluated as similar considering the fact that the drugs for treatment of cancer can only be bought upon prescription written by doctors.
1 Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered subject to the following conditions:
b)Where the trademark applied for is identical or similar to a registered trademark or to a trademark applied for registration under a prior date of filing and the registration is sought for identical or similar goods or services in that the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark applied for registration under a prior date of filing.