A house mark is the main brand of a business that covers different product or service categories. House marks offer consumers assurance of quality and warranty, reinforcing brand trust. Therefore, house marks convey the message that all products under the umbrella of the business maintain a certain standard and quality, thereby increasing consumer loyalty to the house mark.
Many leading companies have built strong house marks, complemented by well-known sub-brands. Examples of house marks include:
Under Tesla (Automobile): Tesla Model S, Tesla Model 3, Tesla Model X, Tesla Cybertruck
Under Dyson (Home Appliances & Cleaning): Dyson V15 Detect, Dyson Airwrap, Dyson Purifier Cool
Under Samsung (Electronics): Samsung Galaxy, Samsung Galaxy Watch, Samsung Galaxy Tab
Under Microsoft (Software): Microsoft Word, Microsoft Excel, Microsoft Outlook, Microsoft 365, Microsoft PowerPoint
Under Pepsi (Beverage): Pepsi Max, Pepsi Twist
House marks enhance consumer confidence and loyalty, create the perception that all products share the same quality and standards, and offer convenience in terms of marketing. As a result of the trust and quality perception created by the house mark, consumers believe that all products within the house mark maintain the same quality.
Court of Cassation Decisions on House Marks
When a brand functions as a house mark, the role of its associated sub-brands (e.g., “Cornetto” under the Algida house mark) may become more significant in similarity examinations.
According to the Trademark Examination Guideline published by the Turkish Patent and Trademark Office, if a sub-brand element under a house mark is identical or similar to a distinctive element in another independent trademark, the similarity examination is conducted by disregarding the house mark[1]. As demonstrated below, the Turkish Court of Cassation follows the same principle.
Sub-Brands Consisting of Distinctive Elements
“Ülker Stars” and “Zaza Stars” Case
In its decision regarding the similarity between the "Ülker Stars" and "Zaza Stars" trademarks, the Court of Cassation stated that the examination should be based on the sub-brand "Stars" since "Ülker" is the house mark. The Court stated:
"...While the contested application consists of the term 'ZAZA STAR' written in standard characters, the opponent’s trademarks consist of the terms 'Ülkerstars,' 'Ülker Stars Lollipop,' 'Ülker Stars Fruity Milky Cream Candy Shape,' 'Ülker Stars Orange Milky Cream Candy Shape,' 'Ülker Stars Summer Fruits,' and 'Ülker Stars Chocolate Milky Cream Candy Shape,' all written in standard characters. Considering the parties’ trademarks, the applicant's 2011/52033 numbered application consists of the term 'ZAZA STAR,' while the opponent’s trademarks consist of the 'STAR' or 'STARS' essential elements under the ÜLKER house mark... The essential element creating brand perception and distinctiveness between the parties' trademarks is the 'STAR' term...".[2]
“Banvit Lezzetçibaşı” and “Lezzetbaşı” Case
The Court of Cassation ruled that the examination should be based on the term "Lezzetçibaşı" (meaning "Master of Flavor") since the term "Banvit" is a house mark:
"...The trademark application consists of the terms 'Banvit Lezzetçibaşı,' without any additional words, shapes, or color elements. The term 'Banvit' is the core element of the plaintiff's trade name, and there are multiple registered 'Banvit' trademarks belonging to the plaintiff. Therefore, the term 'Banvit' is considered a house mark, and the term 'Lezzetçibaşı' should be considered the essential element..."[3]
“Eti Karam Excellence” and “Lindt Excellence” Case
The Court of Cassation reached the same conclusion as above:
"There is a visual, auditory, and semantic similarity between the disputed 'Karam Excellence' trademark application and the 'LINDT EXCELLENCE' trademark cited in the plaintiff's opposition, creating a likelihood of confusion among average consumers. The term 'Excellence' is used as an essential element in both trademarks, leading to a likelihood of confusion..."[4]
Sub-Brands Consisting of Non-Distinctive Elements
For the rule outlined above to be applicable, and for the sub-brand to be considered essential in the examination, the sub-brand must have independent distinctiveness from the house mark. If the sub-brand’s elements do not have independent distinctiveness, the similarity examination will be based on the house mark itself.
“İşCepParaKod” and “Cep” Case
In examining the similarity between the 'İşCepParaKod' and 'Cep' trademarks, the Court of Cassation ruled that the term 'CepParaKod' (meaning 'Mobile Money Code') is descriptive for mobile phone online banking services, stating:
“...According to the claims, defenses, and the entire case content, the trademark application, consisting of the term 'CEPPARAKOD' used together with the defendant's house mark, is descriptive for mobile phone banking services. The term 'İŞ' will attract the average consumer's brand perception in the financial and banking services of class 36 and will also stand out in the goods of class 9. The term 'CEP' can be widely used as the name for mobile phone and communication services. Therefore, the average consumer will perceive the difference between the trademarks, and there is no likelihood of confusion between the plaintiff's and the defendant's brands...”[5]
“Golf Maraşlım-Maraşım” and “Algida Maraşlım” Case
In examining the similarity between the "Golf Maraşlım-Maraşım" and "Algida Maraşlım" trademarks, the Court of Cassation ruled that the examination should be based on the house marks "Golf" and "Algida" since the terms "Maraşlım-Maraşım" (Maraş is a province of Turkey famous for its ice cream) are descriptive and have low distinctiveness for a specific geographic region:
"...According to the first-instance court, considering the claims, defenses, expert report, and the entire file content, there is no visual, phonetic, or semantic similarity between the defendant's 'ALGIDA MARAŞLIM' trademark application and the plaintiff's registered 'GOLF MARAŞLIM-GOLF MARAŞIM' trademarks that could cause confusion among average consumers. The terms 'MARAŞLIM-MARAŞIM' are secondary elements in the trademarks, and they are also weak in distinctiveness as they refer to a geographic and regional name. Average consumers, who do not consist of experts or careful persons, would immediately and without any thought perceive the defendant's 'ALGIDA MARAŞLIM' trademark as different from the plaintiff's 'GOLF MARAŞLIM-GOLF MARAŞIM' trademarks...”[6]
Conclusion
In summary, if a multi-word trademark contains a house mark and the sub-brand elements are independently distinctive, the examination focuses on the sub-brand instead. However, if the sub-brand elements lack independent distinctiveness, the similarity examination prioritizes the house mark.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Evren Firat Goklu
Attorney at Law | Trademark Attorney | Patent Attorney
Furkan Mert Ozkaynak
Legal Trainee
[1] Turkish Patent and Trademark Office, Trademark Examination Guide (available in Turkish), <https://www.turkpatent.gov.tr/duyurular/marka-inceleme-kilavuzu-guncellendi-18082021> accessed 29 July 2024.
[2] 11th Civil Chamber of the Court of Cassation, decision numbered 2020/426 E. and 2020/4843 K. Decision Date: 9 November 2020.
[3] 11th Civil Chamber of the Court of Cassation, decision numbered 2021/287 E. and 2020/4127 K. dated 26 May 2022.
[4] 11th Civil Chamber of the Court of Cassation, decision numbered 2020/2342 E. and 2021/3915 K. dated 21 April 2021.
[5] 11th Civil Chamber of the Court of Cassation, 2018/1779 E. and 2019/3438 K. dated 6 May 2019.
[6] 11th Civil Chamber of the Court of Cassation, 2019/1688 E. and 2019/8213 K. dated 16 December 2019.