This case is a dispute between two Turkish traders in foodstuffs in Austria. It is a case of trade mark opposition proceedings so that only the registered goods count and not the market fact that these food products are all "halal" (that is, according to Islamic food rules) since this is not reflected in the list of goods of the registrations. The latter fact might have had an influence on the consumer circles concerned.
The opponent owned a registered EUTM for a word and design trade mark with the word Itikat in the centre with a green uneven strip above and below and yellow ears, one in each of the four corners. The Turkish word "itikat" means "faith, believe". The defendant owned a registered Austrian trade mark. It consisted of the word "itimat" in the centre with a green and yellow wave above and below that word. The Turkish word "itimat" means "trust, confidence".
The Austrian Patent Office cancelled the younger trade mark itimat because of the high similarity of the goods and high phonetic and conceptual similarity and similarity in the pictorial elements both in green and yellow and in similar arrangement. The Appeal Court stated that although Turkish words are used the circles concerned are not only those consumers who understand the Turkish language. Furthermore the meanings of these words are close, hence the difference in these words is not sufficient to differentiate the marks. Phonetically there is a high similarity and the pictorial effect is similar. Accordingly, the appeal was not successful and that mark remained cancelled.
But the defendant learned from this decision and registered a similar mark. This time he used the word "özitimat" with a red and black wave above and below the word. The combination of the word "öz" if separated (which it was not) from "itimat" has the meaning of "sincere or pure trust (or confidence)": again the old opponent filed an opposition based on the same EUTM Itikat with the design as described above. Again the Austrian Patent Office followed the opponent on similar grounds than the first time. The Court of Appeal reversed and dismissed the opposition and the Austrian Supreme Court concurred. The reasoning was:
For the comparison of the meaning of foreign language marks it is essential whether the circles concerned understand their meaning. This means that a substantial part of these consumers have sufficient knowledge of that language to have an idea about the meaning of these foreign language words. Here the circles concerned are Austrian average consumers including the Turkish-speaking parts of the population. In the present case any possible similarity in their meaning notwithstanding their difference is outweighed by the phonetic and optical differences. Phonetically "itikat" and "özitimat" (the latter in one word) are apparently different. The optical differences are sufficiently great. Austrian consumers without knowledge of the Turkish language will anyhow not confuse these marks. The Turkish part of the consumers even if considered sufficiently important will understand the different meaning of the word-part of the marks and together with the other differences will not be confused.
It is to be noted that the courts consider the situation of both parts of the consumers here – those with knowledge of Turkish and those without. If only one of them is sufficiently important and could be confused then the opposed mark has to be cancelled. But here even when the Turkish speaking part of consumers might be considered important it will also not be confused – therefore the opposed trade mark özitimat remained registered.
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Helmut Sonn |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna, Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
