Court of Cassation Renders Controversial Decision on Likelihood of Confusion in Dispute Over Pharma Marks

Background

A Turkish company operating in the pharmaceutical sector, which owns the registered trademarks BATIKAR and BATISOL in Class 5, filed an infringement action against a pharmaceutical company selling antiseptic disinfectants under the trademark MIRADERM BATIMER.

The plaintiff argued that the expression ‘batimer’ was similar to their BATIKAR and BATISOL trademarks, particularly due to the shared ‘bati’ element, and that there was a likelihood of confusion.

Decisions

In the initial trial, the IP Court ruled in favour of the defendant, concluding that the trademarks were sufficiently distinct, as the defendant’s trademark consisted of two words and there was no other similarity besides the shared element, ‘bati’. 

On appeal, the Regional Court reversed this decision, determining that the similarity between the marks, particularly the shared ‘bati’ element, created a likelihood of confusion. In particular, it emphasised that: 

• the products for which the parties’ trademarks were used were antiseptic disinfectants which can be purchased over the counter and appeals to the average consumer; and 
• the common element ‘bati’ is not the name of the active ingredient of the product. 

The Regional Court also stated that ‘bati’ did not have a meaning in the Turkish language and that the defendant was not obligated to use that element. Accordingly, the Court ruled that the defendant’s use of MIRADERM BATIMER constituted trademark infringement and unfair competition, and issued injunctions against the defendant.

The defendant appealed to the Court of Cassation; however, the Court upheld the Regional Court's ruling and confirmed that the defendant's use of MIRADERM BATIMER constituted trademark infringement and unfair competition.

Remarks

In terms of the similarity and likelihood of confusion of trademarks in Class 5, the Turkish courts often consider whether the common element of the marks refer to the active ingredient of the products and whether the products in question are sold on prescription or over the counter, and thus attempt at ascertaining if the product is to appeal to a specific consumer group, of whom may (or may not) have a higher degree of prudency.

In this case, it is likely that both the Regional Court and the Court of Cassation followed this line of examination. However, it could also be said that the courts did not take into consideration the nature of the relevant sector and the overall impression created when undertaking the examination of possible similarity and likelihood of confusion. 

Although ‘bati’ does not refer to the active ingredient of antiseptic disinfectants, it is frequently used in trademarks for the same type of product, as can easily be determined by looking at the database of the Turkish Patent and Trademark Office or with a quick internet search (such examples are Batiodin, Baticonol, Batikadin, Batiderm and Batticon). In addition, the well-known Batticon brand (which is registered as a well-known trademark before the Office) has become almost synonymous with antiseptic solution and has almost become a generic use for similar products. Therefore, and especially in infringement cases, the courts should take a broader approach when assessing the likelihood of confusion, and should examine the level of distinctiveness of the trademarks by also considering their common use in the relevant sector, where applicable. 

In this particular case, and also considering the above facts regarding BATTICON, and that there is another distinctive element in ‘batimer’ (the last syllable of which is different from that of the plaintiff’s trademarks), the courts may have come to a different conclusion had they taken into account this approach to examining confusing similarity.

First published by Gün + Partners in Apr 03, 2025.