A pre-application trademark similarity search is conducted by comparing the sign sought to be registered phonetically, visually, and conceptually with registered trademarks or pending applications in the database of the Turkish Patent and Trademark Office (TÜRKPATENT). In this process, the classes of goods and services for the registration application are determined, identical and variation queries are performed through the database, and the potential likelihood of confusion is evaluated under legal criteria. A comprehensive preliminary search directly prevents future refusal decisions, oppositions, and costly compensation claims.

Trademark protection constitutes securing the signs used by undertakings to distinguish their goods and services from those of competitors. Pursuant to the Industrial Property Code No. 6769 (IPC), the registrability of a sign subject to a trademark application depends primarily on its non-conflict with trademarks previously registered or applied for in identical or similar classes. Therefore, a search is not merely a technical data screening, but constitutes a direct legal risk assessment.

What is a trademark similarity search, and whom does it concern?

A trademark similarity search is the process of determining the formal and substantive proximity of a trademark name, logo, or sign planned for registration to other registered or pending trademarks. This examination directly concerns anyone planning the registration of a trade name or product name, ranging from entrepreneurs seeking to establish a new brand to corporate entities. Having a distinctive trademark is of critical importance, particularly for undertakings operating in dynamic markets characterized by intensive tourism, trade, and service sectors, such as Antalya.

Every right holder embarking on a registration path is obliged to assess in advance the impact the chosen phrase will generate in the market. By means of this search, not only identical names but also all signs capable of causing a likelihood of confusion in terms of pronunciation, spelling, or overall impression are identified beforehand. Neglecting this step causes undertakings to face substantial forfeitures of rights at the very outset.

Why is a similarity search mandatory?

A trademark similarity search is essential to ensure that the registration process is concluded successfully without encountering absolute or relative grounds for refusal. Pursuant to Article 5(1)(ç) of the IPC, trademark applications that are identical or indistinguishably similar to an earlier registered or applied-for trademark are refused ex officio by the Office. This leads to the applicant forfeiting official fees and expenses, resulting in an adverse outcome at the initial stage of the process.

Applications that pass examination by the Office are published in the official bulletin for oppositions by third parties. Pursuant to Article 6(1) of the IPC, right holders may oppose applications that present a likelihood of confusion, including the likelihood of association in the public perception, with a registered trademark. The likelihood of confusion refers to the misconception by the average consumer that an administrative or economic link exists between the two trademarks. In the absence of a search, opposition proceedings lasting for months or subsequent invalidation actions may bring the operational activities of undertakings to a halt.

How is a pre-application trademark similarity search conducted step by step?

A trademark similarity search conducted prior to application follows a structured methodology comprising class determination, technical data screening, and legal similarity analysis. At every stage of the process, technical criteria as well as principles established by judicial precedents must be taken into account.

  1. Determination of classes of goods and services: The initial step of the search is identifying the sectors in which the trademark will be used, in accordance with the International Nice Classification system. Classes 1 to 34 cover goods, while classes 35 to 45 cover services; the similarity examination is concentrated, as a rule, on identical or related classes.
  2. Conducting queries in the TÜRKPATENT database: The search engine on the electronic application system of the Office is used to query the identical form of the sign. In this query, applications under examination or publication are screened alongside marks with finalized registration statuses.
  3. Phonetic and variational screening: Word combinations that are not identical but exhibit proximity in pronunciation and spelling are investigated. Syllable additions, letter transpositions, and phonetic equivalents in Turkish or foreign languages are entered into the system individually and screened.
  4. Conceptual and visual comparison: The overall meaning evoked by the logo, device, color combination, and slogan of the trademark is evaluated. Whether signs covering the same conceptual scope in terms of semantic meaning leave the same impression on consumers is analyzed.
  5. Screening for actual use and trade names: The search should not be limited solely to the patent database; unregistered trademarks in actual use must be identified by screening the Trade Registry Gazette, domain names, and social media channels.

What points must be considered in a similarity search?

The principal criterion in a similarity search is the perception level of average consumers and the overall impression left by the trademarks. The search process must not rely solely on matches provided by technical tools, but must consider the distinctive character of the sign as a whole. Generic or descriptive terms added to word elements do not eliminate the risk of similarity.

The following elements must primarily be taken into account in the legal assessment:

  • Dominant and auxiliary elements: The dominant word or device located at the core of the trademark is the primary element; generic expressions or those presented in small fonts added alongside it do not avert the likelihood of confusion.
  • Aural proximity: The pronunciation of words must be examined thoroughly, as it may create a basis for confusion, especially in radio advertising and verbal recommendations.
  • Conceptual link: The similarity between words that convey the same meaning and operate in the same sector must be considered, even if they are in different languages.
  • Degree of renown: The scope of protection for well-known trademarks in the sector is interpreted broadly under the IPC to encompass different classes of goods and services.

What are the most common errors committed in the search process?

The most frequent error in a similarity search is conducting the query exclusively through exact word matches while disregarding letter variations. For instance, querying “Akdeniz” without screening forms such as “Ak-Deniz” or “Acdeniz” causes a serious similarity risk to be overlooked. Another common misconception is failing to consider related or complementary goods and services groups, even if they do not fall within the same class.

Considering only registered trademarks while failing to inspect files still in the application stage also impairs the process. Moreover, if the existence of trademarks that have long been used in the market without registration and hold prior use rights (genuine ownership) is omitted, the risk of facing an invalidation action arises even if registration is secured. Lack of familiarity with legal terms and sectoral case law is the primary reason why searches remain superficial.

Trademark experience of an e-commerce seller

An e-commerce seller operating in the textile sector selected the sign “LinaBella” as a trademark for women’s apparel and filed a direct registration application without conducting any preliminary similarity search. Without awaiting the outcome of the registration process, the entrepreneur expended a significant budget on label printing, packaging production, social media advertisements, and website setup. However, upon publication of the application in the official bulletin, it encountered an opposition from the proprietor of the earlier registered trademark “BellaLina” in Class 25.

TÜRKPATENT evaluated this situation—consisting merely of a transposition of the word order between the two signs—as posing a direct likelihood of confusion among consumers, found the opposition justified, and refused the application. Following the refusal decision, the seller was compelled to destroy all printed materials, packaging, and digital assets, and restarted the process from the beginning under a new name to maintain commercial activities. A professional similarity search conducted prior to the application would have readily prevented this pecuniary damage and loss of time.

Administrative and judicial remedies are available against decisions rendered by TÜRKPATENT on grounds of similarity. If an application is partially or totally refused during the ex officio examination stage pursuant to Article 5(1)(ç) of the IPC, the right of appeal before the Re-examination and Evaluation Board (YİDK) is exercised with statement of grounds within two months from the notification of the decision. Where third parties file an opposition under Article 6(1) of the IPC against a trademark published in the official bulletin, the applicant also holds the right to submit counter-statements within a two-month period.

Applicants who consider final decisions rendered by the YİDK unlawful may initiate an action within two months from the notification of the decision. The competent court for these disputes is the Civil Court of Intellectual and Industrial Property Rights. In actions for the cancellation of a YİDK decision and invalidation actions initiated before the Antalya Civil Court of Intellectual and Industrial Property Rights, trademark similarity is examined through expert panels. As fee schedules and litigation expenses applied in administrative and judicial proceedings are updated annually, current amounts must be verified via the relevant legislation.

The sound management of the registration process requires an in-depth analysis of legislation and judicial precedents beyond a technical database search. Atty. Arb. Billur Güler Aslım emphasizes that a comprehensive similarity search and sectoral risk assessment conducted prior to a trademark registration application prevent legal disputes that may arise in the future before they emerge.

Trademark rights rank among the most valuable intangible assets of undertakings, and every stage of the registration process demands rigorous legal supervision. Prior to filing an application, identifying correct classes, screening phonetic and conceptual variations, and analyzing potential risks of confusion constitute essential prerequisites for protecting commercial investments. Managing the process in compliance with legislation and established judicial precedents is the key to commercial sustainability in order to avoid loss of rights and time.