The Turkish Patent Institute (TPI) has changed its
approach to the distinctiveness of trademarks consisting of
descriptive foreign words within the context of an examination
based on absolute grounds.
In 2014 UNOX
SPA - an Italian company that is a leader in the sector of
professional ovens - filed an application to obtain an
international registration designating Turkey for the trademark
BAKERLUX for ovens and heating products, among others, in Class 11
of the Nice Classification. The application was
rejected by the Trademarks Department Directorate of the TPI
following an ex officio examination on absolute grounds pursuant to
Article 7/1(c) of the Decree-Law No 556 on the Protection of
Trademarks. The refusal was based on the finding that BAKERLUX
has a descriptive meaning in English, as the terms 'baker'
and 'lux' indicate the characteristics, quality and
intended purpose of the goods applied for.
The applicant recognised that there was a connection between the
meaning of 'baker' and the function of goods and that the
term 'lux' defined the quality of those. However, it
claimed that the combination of the cited terms, namely BAKERLUX,
was sufficiently distinctive to be registered for the products at
issue. Additionally, the descriptive meaning of the terms
'baker' and 'lux' was not known by the majority of
The applicant appealed the refusal decision to the
Re-examination and Evaluation Board of the TPI on the basis of the
abovementioned grounds. The board upheld the applicant's
arguments and the refusal decision was cancelled accordingly.
The board's final decision shows that the TPI's approach
to the distinctiveness and descriptiveness of trademarks has been
relaxed and that the examination on such criteria will be more
flexible where the trademark consists of words that have a
descriptive meaning in a foreign language. Nevertheless, this
position has been adopted only by the board, and the examiners
handling the ex officio examination phase have not, so far,
followed such approach.
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