Turkey: Protecting Non-Traditional Trademarks

Last Updated: 27 May 2019
Article by Barış Kalayci and Mutlu Yildirim Köse

Non-traditional trademarks refer to marks which are not traditionally perceived as trademarks. Some examples are colour, sound, motion, position and 3D views of products etc.

Non-traditional trademarks are not specifically described in the Turkish Industrial Property Code (the IP Code) which came into force on January 10 2017 in Turkey. Since there is no special provision in the code regarding the registration of non-traditional trademarks, the principles pertaining to the registration of other signs are also applied to non-traditional trademarks. Accordingly, "absolute refusal grounds" enumerated in Article 5 of the IP Code are applied to non-traditional trademarks as well.

In Article 4 of the IP Code, a new definition was given to the word trademark and the graphical representation criteria for signs to be registered as a trademark has changed to "signs capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor." The terminology has therefore been aligned with EU trademark directives.

According to this provision, a trademark must be capable of "being represented on the register" and "to distinguish goods and services from those of other undertakings."Accordingly, provided that it satisfies these conditions, all kinds of signs can be registered as a trademark. In this provision, colours, sounds and the shape of goods and their packaging are specifically mentioned. Furthermore, since "all kinds of signs" are mentioned in the article, there is no legal obstacle to the registration of elements like holograms and motion as trademarks as well.

According to Article 7 of the Regulation on the Implementation of the Industrial Property Code which entered into force on April 24 2017:

  • Representation of the mark, including a view from one side or multiple angles so as to provide a clear and precise understanding of the subject of protection, must be submitted for three-dimensional (3D) trademark applications.
  • Recordings of sound suitable for listening and storing in electronic form must be submitted to the office for sound trademark applications.
  • Colour images and indication of the colour code accepted by the office must be submitted for colour trademark applications.
  • Images describing the trademark's motion or a motionless or moving image sequence must be submitted for motion trademark applications.

The regulation is now in line with the EU Trademark Implementing Regulation (2868/95) regarding the representation of trademarks. This is significant progress regarding non-traditional marks, since the abolished Regulation on the Implementation of Decree-Law 556 did not include provisions for sound, motion, colour or 3D marks. The new regulation now clearly explains what must be submitted for the registration of different kinds of trademarks and reduces lengthy procedures.

In line with these new provisions, applications for non-traditional trademarks are expected to increase in the near future.

Approach of the office and courts to non-traditional trademarks

When we analyse the approach of the office and courts to non-traditional trademarks, especially 3D marks, we note that in previous years, the office's approach to 3D marks was quite strict and, at that time, the vast majority of applications for 3D trademarks were rejected on the ground that they lacked inherent distinctiveness, without even considering whether the mark had acquired distinctiveness or not.

In contrast, the specialised IP courts always carried out a broader and a more detailed examination of the registrability of 3D trademarks, and most of the applications which had been rejected at the administrative stage were then allowed when the decisions of the office were challenged before the IP courts.

For instance, the trademark applications for no. 2003/10183 (Figure 1), no. 2005/06593 (Figure 2), and no. 2006/54990 (Figure 3) were rejected by the office following an initial examination, and also on appeal to the Re-Examination and Re-evaluation Board (High Board) of the office.

Figure 1, 2 and 3

The decisions were then challenged before the Ankara IP Courts, which decided that the above-mentioned devices had a unique shape and, therefore, had the requisite distinctive character. The marks have since been registered.

However, it seems that the office has now softened its approach. In recent decisions, the office carried out a more detailed examination of the distinctiveness and descriptiveness of 3D marks and accepted some applications for registration.

For example, the office initially rejected the application no. 2013/25243, depicted on the left, on the basis that it lacked distinctiveness.

The applicant appealed the office's decision and the appeal was accepted by the office, which stated that the bottle subject to the application was original and distinctive. Therefore, the application had enough distinguishing characteristics to be perceived as a trademark.

In another recent case, the office initially rejected the application for the shape of Ballantine's Finest bottle with label (application no. 2013/64583, depicted on the left) on the ground that it lacked distinctiveness.

The refusal decision of the office was challenged and the office accepted the appeal and decided to register the mark, stating that the application was sufficiently distinctive.

Colour marks

When we turn to look at colour marks, it would be appropriate to examine them in two groups, "single colour trademarks" and "colour combination trademarks". In practice, it is accepted that trademarks consisting of colour combinations are more distinctive than single colour trademarks.

With regards to single colour marks, the trademark no. 2005 47462 (IR 644464) (Figure 4) registered for "chocolate and products including chocolate" in Class 30 can be used as an example of a single colour mark. However, on the other hand, there are various decisions rendered by the Court of Appeals stating the principle that single colours cannot be monopolised. In line with these Court of Appeals decisions, the office also generally rejects single colour marks. For instance, the trademark application no. 2017/46274 (Figure 5) was rejected by the office, despite comprehensive evidence being filed during the appeal stage. Therefore, we are of the opinion that registration of sole colour trademarks will continue to be burdensome.

Figure 4 and 5

On the other hand, distinctiveness of colour combinations consisting of two or more colours is higher than trademarks consisting of one colour. Indeed, the Court of Appeals is also of the opinion that colour combinations can be registered as trademarks. In its decision numbered 2005/9360 E. – 2006/9986 K., the 11th Civil Chamber of the Court of Appeals stated that "in principle, it is not possible for a sign consisting of only one colour to be registered as a trademark because it is not capable of being distinctive by itself and its public use is equitable. However, in this case the sign seeking registration consists of triple colour combination, it is specifically designed by bringing three colours together, it has distinctiveness and the conditions for registrability are fulfilled." Accordingly, there are various trademark registrations consisting of two or more colours such as Figure 6, 7 and 8.

Figure 6, 7 and 8

Sound and movement

Sounds are also registered as trademarks in Turkey, as long as they satisfy the criteria for a trademark and have distinctive character. There are various sound trademarks registered before the office such as Nokia's boot-up tone which is registered before the office with no. 2017 80232.

Furthermore, we can see examples of movement marks registered before the office as well. For instance, trademark no. 2012 47944 is registered before the office as a movement trademark.

Enforcement of non-traditional marks

On the other hand, although it is possible to register non-traditional trademarks, enforcement of these trademarks may be difficult in some instances as well. For example, in a recent decision rendered in a criminal action, the District Court stated that using a 3D version of a trademark on products cannot be considered use of a trademark. Also, the accused may not have known that the design of the buckle is a registered trademark. As the accused may not have known this is a trademark, he cannot be deemed to have had the intention to commit a crime. Thus the court decided to acquit the accused and to return the seized goods to him. The decision has been appealed before the Court of Appeals and the decision of the higher court is now expected. Although the decision is not final yet, it shows how difficult it is to enforce the rights of non-traditional trademarks.

In conclusion, we can say that along with traditional word and device marks, the registration of non-traditional elements, such as 3D shapes, colours and sounds is expected to increase in the near future considering the recent changes in the Turkish Trademark Law which run paralell to the EU directives. However, it is clear that the office and courts still have a strict approach to the protection and enforcement of non-traditional trademarks.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Gokce Attorney Partnership
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Gokce Attorney Partnership
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions