On 30th September 2019 the new trademark examination guideline has been published by TurkPatent which includes more titles and examples compared to the guideline published in 2011. It mainly focuses on the considerations of TurkPatent in order to decide if a trademark application is eligible for publication or not. This guideline also includes more TurkPatent, Court and EUIPO decisions. Just two weeks before the guideline has been published a seminar was conducted at Istanbul Chamber of Commerce on September 16, 2019 by TurkPatent in order to assess new Trademark Examination Guideline. This article mainly focuses on the points that underlined during this seminar.
1- SIGNS WHICH CAN BE REGISTERED AS A TRADEMARK:
As per the Article 4 of the Industrial Property Code numbered 6769, "Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor."
There is no change in the representation of a trademark in terms of traditional trademarks within the scope of the Industrial Property Code numbered 6769. However, there is difference in non-traditional trademarks, namely in trademarks which are called new trademark types. Since the graphic representation is not obligatory, representation of the trademark sample will be possible to the extent permitted by the technological infrastructure. For instance; an audio file for sound marks (stave not compulsory) or a video file showing motion for motion marks.
2. DESCRIPTIVE SIGNS:
In accordance with the Article 5/1-(c) of the Industrial Property Code No. 6769, the descriptive signs are the signs that directly identify the goods or services requested to be registered and directly refer to the characteristics or to the quality of the goods or services. Within this scope, it is desired for the respective consumer group to reflexively establish a connection between the goods or services and the sign. If a connection is made between the goods/services and the sign, as result of an additional mental effort following specific analyses, in this sense, it is considered that refusal conditions have not realized in accordance with the subclause 5/1(c) of the Industrial Property Code No. 6769. Signs that are of associative only or that remind the characteristics of goods or services cannot be considered as descriptive.
The fact that the sign constituting the application is one of the terms or concepts used in the sector to which the goods or services are related is not enough to reveal that the sign is descriptive. There must be a direct relationship between the sign and the good or service. For example, an application for "RULER" in class 41 for education services will not be considered as descriptive since it does not have a direct connection with the said services, even though "RULER" is a term used in the education and training sector.
When the descriptive elements are combined in an unusual way and gain a totally new meaning, the descriptive characteristic of the sign is eliminated. However, the concept of being descriptive should be evaluated not only according to the meaning of each word respectively, but also according to the overall that they create together.
For example, the phrases indicated below are considered as descriptive:
2.B: DESCRIPTIVE FIGURES:
Figurative marks which are exclusively used to specify the type, purpose or other characteristics of goods or services, and which do not differ significantly from their original form in the nature are considered within the scope of the Article 5/1(c).
|Miscellaneous dog accessories including dog leash, dog collar and bags|
|food (nutritional) supplements; clothing; foot wear; food (nutritional) supplements, products for human health and dietary products, clothing, online sales services for foot wear.|
2.C: FIGURES AND DESCRIPTIVE WORDS:
The graphical element that can be considered to provide distinctiveness should be the catchy element dominating the trademark in general, and dominant enough to be considered as a trademark at first glance, for instance:
3- ASSESSMENT OF SIMILARITY WITHIN THE SCOPE OF 5/1-Ç:
ASSESSMENT ON COMPOSITE MARKS:
In order for a trademark to be a "composite mark", the trademark sample should include "the figure element/elements together with distinctive word element/elements".
For the similarity assessment of signs including figures which do not dominate the overall of the sign or are not catchy, despite dominating overall of the sign and having relatively low distinctiveness, the examination will be conducted over word elements in composite trademarks.
ASSESSMENT ON DISTINCTIVE ELEMENTS:
This assessment will be applied in the case of non-composite signs. Due to the fact that a sign with a low distinctive character has a lower potency to perform its function of demonstrating commercial origin, the protection scope will be kept narrower. On the other hand, a relatively wider protection is provided to the signs which are at middle level or have relatively higher distinctiveness.
While giving the decision regarding the similarity with respect to the signs having low distinctiveness which have indirect connection with the subject good or service, ("star", "optimum"," global", "ideal", "super", "best", "premium", "ultra", "mega") or signs used as a geographical toponym identicalness of them will be required, and the non-distinctive side elements are required to be conceptually strongly close expressions. For example:
- "Textile – Textiles",
- "Automotive – Automotive Industry"
- "Clothing – Clothes"
On the other hand, the following expressions added to the phrases having low distinctiveness strength will be taken into account as side elements that create sufficient differentiation to remove the signs out of the scope of subclause 5/1(ç).
- "Textile – Clothing"
- "Shipping – Transportation"
The signs which are not widely used in daily language and which are not directly or indirectly connected with the goods or services that are included in the application are considered to be signs having medium level distinctiveness. In the assessment of similarity of such signs, the non-distinctive side elements should also be conceptually close expressions to each other.
- Safir Telecom – Safir Communication – Safir Machine
Specific signs that are not used in daily life are considered to be the signs having relatively high distinctiveness. In case the non-distinctive side elements adjacent to these signs are conceptually distant expressions from each other, this might eliminated by the high distinctiveness of the signs.
- For example; Vernalagnia Construction - Vernalagnia Textile
The Trademark Examination Guideline which had been published in 2011 is updated by TurkPatent in order to include some additional examination titles that are not included in the previous guideline, to meet the requirement of a more comprehensive examination guideline and to be able to give compatible and predictable decisions. Therefore, besides taking the EUIPO examination guideline into consideration, the opinions of the Re-Examination and Re-Evaluation Board has been taken. We believe that the new guideline will be particularly beneficial with regards to the predictability and consistency of the future decisions which will be given by TurkPatent.
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.