We answered questions about the protection of three-dimensional brands within the framework of Turkish Law and European Union legislation.
The appearance of trademarks may be illustrated in different ways with the current, rapidly growing technology and marketing opportunities. The three-dimensional trademarks emerge as the most preferred alternative of the non-traditional marks under trademark law.
Pursuant to Article 4 of Turkish Industrial Property Law No. 6769 ("IP Law"), it is concluded that the registration of three-dimensional trademarks is possible. However, the criteria regarding the registration of such trademarks are not regulated apart in IP Law.
Nonetheless, due to their nature, three-dimensional trademarks are subject to a rather strict evaluation compared to the traditional trademarks on some aspects especially in terms of graphical representation and the fact that three-dimensionality that results from the nature of the goods is not considered as a trademark.1
II. CRITERIA TO BE CONSIDERED WHEN REGISTERING THREE-DIMENSIONAL TRADEMARKS
The most important issue arising from the registration of three-dimensional trademarks is the criteria that require goods or their packaging to be represented in a distinctive, precise, and clear manner regulated under Article 4 of IP Law.
The Turkish Patent and Trademark Office ("TÜRKPATENT") is more selective on this issue for preventing the possibility of registering a three-dimensional trademark that is subject to the registration by virtue of its packaging without being distinctive.
The regulation on IP Law which states that the signs consist of the shape or another characteristic that results from the nature of the goods themselves cannot be subject to trademark registration constitutes one of the issues on the evaluation of three-dimensional trademarks.2 In this sense, just as the registration of ingredients or formulation of the goods in traditional trademarks is not possible, in the same way, a generic banana fruit without being distinctive or genuine cannot be registered as a three-dimensional trademark.
In the application of three-dimensional trademarks, associating the trademark with the indication and figure is emphasized. Likewise, it is examined whether the trademark is individually coming out as a trademark that belongs to the proprietor company by evaluating whether the trademark is distinctive and it is directly associated with the trademark concentrically.3
To exemplify, requesting the registration of a pickle as a three-dimensional trademark is conflicting either with the principle of independence of trademarks or the distinctive element required for the trademark registration and in this context not convenient for the registration.
In other respects, in the applications, it is examined whether the distinctive element of the three-dimensional figure is a result of a technical necessity or not.4
Likewise, the design alterations made on a three-dimensional trademark should be protected as an industrial design unless it is not associating with a level that leads directly to evoking the goods with the trademark owner.5
Hence, with the aim of protecting the design for a longer period, trademark protection can be applied in practice. In this context, for the three-dimensional trademarks which ensure the genuineness with the packaging/label, to fall within this scope and being rejected may be possible, therefore, whether the recognition and association criteria are covered for these trademarks should be examined before the application.6 In this context, it is deduced that the evaluation of the distinctiveness criteria is interpreted with a higher perception for three-dimensional trademarks when compared with the traditional trademarks.7
III. APPLICATION PROCESS BEFORE TÜRKPATENT
As a consequence of the TÜRKPATENT application system does not contain a separate option for three-dimensional trademarks, the three-dimensional trademarks may be perceived as two-dimensional. In contrast with that, the three-dimensional trademark applications before the EU application system are carried through separately under the "shape mark" section.8
Pursuant to Article 7 of IP Law on the application stage of the three-dimensional trademark, it is required to; (i) indicates that the application is a three-dimensional trademark application on the application form, (ii) include the clear and precisely understandable pictures of the figure in one or different angles. Moreover, attention is paid to the graphic presentation of the images, in a way that does not affect the integrity of the brand, and in 591×591 JPG format. The same conditions apply for the applications with multiple pictures therefore pictures that present the trademark with integrity from different angles without aiming to reflect different parts and pieces should be selected.
IV. COMPARISON OF THE EU-TURKISH TRADEMARK LAW
When the EU legislation is analyzed, it is interpreted that Turkey constitutes integrated trademark legislation as a result of the harmonization process. In this context, it is observed that the Court of Cassation preserves the perspective of TÜRKPATENT started with the harmonization process and gives decisions in a similar direction since the harmonization process.9
When the Court of Cassation and Court of Justice of the European Union ("CJEU") decisions are examined, a trademark application involving the shape of a braided cheese of a Turkish brand which is rendered by both institutions draws attention. At this stage, when the Turkish authority decisions are analyzed with the CJEU decisions, it is concluded that the subject's braided cheese shape is found to be lack distinctiveness and descriptive for the relevant business field in the examinations made.10
Due to the possibility of the figure subject to the application may constitute the goods itself, the distinctiveness factor as being one of the general principles of trademark law is evaluated in a rather strict manner compared with the traditional trademarks. Accordingly, when a comparison is made concerning the EU and Turkey, it is concluded that the authorities are in consensus. However, the developing technology leads the innovations regarding the three-dimensional figures and multiples the possible trademark presentation ways. In this context, in order to prevent the unfair use of three-dimensional trademarks caused by the nature of the trademark, it is important to assess more detailed and formerly separated criteria for the distinctiveness evaluation for the functionality of the three-dimensional trademarks.
1 ALKIBAY, Sanem; GENÇ, Ceren; Journal of Recreation and Tourism Research 2017, 4(2) , p.16
2 KARAHAN, Sami; SULUK, Cahit; SARAÇ, Tahir; NAL, Temel, Fikri Mülkiyet Hukuku, Ist. 4. Edition, p. 161-162
3 YAPAR, Fulya; Türk Hukukunda Marka Olabilecek Isaretler, Ank. 2018, p. 29, 124
5 ÇOLAK, Ugur; Türk Marka Hukuku, Ist. 4. Edition, p. 90
6 ÇOLAK, p. 89
7 SULUK, KARASU, NAL, p. 161
8 https://euipo.europa.eu/tm/efiling/wizard.htm?execution=e2s1 (accessed on 04.08.2021)
9 YAPAR, p. 4
10 CJEU, T-572/19, ECLI:EU:T:2020:129
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