- ELECTRIC PLAYGROUND was found descriptive and devoid of distinctiveness in Türkiye, but was registered as a trademark for the same services in the US
- The approach adopted by the Turkish IP Office and courts was arguably excessive and disproportionate
- The application was refused for sports, culture and entertainment services in Class 41
A recent IP case has evaluated the descriptiveness and distinctive character of English-language word marks with respect to Turkish consumers
Background
The plaintiff applied to the Turkish IP Office to register the following mark in Class 41:
The application was partially refused for sports, culture and entertainment services in Class 41 due to its descriptiveness and lack of distinctive character. Further to the applicant's appeal, the Higher Board within the IP Office sustained the partial provisional refusal.
The applicant filed a court action to cancel the office's decision, alleging that:
the mark was not associated with the services subject to the partial refusal; and the mark had acquired distinctiveness through intensive use.
IP Court decision
The First Instance Court agreed with the applicant and cancelled the office's decision partially refusing the application by evaluatingthat:
the sign was distinctive and non-descriptive for the services in Class 41 as it would be perceived as a sign that promotesservices of a particular commercial enterprise and distinguishes it from the same type of services of other enterprises; and
the sign was distinctive and not descriptive of the services that were partially refused in terms of type or quality.
In terms of the argument that the mark had acquired distinctiveness through use, the court found that such claim was notsubstantiated by the plaintiff.
Regional Court of Appeals decision
The Regional Court of Appeals overturned the lower court ruling, concluding that it was not possible for the phrase 'electricplayground' to indicate any commercial origin. Therefore, the trademark did not fulfil the essential requirement of distinctiveness.The court determined that consumers would perceive the sign as designating a standard electric playground, and the colouredstylisation would not change this.
For these reasons, the Regional Court of Appeals concluded that:
the sign was descriptive and non-distinctive for sports, culture and entertainment services in Class 41;
the plaintiff had failed to substantiate its argument that the trademark had acquired distinctiveness through continuous usein the marketplace; and
the IP Office's decision was thus legitimate.
Court of Cassation decision
At the final stage, the case was adjudicated by the Court of Cassation upon the plaintiff's appeal. The Court of Cassation upheld theRegional Court of Appeals' decision without a detailed analysis.
Therefore, the partial provisional refusal of the trademark ELECTRIC PLAYGROUND became final and binding.
Comment
Arguably, both the IP Office and the IP-specialised courts adopted an excessive and disproportionate approach to thedescriptiveness and distinctive character of a phrase in the English language, considering that the mark included a unique stylisationand positioning of the phrase – and especially bearing in mind that the relevant consumers are Turkish consumers, whose nativelanguage is Turkish and English-speaking skills are very limited.
It is noteworthy that an identical phrase, without stylisation, was registered as a trademark (albeit in the name of a different owner)for the same services in the United States, where English is the mother tongue. The present case-law by the Turkish authoritiesthus implements a far-fetched approach to the absolute grounds for refusal based on descriptiveness and lack of distinctivecharacter, and reflects an interpretation of the relevant refusal grounds that is narrower than that of the US authority.
In cases where trademarks with foreign word elements are provisionally refused by the Turkish IP Office due to descriptiveness andlack of distinctiveness, the ultimate strategy for success could be to draw attention to the registration of the same or similar signs inforeign jurisdictions, and underline that it is neither accurate nor proportionate to provisionally refuse such applications in Türkiye.
Originally published by WTR, 24 April 2025.
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.
