In the rapidly growing global economy, traditional trademarks are not always enough by themselves to attract consumers’ attention. Brand owners have developed a range of nontraditional trademarks to do this, including 3D trademarks as well as color, taste, sound, and motion marks.
In many countries, these nontraditional marks have been widely accepted as trademarks and granted legal protection. Debate continues in Turkey, however, as to which types of nontraditional trademarks have the necessary degree of distinctive character to be registered and enforceable as a trademark, as well as how a nontraditional trademark acquires distinctiveness through use and the acceptable methods to prove acquired distinctiveness.
New Law, Same Uncertainty
Turkey recently passed a new Industrial Rights Law
(Law No. 6769, Jan. 10, 2017 (IR Law)), previously reported here
, which abolished the Turkish Decree Law on the Protection of Trademarks (Decree Law). The new IR Law leaves in force a number of the requirements of the Decree Law to register a trademark, including the requirements of distinctiveness, representation in a manner which clearly indicates the sign or other element to be protected, and the registrability of traditional marks, such as words, personal names, designs, letters, numbers, product shape, and product packaging. While the Decree Law was silent on the registrability of nontraditional trademarks, the new IR Law introduces color and sound trademarks as being capable of protection. However, registering nontraditional trademarks remains problematic in Turkey, as the level of distinctiveness required to obtain registration is still uncertain under the new IR Law.
The previous position adopted by the Turkish Patent and Trademark Office (TPTO) and the Court of Appeals on nontraditional trademarks during the effective period of the Decree Law are worth analyzing. Although it is too soon to predict how the new IR Law will affect the current practice of the TPTO, prior decisions by the Office may help trademark owners to predict the registrability of nontraditional trademarks.
One of the most common nontraditional trademarks in Turkey is the 3D trademark. A key reason for this is that protection as a trademark allows brand owners to protect product designs and packaging for an indefinite period of time. In comparison, legal protection granted to industrial designs is limited to 25 years.
Under both the former Decree Law and the current IR Law, 3D trademarks are registrable in Turkey if:
- The product’s shape becomes more distinctive as it diverges from its natural shape, or what is standard in the relevant sector; and
- The average consumer is able to identify the origin of the 3D trademark without any effort.
For example, the TPTO found the following trademarks to possess sufficient distinctiveness, and granted registration:
|Reg. No. 2005 41726
Class: 9 (batteries)
|Reg. No. 2012 36615
Class: 3 (cleaning materials)
| Reg. No. 99 013944
Class: 34 (lighters)
The TPTO has not established any precedent regarding registration of slogans, which means that their registrability in Turkey remains unclear. When examining the distinctiveness of slogans, the TPTO has adopted a stricter approach than for traditional word marks. The TPTO requires slogans to contain more creativity and be perceived as trademarks in the eyes of the relevant public. Slogans can be registered in either Turkish or English, provided they meet the standard trademark registrability criteria of being new and endowed with distinctive capacity.
For example, the TPTO accepted registration of the following slogans:
- “İstanbul kadeh kaldırıyor” (Istanbul is making a toast) for Classes 30, 32, 33, and 34—Reg. No. 2006 39227;
- “It’s finger-licking good” for Classes 42, 43, 44, and 45—Reg. No. 2015 73470;
- “Bosch Yaşam için teknoloji” (Bosch: Technology for life) for Classes 7, 9, 11, 12, 37, 38, 41, and 42—Reg. No. 2005 32900;
- “Bira bu kapağın altındadır” (Beer is under this cap) for Classes 32 and 33—Reg. No. 2014 01252;
- “Hizmette sınır yoktur” (There is no limit to the service) for Classes 9 and 36—Reg. No. 2004 31273; and
- “Çek, yükle, mesaj at, letgoilekolay sat” (Take the photo, install, message, sell it easily with Letgo) for Classes 9, 35, and 42—Reg. No. 2016 73386.
If the TPTO rejects an application and maintains this decision on appeal, the matter can be referred to the civil court system. These cases are heard initially by the Ankara Intellectual Property Court and then by the court of appeals, if necessary.
The TPTO initially refused to register the trademark BECOME WHAT YOU ARE due to lack of distinctiveness; however, the Eleventh Civil Law Chamber of the Court of Appeal later ruled that it should be registered. Decision no. 2000/7674 E. 2000/9346 K. (Nov. 20, 2000).
There are also instances in which the TPTO has refused the registration of slogans. For example, the TPTO refused to register the phrase “Technology changes, humanity is the essence” (application no. 2003/17192) for goods in the technology sector due to lack of distinctiveness. This TPTO’s decision was also confirmed by the Eleventh Civil Law Chamber of the Court of Appeal, citing that the word “technology” is the main emphasis of the slogan, and this word should be available for use by everyone. Decision no. 2008/9071 E. 2010/407 K. (Jan. 18, 2010).
Moreover, TPTO has held that the following slogans lack distinctive character:
- “Dünyanın en hızlı altyapısı” (World’s fastest infrastructure) for Classes 9, 35, 38, 41, and 42—App. No. 2015/65962;
- “Dünyanın en güvenli çelik kapısı” (World’s safest steel door) for Class 6—App. No. 2012/79378;
- “Kaliteli takim yaratmak” (Creating quality team) for Class 16—App. No. 95/005341; and
- “Kaliteli mallar uygun fiyatlar” (Quality goods, affordable prices) for Class 29—App. No. 2016/41711.
Even though there were precedents in case law regarding the registrability of colors, the old Decree Law did not specifically address trademark registration for colors. The new IR Law introduces color and sound trademarks as capable of protection by expressly mentioning those as trademarks for the first time in the legislation.
However, applications to register a single color, or a color combination, will not be accepted unless they have achieved acquired distinctiveness or secondary meaning. Although Turkey is not a member state of the European Union, the TPTO’s 2015 Trademark Examination Guidelines (TPTO Guidelines) refer to the Sieckmann decision by the Court of Justice of the European Union. The Sieckmann decision states that a sign must be (i) clear (not ambiguous), (ii) precise (e.g., a color cannot merely be described as “purple”), (iii) self-contained (e.g., music notes), (iv) easily accessible (e.g., the Pantone international database), (v) intelligible, (vi) durable (the graphical representation must remain consistent), and (vii) objective. CJEU, C-273/00, Dec. 12, 2002.
The TPTO generally determines that trademark applications for a color per se, or for a color combination, do not meet the trademark registration criteria because they lack distinctiveness; however, a color or color combination can be registered in Turkey if it has acquired distinctiveness through extensive use and has been associated with a single source of goods or services in the eyes of consumers. For a color mark to be represented in a manner that clearly indicates the extent of protection that is requested in a trademark application, filing a sample of the color will not be accepted by the TPTO because the sample may fade. The TPTO requires that such applications include a written description of the color, as well as the relevant codes from an internationally recognized color identification system (for example, Pantone, RAL, or HKS).
In this context, the TPTO has allowed registration of the following trademark applications:
|Reg. No. 2005 47462
Class 30 for chocolate and goods containing chocolates.
|Reg. Nos. 2010 28338 and 2014 03556 Class 32 for rejuvenating beverages, energy drinks, beverages made from whey, non-alcoholic beverages including isotonic, hypertonic, and devices), beers, malt beers, wheat beers, black beer, English beer (ale), stout, lager, mineral waters, aerated waters, fruit beverages and fruit juices, syrups, essences, and other preparationsused for the preparation of beverages, sparkling tablets and powders for beverages and non-alcoholic cocktails.
The Eleventh Civil Law Chamber of the Court of Appeal previously emphasized that a color alone is not distinctive enough to be registered as a trademark. Decision nos. 1998/9198 E. 1998/8485 K. and 1996/8650 E. 1997/1586 K. The court has softened its approach, however, since these decisions. More recently, it ruled that while registration of a single color is not possible on the basis of restricting society from using that color, color combinations of two or more colors can be perceived as a trademark and are deemed to possess distinctive character. 11th Civil Chamber of Court of Appeal decision no. 2005/9360 E. 2006/9986 K.
The new IR Law provides for the protection of a sound as a trademark, as long as it can be represented in a manner which is sufficiently clear to indicate the extent to which protection is sought and is distinctive. According to the TPTO Guidelines, applications to register sounds as trademarks must include an electronic sound recording, preferably in MP3 audio format and not exceeding 10 megabytes. It is also advisable to submit the sound’s graphical representation although this is not a requirement. The requirement of representation in a manner that clearly indicates the extent of protection which is sought is met by supplying musical notations, specifying both key and rhythm. The TPTO does make it clear that an entire musical work, or long part of a work, cannot be perceived as a trademark, as it does not possess distinctive character. Trademark Examination Guidelines, published by TPTO, 2015 Ankara, p. 26.
Taste, Smell, and Touch
Since the main two requirements for trademark registration are distinctiveness and graphic representation, applications for taste, smell, or touch trademarks are not registrable in Turkey. The TPTO Guidelines specifically state that tastes, smells, and touch cannot be registered as trademarks because they cannot be clearly represented. The TPTO will not accept chemical formulations for a taste or smell as sufficient graphical representation. While the new IR Law does allow for the registration of some nontraditional trademarks, the new law does not go as far as to contemplate registration of all types of nontraditional marks.
In principle, the TPTO acknowledges the eligibility of motion trademarks for registration, provided the application can be represented in a manner clearly indicating the extent of the protection which is being sought and is distinctive. In this context, the applicant must submit:
- A series of drawings showing the motion;
- A specification to describe the trademark’s functions and what changes have been realized in each image; and
- A CD corresponding to the images and the specification.
Even though few motion trademarks have been the subject of trademark applications, recently, a very popular motion, known widely in social media as a signature move of Nusret Gökçe, nicknamed “Salt Bae” (a Turkish butcher, chef, and restaurateur who owns a chain of Turkish steak houses), has been applied for in application no. 2017/08618. The images submitted with the application are as follows:
The TPTO has concluded its examination as to the distinctive character and, finding that the trademark held distinctive character, it was registered on February 7, 2018, in Classes 25, 30, and 43.
Proving Acquired Distinctiveness
When the TPTO receives an application for a nontraditional trademark, it generally issues a rejection on the basis that it lacks distinctive character. This should be expected, and applicants usually challenge such a decision. In practice, the rejection should simply be viewed as the TPTO wanting applicants to prove the trademark’s distinctive character. It is yet to be seen whether this practice will change, at least for color and sound trademarks, which are now expressly included in the new IR Law.
Applicants can overcome the TPTO’s decision that a sign lacks distinctive character if the trademark has been used before the filing date of the application and, as a result, has acquired a distinctive character for the goods and services covered by the application. Art. 7/2 of the Decree Law; Art. 4/2 of the new IR Law.
Supporting evidence should show the sign’s acquired distinctiveness before and up until the filing date. Evidence must relate to the relevant public for the goods and/or services covered by the sign. It must demonstrate that a sufficiently large portion of the relevant public is aware that the sign functions as a trademark (even though its source may be unknown). The TPTO examiner evaluates the evidence and draws an inference about the relevant public’s recognition of the sign.
Although it is not mentioned either in the Decree Law or in the new IR Law, the TPTO takes the following evidence into account when considering acquired distinctiveness:
- Opinion polls carried out by independent and well-recognized organizations/institutions);
- Statements from trade and consumer organizations;
- Sales, which should indicate the product’s sales in relation to total market sales figures;
- Turnover and advertising/promotion figures, which should only relate to the goods or services with respect to which registration is sought;
- Successful infringement enforcement; and
- Previous trademark registrations granted in different countries, if any.
Both the old Decree Law and new IR Law state that a trademark may be registered if it possesses distinctive character and it may be represented in a manner that clearly indicates the extent of protection which is being sought. Even though the new IR Law now expressly recognizes color and sound trademarks as being capable of protection, the TPTO had already been granting registrations to color and sound trademarks, as well as other nontraditional trademarks if the trademarks met the requirements of distinctiveness and being graphically representable.
In this context, the main hurdle for registering nontraditional trademarks in Turkey is convincing the TPTO that the trademark possesses distinctive character. If the TPTO rejects a trademark application on this basis, its decision can potentially be overcome by proving acquired distinctiveness. Considering the TPTO’s historical approach to such marks, receiving a rejection based upon a lack of distinctiveness should be expected, and such a refusal should be recognized as the beginning of a long challenge against the TPTO and possibly also the intellectual property courts.
It seems that it will take some time before there is a settled practice with respect to the registration of nontraditional trademarks in Turkey.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.
© 2018 International Trademark Association