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Protecting non-traditionaltrademarks

Barış Kalaycı and Mutlu Yıldırım Köse of Gün + Partners analyse the rulesaround the protection of non-traditional trademarks, including the approach taken by

the Turkish Trademark and Patent Office and the courts, the protection of colour,sound and movement marks and the difficulties of enforcing such marks

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Turkey NON-TRADITIONAL TRADEMARKS

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

Non-traditional trademarks are not specifically described in theTurkish Industrial Property Code (the IP Code) which cameinto force on January 10 2017 in Turkey. Since there is no specialprovision in the code regarding the registration of non-tradi-tional trademarks, the principles pertaining to the registration ofother signs are also applied to non-traditional trademarks. Ac-cordingly, “absolute refusal grounds” enumerated in Article 5 ofthe IP Code are applied to non-traditional trademarks as well.

In Article 4 of the IP Code, a new definition was given to theword trademark and the graphical representation criteria forsigns to be registered as a trademark has changed to “signs ca-pable of being represented on the register in a manner whichenables the competent authorities and the public to determinethe clear and precise subject matter of the protection affordedto its proprietor.” The terminology has therefore been alignedwith EU trademark directives.

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

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

• Representation of the mark, including a view from one sideor multiple angles so as to provide a clear and precise un-derstanding of the subject of protection, must be submittedfor three-dimensional (3D) trademark applications.

• Recordings of sound suitable for listening and storing inelectronic form must be submitted to the office for soundtrademark applications.

“Since there is no special provisionin the code regarding theregistration of non-traditionaltrademarks, the principlespertaining to the registration ofother signs are also applied tonon-traditional trademarks”

Turkey NON-TRADITIONAL TRADEMARKS

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• Colour images and indication of the colour code accepted bythe office must be submitted for colour trademark applications.

• Images describing the trademark’s motion or a motionlessor moving image sequence must be submitted for motiontrademark applications.

The regulation is now in line with the EU Trademark Im-plementing Regulation (2868/95) regarding the represen-tation of trademarks. This is significant progress regardingnon-traditional marks, since the abolished Regulation onthe Implementation of Decree-Law 556 did not includeprovisions for sound, motion, colour or 3D marks. The newregulation now clearly explains what must be submitted forthe registration of different kinds of trademarks and reduceslengthy procedures.

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

Approach of the office and courtsto non-traditional trademarksWhen 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 strictand, at that time, the vast majority of applications for 3D trade-marks were rejected on the ground that they lacked inherentdistinctiveness, without even considering whether the markhad acquired distinctiveness or not.

In contrast, the specialised IP courts always carried out abroader and a more detailed examination of the registrabilityof 3D trademarks, and most of the applications which hadbeen rejected at the administrative stage were then allowedwhen the decisions of the office were challenged before theIP 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 exam-ination, and also on appeal to the Re-Examination and Re-eval-uation Board (High Board) of the office.

Figure 1, 2 and 3

Mutlu yıldırım köse

Mutlu Yıldırım Köse has been with the firm since 2006 and apartner since 2017. Mutlu is both a lawyer and trademarkand patent attorney. Her IP practice focuses on patents, util-ity models, trademarks and design.

She has been involved in numerous projects concerning allaspects of IP, including both contentious and non-con-tentious trademarks, copyrights, industrial designs, patents,domain names and unfair competition. She has extensivelitigation experience and has advised domestic and foreignclients on their IP strategies, legal disputes, licensing andsettlement agreements.

She also works on IP prosecution, supervising and draftingoppositions and appeals for trademark and design applica-tions before the Turkish Patent and Trademark Office.

She represents foreign, multinational and Turkish clientsfrom numerous business sectors including electronics, fash-ion, cosmetics, textiles, entertainment, hotel and tourism,media and entertainment, pharmaceuticals, radio and TVbroadcasting and telecoms on all aspects of intellectualproperty and regulatory matters.

Barış kalaycı

Barış Kalaycı joined the firm in 1997 and has been a partnersince 2010. He is co-chair of the firm’s intellectual propertyand business crime and anti-corruption practices.

His intellectual property practice focuses on trademarks, de-signs and copyrights. He has been involved in numerousanti-counterfeiting and anti-piracy campaigns, as well as civillitigation cases mostly involving preliminary injunction re-quests concerning all aspects of IP. He also focuses on cus-toms IP protection against counterfeit goods beingexported, imported and in transit.

Baris leads the firm’s in-house investigations departmentwhich supports the investigative needs of all the firm’sclients and practice groups, especially in anti-counterfeitingand anti-piracy matters.

Barış also leads the teams in major business crime and anti-corruption cases as well as some high profile commercial liti-gation.

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The decisions were then challenged before the Ankara IPCourts, which decided that the above-mentioned devices hada unique shape and, therefore, had the requisite distinctive char-acter. The marks have since been registered.

However, it seems that the office has now softened its ap-proach. In recent decisions, the office carried out a more de-tailed examination of the distinctiveness anddescriptiveness of 3D marks and accepted some applications for registration.

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

The applicant appealed the office’s deci-sion and the appeal was accepted by the office, which statedthat the bottle subject to the application was original and dis-tinctive. Therefore, the application had enough distinguishingcharacteristics to be perceived as a trademark.

In another recent case, the office initiallyrejected the application for the shape ofBallantine’s Finest bottle with label (application no. 2013/64583, depicted onthe left) on the ground that it lacked distinctiveness.

The refusal decision of the office was challenged and the officeaccepted the appeal and decided to register the mark, statingthat the application was sufficiently distinctive.

Colour marksWhen we turn to look at colour marks, it would be appropriateto examine them in two groups, “single colour trademarks” and“colour combination trademarks”. In practice, it is accepted thattrademarks consisting of colour combinations are more distinc-tive than single colour trademarks.

With regards to single colour marks, the trademark no. 200547462 (IR 644464) (Figure 4) registered for “chocolate andproducts including chocolate” in Class 30 can be used as anexample of a single colour mark. However, on the otherhand, there are various decisions rendered by the Court ofAppeals stating the principle that single colours cannot bemonopolised. In line with these Court of Appeals decisions,the office also generally rejects single colour marks. For in-stance, the trademark application no. 2017/46274 (Figure5) was rejected by the office, despite comprehensive evi-dence being filed during the appeal stage. Therefore, we areof the opinion that registration of sole colour trademarks willcontinue to be burdensome.

Figure 4 and 5

On the other hand, distinctiveness of colour combinations con-sisting of two or more colours is higher than trademarks consist-ing of one colour. Indeed, the Court of Appeals is also of theopinion that colour combinations can be registered as trade-marks. In its decision numbered 2005/9360 E. – 2006/9986 K.,the 11th Civil Chamber of the Court of Appeals stated that “inprinciple, it is not possible for a sign consisting of only one colourto be registered as a trademark because it is not capable of beingdistinctive by itself and its public use is equitable. However, in thiscase the sign seeking registration consists of triple colour combi-nation, it is specifically designed by bringing three colours to-gether, it has distinctiveness and the conditions for registrabilityare fulfilled.” Accordingly, there are various trademark registrationsconsisting of two or more colours such as Figure 6, 7 and 8.

Figure 6, 7 and 8

Sound and movementSounds are also registered as trademarks in Turkey, as long asthey satisfy the criteria for a trademark and have distinctive char-acter. There are various sound trademarks registered before theoffice such as Nokia’s boot-up tone which is registered beforethe office with no. 2017 80232.

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

Enforcement of non-traditional marksOn the other hand, although it is possible to register non-tradi-tional trademarks, enforcement of these trademarks may be dif-ficult in some instances as well. For example, in a recent decisionrendered in a criminal action, the District Court stated that usinga 3D version of a trademark on products cannot be considereduse of a trademark. Also, the accused may not have known thatthe design of the buckle is a registered trademark. As the accusedmay not have known this is a trademark, he cannot be deemedto have had the intention to commit a crime. Thus the court de-cided to acquit the accused and to return the seized goods tohim. The decision has been appealed before the Court of Ap-peals and the decision of the higher court is now expected. Al-though the decision is not final yet, it shows how difficult it is toenforce the rights of non-traditional trademarks.

In conclusion, we can say that along with traditional word anddevice marks, the registration of non-traditional elements, suchas 3D shapes, colours and sounds is expected to increase in thenear future considering the recent changes in the Turkish Trade-mark Law which run paralell to the EU directives. However, it isclear that the office and courts still have a strict approach to theprotection and enforcement of non-traditional trademarks.