NON-CONVENTIONAL TRADEMARKS WITHIN THE SCOPE OF THE NEW EXAMINATION GUIDELINES
On 30 September 2019 the Turkish Patent and Trademark Office (TPTO) published the New Examination Guidelines summarizing the basic concepts, together with their interpretation and operation, of Article 5 of the Industrial Property (IP) Law No. 6769 focusing on the performance of practical duties in trademark examination on absolute grounds.
One of the key aspects highlighted in the New Guidelines is the protection of Non-Conventional Trademarks. Although the IP Law does not specifically describe Non-Conventional Trademarks, three-dimensional, color, sound and motion marks are expressly mentioned in Article 7 of the Regulation on the Implementation of the IP Law, and three-dimensional and pattern, color, sound, motion, taste and scent marks are expressly mentioned in the Trademark Examination Guidelines published in 2015 in connection with previous Decree Law No. 556 Pertaining to the Protection of Trademarks.
The new Guidelines set out the definition of and examination procedures for three-dimensional, pattern, color, sound, motion, taste and scent marks in an updated way as well. However, what makes the new Guidelines different from the previous ones is that Non-Conventional Trademarks detailed in the new Guidelines are not restricted to those mentioned above only. With the changes in the commercial transactions and the resulting expansion of the scope of trademark protection, a new Non-Conventional Trademark type, namely, position marks are introduced to the Turkish intellectual property right owners and seekers.
According to the new Guidelines, position marks consist of the specific way in which the mark is placed or affixed to a product. These marks gain distinctive nature with their position on and in proportion to a product. They provide protection on the composition of the mark together with their specific position on the product.
Position marks are deemed different from a mere three dimensional mark in that they always appear at the same position, color and size on a product and they are promptly associated with the product they are positioned with when seen out of context. Position marks must substantially differ from the common practice, representations and designs of their sector; their position on the product must be considered as an extraordinary practice.
Position mark applications, which unfairly restrict the liberty of any third parties from using the same signs on the same position of a product, must not be granted registration in order to prevent unfair competition and sustain public good.
For example, an ordinary etiquette sign cannot be registered as a trademark unless it leaves a different commercial impression on the consumers or acquired distinctiveness can be demonstrated. The distinctive position of an etiquette and the description of an etiquette sign can act as a trademark only if the special sign and position of the etiquette satisfy the function of indicating commercial origin.
The Guidelines further outline that in order to file a position mark, it must explicitly be indicated on the application form that the mark is a “Position Mark”. There are also some other requirements for the representation of position marks as per below:
a) It is compulsory that the position of the mark is indicated.
b) It is compulsory that the non-protected elements are outlined. These elements may be indicated with dashes or dotted lines.
c) It is optional to provide a description on how the mark is placed on a product.
Since the electronic filing system of the TPTO does not have an explicit classification for position marks to identify them at the time of filing, it is not possible to make a database search to locate any position marks in Turkey. Nevertheless, the new Guidelines present two exemplary cases to demonstrate the conditions of registrability adopted by the TPTO and the Turkish Courts in relation to position marks.
In one example, the Re-Examination and Re-Evaluation Board of the TPTO has rejected a position mark application, depicting an ordinary red stripe on the heel of a shoe, concluding that the mark cannot be perceived as a trademark by the average consumers in terms of “footwear” on the grounds of Article 5(b) of the Law, which states that “Signs which are devoid of any distinctive character shall not be registered as trademark”:
In another example, Court of Appeals, 11th Civil Law Chamber has decided that a position mark application where the mark is positioned on the tip of a shoe design is distinctive and can be registered as a trademark:
The analysis of the position marks in the new Guidelines is a crucial step taken by the TPTO to capture the new trends in the booming intellectual property fields. In line with the changing needs of the users, it is deemed significant that the TPTO also address other non-conventional marks such as hologram marks, multimedia marks and touch marks in the near future.