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Absolute Grounds for Refusal in Trademark Registration

May 17, 2020 - Digitally signed and timestamped ©

Trademark registration is a process that can be initiated by submitting a trademark application and related annexes thereof to the Turkish Patent and Trademark Office (hereinafter referred to as TURKPATENT) - Trademarks Department.

TURKPATENT – Trademarks Department will examine, ex officio, a trademark application in terms of absolute grounds for refusal.

Signs included in the scope of absolute grounds for refusal as mentioned in article 5 of the 6769 numbered Turkish Industrial Property Law (hereinafter the ‘Turkish IP Law’), except clauses ‘ç’ and ‘i’, are refused as they are based on public interest, and even on public order; therefore no claim can be asserted on them, and they might be used by everyone. [1] 

Therefore, as a general rule, there is no possibility of registration if the trademark application is among the absolute reasons for rejection.

Signs regarded within absolute grounds for refusal consist of the following:

a. Signs that Cannot Be Identified as a Trademark:

According to the 'a' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which are within the scope of article 4 cannot be identified as a trademark and thus, incapable of being registered.

Article 4 of the same Law stipulates that: “Trademarks may consist of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.”

Therefore, if the sign that constitutes the trademark application does not have these qualifications, it will cause the rejection of the related registration request.

b. 
Signs that are Devoid of Distinctive Character:

According to the ‘b’ clause of the first paragraph of Article 5 of the Turkish IP Law, signs which are devoid of any distinctive character shall not be registered as a trademark.

In assessing whether a trademark is devoid of distinctive character, reference should be made to the goods or services for which registration is sought and to the perception of the relevant public, being average consumers of the goods or services in question, who are reasonably well-informed and reasonably observant and circumspect. [2] Just as the European Court of Justice (ECJ) held in a decision [See Messe München GmbH. v OHIM (Case-T-32/00)] by referring to the criteria at issue that the application for community trademark made with the aim to have the expression “ELECTRONICA” registered in classes of goods and services directly related to electronics do not bear the stamp of a distinctive character.

Similarly, registration of pictures and figures relating to products that are mainly included within a class of goods might be refused, inter alia, as the related pictures and figures do not have the distinctive character for that class of goods. Just to give an example to the issue at hand, upon the action for cancellation of the refusal decision of TURKPATENT for registration filed by the applicant for using the multi-colored pictures and figures in 5 different designs containing hazelnuts in nutshells, semi-broken forms, and hazelnut leaves as a trademark in classes 29 and 30 containing hazelnuts, specifically based on the issues that the trademark was not of distinctive character and it contained characteristic features of the goods in the class subject to the application as well as figures stemming from the original natural structure of the goods, Turkish Supreme Court of Appeals – 11th Chamber adjudicated upon dismissal of the action through 09.07.2004 dated and case no 2004/6927, decision no 2004/7676 decision by holding that by TURKPATENT was right in its refusal of the request for registration.

According to the provision in the second paragraph of article 5, a request for registration cannot be refused if the related sign has been used prior to the registration date and gained a distinctive character through such use in respect of goods and services subject to registration, though is included in the scope of this article.

c. Signs which are identical to or indistinguishably similar to a trademark:

According to the 'ç' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type shall not be registered as a trademark.

In such a case, a trademark application for a sign subject to trademark registration and an earlier registration or application in respect of an identical or confusingly similar one, in the same or confusingly similar class may be concurrently pointed at issue. “In this circumstance mentioned in article 5, there are trademarks which are strong and clear in such a manner that shall render further examination unnecessary in case of ambiguity or public confusion by virtue of the similarity between the trademarks." [3] For example, in the decision of the Turkish Supreme Court of Appeals – 11th Chamber (Case no. 2015/5821, Decision no. 2015/13282), it was ruled that there was no identicalness and indistinguishable similarity between the trademarks covering the same classes as and within the scope of this article. The justification of the said decision was that the trademark application in question was formed with special calligraphy and that above the phrase TAURUS there is an additional device component in blue, red, and yellow color which resembles three horns. The 11th Chamber further emphasized that restrictive interpretation is required in the course of this kind of examination.

In another decision of the Turkish Supreme Court of Appeals – 11th Chamber (Case no. 2015/4681, Decision no. 2015/12081), it was ruled that there was no identicalness and indistinguishable similarity between the trademarks and covering the same classes.

Again, in the decision of the Turkish Supreme Court of Appeals – 11th Chamber (Decision Date: February 11, 2019, Case no. 2017/3912, Decision no. 2019/1044), it was ruled that there was no identicalness and indistinguishable similarity between the trademark application “bodrummakel mühendislik pazarlama yaşamı kolaylaştırıyoruz” (slogan and device) and trademarks subject to rejection decision of the TURKPATENT – Reexamination and Evaluation Board which were composed of the main component MAKEL covering the same classes.

d. Descriptive Signs:

According to the 'c' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which consist exclusively or include as an essential element of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or of the rendering of the services or other characteristics of goods or services are regarded within the scope of absolute grounds for refusal and shall not be registered.

The basic ground for consideration of this circumstance, which is mentioned in clause c of paragraph 1 in article 3 of the Directive No. 89/104, and in clause c of paragraph 1 in article 7 of the Community Trade Mark Regulation, as absolute grounds for refusal is that ‘other persons are also free to use the related sign in the class of goods and services subject to an application for registration, in other words, there is the public interest in the use of the related sign by everyone. [4] 

With regard to this issue, the Turkish Supreme Court of Appeals adjudicated in its decision in relation to the registration of the term ‘Multicanal’ as a trademark,  that the mentioned sign cannot be registered since the term referred to a multichannel TV or radio channel; the first word of this term, ‘Multi’, refers to multiplicity, in other words, quantity as per art. 7/1-c, and the second word ‘Canal’ means TV or radio channel; that combination of these two words does not contain a separate meaning, therefore the sign does not have a distinguishing quality in the class subject to registration, yet it refers to type, kind and quantity. (See the Supreme Court of Appeals – 11th Chamber decision, dd. 09.11.2000 under case no. 2000/6135 and decision no. 2000/8767.)

Again, in the decision of the Turkish Supreme Court of Appeals – 11th Chamber (Decision Date: January 14, 2020, Case no. 2019/2241, Decision no. 2020/368), it was pointed out that the expression 'SÜZME' is a word that indicates quality in terms of milk and dairy products, honey and tea commodities in Turkish, and that the average consumer perceives this phrase as a word that indicates quality.

Similarly, an application for registration of the trademark EUROLAMB in England was refused due to its descriptive character in the class comprising meat and meat products and indicating geographical sources, as well as on the grounds that the word lamb contained in the application would create an impression as if the meat came from Europe. (See. EUROLAMB Trademark [1997] RPC 279.)

ECJ appropriately adjudicated in Procter & Gamble Co. v OHIM (Case-383/99P – Baby Dry) decision that it is not suitable to make an evaluation on whether one or more words subject to application in the related class in the scope of this clause is only in descriptive form or not. It is held in the same Decision that it must be primarily analyzed whether the words subject to evaluation can be used or not by other persons as well to specify characteristic features of goods and services in the class subject to an application for registration.

According to the provision in the second paragraph of article 5, a request for registration cannot be refused if the related sign has been used prior to the registration date and gained a distinctive character through such use in respect of goods and services subject to registration, though is included in the scope of this article.

e. Customary Signs or Indications: 

According to the 'd' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which consist exclusively or include as an essential element of signs or indications used by everyone in the trade area or which serves to distinguish members of a particular professional, vocational or commercial group from others, are also are regarded within the scope of absolute grounds for refusal and shall not be registered.

Upon examination of the related clause of the article, it is observed that any sign which shall be selected as a trademark might be subject to refusal if used only in the commercial field.

Signs exclusively consisting signs and symbols indicating membership to any professional, artistic or commercial group or union (for instance, Turkish Union of Chambers and Commodity Exchanges, Turkish Bar Union, Turkish Professional Associations and Federations for the Authors of the Intellectual and Artistic Works (İLESAM), Chamber of Certified Public Accountants, etc.) shall be refused in the scope of this paragraph.

According to the provision in the second paragraph of article 5, a request for registration cannot be refused if the related sign has been used prior to the registration date and gained a distinctive character through such use in respect of goods and services subject to registration, though is included in the scope of this article.

f. Signs Resulting from Nature or Technical Necessity of the Product:

According to the 'e' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which are mandatory to obtain a technical result or give substantial value to the goods shall not be registered.

Basic grounds underlying the issue that registration of a figure containing the characteristics mentioned in this paragraph are that ‘the figure is devoid of any distinctive character in the class subject to registration’; ‘other persons in the field subject to the class in question are free to use that figure’, and ‘the avoidance in the grant of such a figure available for use by everyone to a specific person is basically of public interest.'

Even if a figure containing the features specified in the scope of this clause can be used as an accompanying element in any application and registered accordingly, it is believed that the trademark owner shall not be able to acquire an absolute right solely on that figure upon the related registration.

g. Deceptive Signs:

According to the 'f' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which would deceive the public, for instance, as to nature, quality, or geographical origin of the goods or service are regarded within the scope of absolute grounds for refusal and shall not be registered.

In case a sign indicates characteristics, quality, production place or time, and geographical source of specific goods or services; such sign shall not be granted to the monopoly of any person as it is offered to public use. [5] 

A sign may deceive the public in many ways. By using the expression such as in the article, such circumstances are mentioned to be not of a limited nature. [6]

 
h. Specially Protected Emblems:

According to the 'g' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which shall be refused pursuant to Article 6ter of the Paris Convention; and also according to the ‘ğ’ clause of the same article, signs other than those covered by Article 6ter of the Paris Convention but which are of public interest, and which contain historical, cultural values and emblems, badges or escutcheons for which the consent of the competent authority has not been given shall not be registered.

Article 6ter of the Paris Convention comprises provisions relating to the prohibition of flags, badges, escutcheons, stamps, and official signs pertaining to the parties of the convention, and similar signs of sovereignty and of signs pertaining to international organizations. In case of an application of trademark registration for signs to be evaluated in this scope although no permission for use is obtained from competent authorities, TURKPATENT shall refuse such applications during ex officio examination.

Requests for registration of trademarks incorporating other badges, emblems, or escutcheons concerning the public and being of particular historical and cultural interest to the public and not subject to permission for registration by relevant authorities, though not being covered by Article 6ter of the Paris Convention, shall also be refused under stated clauses. ı. Trademarks that incorporate religious symbols Registration of such signs is prohibited with the aim to prevent the public from being offended by contempt of religious values and symbols or exploited through the use of such signs.

i. 
Trademarks that incorporate religious symbols

Registration of such signs is prohibited with the aim to prevent the public from being offended by contempt of religious values and symbols or exploited through the use of such signs. [7]

j. 
Trademarks that are contrary to public policy and to accepted principles of morality

The Turkish Supreme Court of Appeals – 11th Chamber stated on February 08, 2000, dated, Case no 1999/7314 and Decision no 2000/1195 decision that contradiction of a trademark to public policy and accepted principles of morality shall appear in words, figures, letters, numbers, signs containing components of that trademark, and the image and message created by them; and pointed out in a considerably explanatory manner that, for instance, trademarks including elements which promote crime and are in contradiction with human rights, democratic order and containing disruption shall be regarded as contrary to public policy; and trademarks in contradiction with family order, established practices, and customs shall be regarded as contrary to accepted principles of morality.

k. Trademarks comprising geographical signs:

According to the 'i' clause of the first paragraph of Article 5 of the Turkish IP Law, signs which consist of a registered geographical sign or which contain a registered geographical sign are also regarded as an absolute ground and shall not be registered as a trademark.

Conclusion:

As a rule, the basis of protection provided by the Turkish Industrial Property Law No. 6769, depends on the condition that the relevant sign has been registered.

Signs included in the scope of absolute grounds for refusal as mentioned in article 5 of the 6769 numbered Turkish Industrial Property Law, except clauses ‘ç’ and ‘i’, is refused as they are based on public interest, and even on public order; therefore no claim can be asserted on them, and they might be used by everyone.

Due to said features, applications containing these signs as the main component or consisting exclusively of these signs may be rejected during the trademark registration process and during the examination and evaluation carried out by TURKPATENT and at the beginning of the registration process.

Similarly, based on these absolute grounds for refusal, third parties may object to the publication in the event that TÜRKPATENT publishes the relevant application despite the existing regulations. Also, if the trademark containing these marks is registered in some way, the lawsuit can be filed to invalidate the registration in question, or in some circumstances, the revocation of the trademark containing these marks can be decided.

Therefore, at the very beginning of the registration process, it is of great importance to evaluate whether the sign to be determined as a trademark has this quality and feature. This would also help to conclude the process in a healthy way for the applicant.

N.Berkay KIRCI
Attorney at Law
Trademark & Patent Attorney<br><br>BIBLIOGRAPHY:<br><br>1.Unal Tekinalp, Fikri Mulkiyet Hukuku 341 (Fourth ed. 2005)<br><br>2.David I. Bainbridge, Intellectual Property 609 (Tenth ed. 2018).<br><br>3.Sabih Arkan, Marka Hukuku 75 (1998).<br><br>4.BAINBRIDGE, supra note 2 at 611.<br><br>5.See the Supreme Court of Appeals – 11th Chamber decision, dd. 09.11.2000 under case no. 2000/6135 and decision no. 2000/8767.<br><br>6.Tekinalp, supra note 1 at 348.<br><br>7.Hamdi Yasaman, Marka Hukuku 240 (2004).<br><br>8.Hamdi Yasaman, Marka Hukuku 240 (2004).