Conflicting views centre on how to represent non-traditional marks graphically so that they can be
registered with the Turkish Patent Institute
Traditional trademarks consisting of words, logos or graphics as applied to goods
or packaging are insufficient in today’s competitive market. Other elements such as
colours, shapes, moving images, holograms, sounds, scents, tastes and textures can also
fulfil the essential distinguishing function of a trademark.
In order to be eligible for trademark protection, a sign must be clear, precise, self-contained, distinctive, graphically representable, easily accessible, durable and objective. This raises the question of how non-traditional marks can fulfil these criteria. Turkey signed the Singapore Treaty on the Law of Trademarks on March 28 2006 – the first international treaty to recognise non-traditional trademarks explicitly – but it has not yet been enacted. Article 5 of Decree-Law 556 on the protection of trademarks does not explicitly mention non-traditional marks within the definition of ‘signs’ that are eligible for trademark registration, but instead appears to leave open the possibility that any sign that is capable of being represented graphically may be registered. Therefore, a registrable trademark may comprise words, names, letters, numerals, slogans, designs, the shape of goods or their packaging, and similarly descriptive elements that are capable of being published and reproduced in print form.
In general, if colour or special scripts are used, the mark is categorised and designated
as figurative in the Trademark Register. Nevertheless, the Trademark Examination Guidelines explicitly mention non-traditional marks and set out the basic requirements for how such marks should be graphically represented in trademark applications. Non-traditional marks include
colours, three-dimensional marks, scents, sounds, motions and holograms.
Although Turkish trademark law does not exclude non-traditional marks from being eligible for trademark protection, the debate and conflicting views centre on:
whether such marks are sufficiently distinctive to serve as a source identifier; and
how to represent such marks graphically so that they can be registered with the
Turkish Patent Institute.
With regard to the requirement of graphical representation, a two-dimensional representation of a mark should be included in the trademark application in order to avoid problems during examination and evaluation at the Trademark Office.
The availability of and requirements for non-traditional trademarks with reference to Article 5 of Decree-Law 556 and the Trademark Examination Guidelines are discussed below.
A colour per se is not eligible for registration; only colours or colour combinations as applied to products or their packaging are eligible. A single colour is not inherently distinctive for any goods
or services, and can be registered only if it has acquired distinctiveness through use in commerce in connection with the products or services to which it is applied
(eg, the shade of purple used on Milka’s confectionery packaging).
Likewise, any colour combination which is perceived as a mere decorative element of the goods or which is a result of consumer customisation (eg, for cars or t-shirts) will be rejected. Objections will be raised to an application citing, for example, ‘red for fire extinguishers’, due to the fact that this is both descriptive and generic in nature. It is assumed that the distinctiveness of a colour combination will be used in the same manner on packaging and advertising or promotional material as it appears in the application.
In terms of graphical representation, the actual colours must be indicated in words; whereas for colours per se, the shade must be specified using an internationally recognised colour code (eg, RAL, Pantone, HSK, Cielab). Where an application contains more than one colour, the proportion of
each colour and how they will appear must be described. An abstract claim for two colours, for example using phrases such as“in any possible combination” or “in any proportion”, is not allowed.
The Supreme Court banned the sale of face paints containing the colours of a famous football club under the TARAFTAR (‘fan’ in English) mark, as this was seen as an act of unfair competition, although the first instance court had dismissed the case by stating that colours are common property
and cannot be monopolised.
In principle, a three-dimensional (3D) mark can be registered if it is inherently distinctive and does not consist of shapes or packaging designs that are commonplace or functional, or that afford a functional or technical advantage. For instance, the ‘Mercedes Star’ hood ornament and the ‘Michelin Man’, although unrelated to the goods or services that they represent, are considered to be sufficiently distinctive and thus registrable. In practice, however, it is not easy to
register 3D marks, particularly for the shape of goods, packaging or containers. The process can take a long time before the Office Appeal Board and then the specialised IP Court, due to the strict
distinctiveness test applied to such marks. The applicant may also be required to prove acquired distinctiveness through use.
The shape must depart significantly from the norms or customs of the related commercial field, and an average consumer should be able to identify its origin. In other words, it should not be an ordinary shape without any unique or additional features or simply a variant of a shape of common
use where there is a significant diversity of designs on the relevant market. Objections will be raised to functional shapes or features of a 3D mark (eg, for washing tablets, bevelled edges to avoid damage to laundry and different coloured layers to represent the presence of several active ingredients).
A word or device mark affixed with a 3D element can be protected in one registration (without disclaiming the other) and enforced separately, provided that each mark meets the relevant requirements. The Trademark Office first checks whether the representation of the 3D mark contains
additional elements, such as words or labels, which render it distinctive, either alone or in combination with the shape.
Graphical representations such as drawings, pictures or photographs illustrating the mark shall be accepted as valid, provided that they clearly depict the 3D nature of the mark. For the application
to be comprehensive and comply with examination criteria, the representation must consist of a photographic reproduction or graphic representation of the mark which shows its 3D character from different angles (ie, up to six different perspectives).
Sound marks such as jingles, pieces of music or other non-musical sounds can be registered, provided that they are distinctive and can be represented graphically.
Such an application should include an
electronic sound recording and its graphical representation, such as musical notations specified by key and rhythm, or an oscillogram or sonogram for a non-musical sound. Only a short extract from a composition can be registered; an entire musical piece or a lengthy portion thereof is not eligible for registration.
A sound will fail the distinctiveness test if it is technical or occurs naturally (eg, the
sound of a vacuum cleaner, a motorcycle engine or a bottle or can being opened).
Although motion marks can consist of moving images (eg, in the form of a film, video, animation or logo) in combination with colours, sounds and aspects of product designs, Turkey provides no
protection for such comprehensive motion marks in practice.
The examination guidelines state that a motion can be graphically represented in a series of pictures or drawings (without mentioning other elements that may be associated with the moving image, such as sound or length of the motion). Each case will be evaluated separately on the merits of
its distinctive features.
Therefore, the applicant must submit a sequence of pictures or drawings and a written description to depict clearly how the trademark functions and what changes have been realised in each image. The electronic recording of the motion (to be submitted on CD) should correspond to the graphical
representation (motionless vision series) that is submitted in the application. The images should be attached to each other in chronological sequence (eg, a flipbook), preferably with several views (eg, a motion mark application for a Lamborghini car should include views showing the doors opening and turning upward). Distinctiveness should be assumed for each image in the motion trademark, and it should be considered whether the motion can be perceived as a trademark by the relevant consumer good and whether it is capable of fulfilling the distinguishing function of a trademark.
A hologram is eligible for registration if it features only a limited number of images (eg, two or three). It may be graphically represented in the same manner as a motion mark (ie, images in a sequence).
Scents, taste and touch
Lack of distinctiveness and the difficulties in producing valid graphical representations are important obstacles to the registration of scent, touch and taste marks. For instance, there is no means of representing scents graphically because there is no internationally accepted scent code and
descriptions including chemical formulae are considered insufficiently clear, precise or objective.
Therefore, innovative ideas such as the distinctive texture of a bag as a touch mark, perfume or air freshener scents or vanillascented folders as scent marks, or the flavour of cola drinks as a taste mark, are not entitled to trademark protection in Turkey at present.
This article first appeared in World Trademark Review magazine issue 46, published by The IP Media Group. To view the issue in full, please go to www.worldtrademarkreview.com