ABSOLUTE GROUNDS FOR REFUSAL IN TRADEMARK REGISTRATION 1 December 2020

1. SIGNS THAT A TRADEMARK MAY CONSIST OF

Trademark, which constitutes one of the types of industrial property rights, is a distinctive sign that represents all assets of an enterprise in commercial life and is used to distinguish similar goods and services from other businesses' goods and services. According to Article 4 of the Industrial Property Code ("IPC"), a sign must satisfy three conditions to be a trademark.

• It has to be a sign,
• It must be capable of distinguishing the goods or services of one undertaking from those of other undertakings,
• It must be capable of being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor.

According to Article 4, all kinds of signs, including words, shapes, colors, letters, numbers, sounds, including personal names, and the form of the goods or their packaging, can be subject to trademark registration, provided that the conditions listed above.

The ability to be abstractly distinguished from the goods and services of other enterprises is related to whether a sign has the function of abstract reference. The function of referencing can be explained as indicating who produced or provided the products or services that are used. The fact that the goods or services have the same trademark provides a guarantee to the customers that these goods originate from the same business.

Showing the trademark in the registry means that the trademark can be clearly depicted in the registry. For example, utilizing sounds, musical notes, or sonograms, odors can be identified by a chemical formula and registered as a trademark. The 7th article of the "Regulation on the Implementation of the IPC" contains the regulation regarding the samples of trademark styles. In the relevant regulation, the conditions under which each sign can be shown in the registry are arranged.

2. TRADEMARK REGISTRATION AND ABSOLUTE GROUNDS FOR REFUSAL IN TRADEMARK REGISTRATION

Considering that most trademarks today are trademarks that have the potential to gain value day by day with the products that have created with intensive labor and time, it can be said that the most basic need of each is legal protection. Otherwise, even the biggest and most well-known trademarks may face imitations, image damage, and revenue losses. Trademark registration comes into at this point and protects the right owner legally. Trademark registration not only prevents the use of the trademark by someone else but also prevents possible damages to the corporate identity of the enterprise from the very beginning.

For trademark registration, a registration application must be submitted to the Turkish Patent Institute ("TPI"). After the application, a detailed evaluation process begins within TPI. TPI first examines the trademark registration application in terms of its form and decides whether there is any deficiency. The applications accepted in appearance are subject to an examination in terms of absolute grounds for refusal in the next stage.

Absolute grounds for refusal are objections arising from the nature of trademark and it is arranged as 12 clauses in the 5th article of the IPC. According to the widely accepted view in the national and international literature, the basic idea underlying the absolute grounds for refusal is public interest. It is thought that the public order and public interest are preserved by not registering the trademarks that are considered within the scope of absolute grounds for refusal. As a natural consequence of this approach, absolute grounds for refusal should be taken into account by TPI. For this reason, TPI can reject the application based on absolute grounds for refusal without the need for an objection by any person. However, the absolute grounds for refusal may also be subject to objection by those concerned.

The absolute grounds for refusal in Article 5 of the IPC are as follows:

1. Signs which may not be trademark according to Article 4

Signs that do not satisfy the conditions described in the first heading above cannot be registered as trademarks.

2. Signs which are devoid of any distinctive character

The distinguishing function of a trademark depends on the perception of the mark before the legal action (sales, etc.) regarding the goods or services. Accordingly, letters, figures, or pictures that do not have discrimination at the first stage will not be accepted as trademarks when looking at all parts of the mark.

In this context, there are some principles taken into consideration in determining discrimination. First of all, the distinctive nature of the sign subject to the application is evaluated in terms of the requested goods and services. A distinctive sign for some goods or services may not have this quality for other goods or services. Secondly, in the evaluation of the distinctiveness of a sign according to the principle of integrity, all concrete conditions of the application should be taken into account within the framework of any available data. Finally, the language, education, culture, and socioeconomic situation prevailing in the country in terms of the distinctive character of the sign are taken into consideration. The distinctive character of the sign subject to the application is evaluated by considering the perception of the goods or services requested for registration in the mind of the relevant consumer segment regarding the commercial origin of the goods.

For example; using grammatical or phonetic equivalents such as "freshh" or "tazze" in the food sector and "elektrix" for the electronics sector does not provide a distinctive character.

However, the concept of independence (gaining independent meaning) emphasized in the decision of the 11th Civil Chamber of Court of Cassation dated 08.02.2007 and numbered 2005-11325/1481 is also seen as an important criterion in terms of distinctiveness: “... (figure + TURKISH CARGO) because it has a distinctive character and does not indicate qualifications, even if it is accepted otherwise, the sign has become a globally accepted phenomenon due to the distinctiveness and independence gained by use, and the application must be declared without restriction. Also, it has been decided to be announced in the Official Trademark Bulletin...”

For example, although "sahibinden.com" does not have a distinctive feature in terms of its basic features, it has gained distinctiveness through use.

3. Signs which consist exclusively or includes 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 rendering of the services or other characteristics of goods or services,

Since the signs indicating the type, quality, place, or time of production of a sign are public and open to everyone, they cannot be given to a single person's monopoly of use and registered as a trademark. For example; names expressing the type of commodity such as watermelon, melon, walnut, or definitions such as “seedless grape” cannot be used. Besides, it is out of the question for an apple trademark to use the name "Amasya", where it is produced. However, signs that merely evoke or remind the properties of goods or services are not considered descriptive.

4. 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,

What is meant by this article is that, according to court decisions and the case law, the sign subject to application is an exact copy. Trademarks with small differences between them are not considered the same. However, the different sizes of the trademarks or the differentiation of the font and color of the word marks do not affect the same status. General impressions of average consumers are taken into account in determining the level that cannot be distinguished.

5. Signs which consist exclusively or includes 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.

Names that have the qualifications listed in the article can be included in a mark as a part, but cannot constitute the essence of the mark. For example; An intermediary institution operating in the capital market cannot use the word “stock market”, nor can they register the figure of Themis representing the professions of law firms. Similarly, the mark name of a fragrance company cannot be "perfume".

6. 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 is mandatory to obtain a technical result or gives substantial value to the goods;

As a rule, the obligatory shapes and appearances caused by the functional or technical requirements of the products cannot be registered. Because this kind of forms are also public and cannot be monopolized by anyone. However, if the product has a unique design that exceeds its mandatory function, technical requirements, and natural structure, it can be registered as a trademark. The design of the “Coca Cola” bottle can be given as a worldwide example in this regard.

7. Signs which would deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service;

The misleading assessment to be made under the provision of this article is made in three separate steps regarding the geographical source, the phrases that may pose a health risk, and the quality of the goods. For example; According to the Karlsruhe State Court, it is misleading to use the phrase "Erzincan cheese" for cheeses produced in the Netherlands and brought to Germany or produced in Germany. As another example; By the decision of the 11th Civil Chamber of Court of Cassation dated 01.03.2012 and numbered 2010-10471/2979, in terms of the MICROFIBER NANO mark, it is not stated in the trademark registration certificate that it is produced with microfiber technology. In terms of the commodity of non-electric cleaning tools and equipment, so the brand people are misleading.

8. Signs which shall be refused pursuant to Article 6ter of the Paris Convention;

In the relevant provision of the Paris Convention, the use of various symbols of many states, families, or lineages, dating back to the Middle Ages, is prohibited due to their official characteristics. The aforementioned symbols; pennants, seals, badges, banners, nobility marks, etc. are signs. In addition to evaluating such marks as absolute grounds for refusal, TPI also protects them by granting a “protection brand certificate”.

9. 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,

Although some signs do not fall within the scope of the provision of the above article, they have a specific historical and cultural value and therefore need to be protected. As examples: pictures of politicians, monuments, and historical symbols belonging to the public.

The Court of Cassation, in its decision dated 05.10.2015 and numbered 2014-18537/9891, based on the expert report stating that the phrase "Everything is from Love + Shape" is a phrase translated into Turkish from Şeyh Galip's poetry and that it costs Turkish poetry. It overturned the decision of the local court by stating that this situation alone would not prevent the trademark registration, and in what sense it is a cultural value and should be evaluated in the context of its place.

10. Signs that contain religious values or symbols;

Religious motifs such as holy book names, names of the Prophets, crosses, or names of religions and sects cannot be subject to trademark registration. The provision of this article prevents the exploitation of the religious values ​​of the society.

11. Signs which are contrary to public policy or to accepted principles of morality;

Signs that violate the general moral norms of the society, provoke the society, or lead to harmful habits cannot be registered as trademarks. The Court of Cassation evaluates phrases that encourage crime, violate human rights and democratic order, and contain separatist activities.

12. Signs which consist of a registered geographical sign or which contain a registered geographical sign.

According to Article 5/1(i) of the PCI, it is regulated that the signs consisting of a registered geographical indication or that contain a registered geographical indication cannot be registered as a trademark, and as of the date of examination, unregistered geographical indication applications and expressions that indicate a geographical source for the relevant product, although there is no registration 5/1(i).