Signs That Cannot Be Registered as a Trademark

Not every word or figure can be entered in the register as a trademark. The Industrial Property Act separates the cases in which the Office refuses an application of its own motion from those in which refusal is possible only upon opposition. We address the scope and practical consequences of the two regimes.

Any word, figure or symbol apt to distinguish the goods and services offered by one undertaking from those offered by other undertakings in the market qualifies as a trademark. Not every sign possessing that quality may, however, be entered in the register. Since the trademark right is among the rights acquired through registration, the door to protection is opened by an application made to the Turkish Patent and Trademark Office (TPMK); the Office is not, however, obliged to accept every request that comes before it.

The legislature has divided the grounds constituting an obstacle to registration into two separate regimes. The first comprises the obstacles that the Office investigates of its own motion because they serve the public interest; these are termed absolute grounds for refusal. The second group takes effect only where the rightholder or third parties whose interests are impaired take action; these grounds, which rest on a right of priority, are called relative grounds for refusal. The presence of even a single ground is enough to bar registration.

The practical significance of the distinction is this: if a defect constituting an absolute ground for refusal is apparent from the file, the application is refused without the need for any complaint; conversely, if the holder of the earlier right does not file an opposition in time, a relative ground for refusal has no effect in practice and the trademark is entered in the register.

The Concept of a Trademark

The definition of a trademark is set out in Article 4 of the Industrial Property Act No. 6769. Under that provision, a trademark covers any sign that performs the function of distinguishing the goods or services of one undertaking from the goods or services of its competitors.

At the centre of the definition stands distinctiveness; what is required is that, on seeing the sign, the consumer be able to attribute the commercial origin of the product to a particular undertaking. The concept of a trademark, which occupies a broad place in industrial property practice, and the registration process are addressed separately in our study entitled Trademark Selection and Trademark Registration.

The Function of Trademark Registration

As a rule, exercising the powers that industrial property legislation confers on a trademark requires that the right be entered in the register. A person who completes registration may transfer the right obtained, establish a licence over it, or provide for its transmission by inheritance. Registration also brings with it the possibility of resorting to the forms of action peculiar to industrial property law; those remedies are assessed in detail in our article entitled Trademark Infringement.

The first link in the process is the trademark application submitted to the Turkish Patent and Trademark Office. Protection arising from registration runs in ten-year periods and may be extended at the end of each period by a renewal request. Our examination of the registration procedure, the powers afforded by protection and the circumstances in which the right comes to an end may be found in the article entitled Trademark Registration and the Rights Conferred by a Trademark.

Absolute Grounds for Refusal

The grounds taken into account by the Office of its own motion, and which where present bar registration definitively, are the absolute grounds for refusal; there is no legal possibility of entering in the register a sign that falls within one of them. Article 5 of the Industrial Property Act sets out an exhaustive list of the signs that cannot be registered. Grouped by subject matter, the picture is as follows.

Distinctiveness and Conflict with an Earlier Trademark

Signs that do not correspond to the definition in Article 4 of the Act fall outside protection. For a sign to be regarded as a trademark, it must both serve to distinguish the goods and services of one undertaking from those of others and be capable of being represented in the register; the absence of either of those two conditions is on its own a ground for refusal.
Signs that are identical to, or so similar that they cannot be distinguished from, a trademark already registered or for which an application for registration has been filed cannot be entered in the register in respect of identical goods and services or goods and services of the same type.

Descriptive Terms and Terms Open to General Use

Signs that contain, exclusively or as their principal element, designations indicating in the course of trade the kind, type, characteristics, quality, quantity, purpose, value or geographical origin of goods or services cannot be registered.
The same prohibition applies to signs bearing as their principal element terms indicating the time at which the goods were produced or the service performed.
Signs indicating other characteristics of the goods or services beyond those listed are likewise assessed within this scope.
Signs freely used by everyone in commercial life, which cannot be left to anyone’s monopoly, cannot be trademarks.
Signs containing, exclusively or as their principal element, designations serving to identify members of a particular profession, branch of art or trade group are also refused.

Obstacles Arising from Shape

Signs consisting exclusively of the shape or another characteristic resulting from the nature of the goods themselves, or of a characteristic that is indispensable in order to achieve a technical result, cannot be registered.
Signs consisting exclusively of the shape or another characteristic that gives the product its substantial value are subject to the same prohibition.

Public Order, Deceptiveness and Protected Emblems

Signs liable to mislead consumers as to matters such as the nature, quality or geographical origin of the goods or services are not entered in the register.
Signs that must be refused under Article 6ter of the Paris Convention cannot be registered. This also covers public signs that have become identified with the people by reason of their historical and cultural value, as well as applications containing coats of arms, emblems and designations used without the authorisation of the competent authority.
Signs incorporating values or symbols of a religious character cannot receive protection.
The registration of signs contrary to public order or public morality is not possible.
Applications consisting of, or containing, a registered geographical indication are refused.

Relative Grounds for Refusal

The basis of the relative grounds for refusal is not a public prohibition but the right of priority that a particular person has previously acquired in the sign. In these cases, the persons concerned or third parties may oppose the published application; unless an opposition is filed, the Office does not take these obstacles into account.

The relative grounds for refusal are governed by Article 6 of the Industrial Property Act:

Trademark applications shown to have been made in bad faith are refused upon opposition.
Where the sign covered by the application is identical or similar to a trademark already registered or for which an application was filed at an earlier date, and the goods or services they cover are also identical or similar, an opposition may arise. For a decision of refusal to be given, there must be a likelihood of confusion on the part of the target public, extending to the likelihood that the two trademarks will be associated with one another.
It is a ground for refusal that a person acting as a commercial agent or representative should seek to register the trademark, or a sign so similar that it cannot be distinguished from it, in its own name without the consent of the proprietor and without a justified reason. Refusal of such an application depends on the proprietor filing an opposition.
Where a right has been acquired in an unregistered trademark or in another sign used in trade before the date of application, or before the priority date where a right of priority exists, the proprietor of that sign may secure refusal of the application by filing an opposition.
Applications identical or similar to trademarks regarded as well known within the meaning of Article 6bis of the Paris Convention are refused upon opposition in respect of identical or similar goods and services.
By reason of the level of repute an earlier trademark has attained in Türkiye, a later application may take unfair advantage of it, damage its reputation or dilute its distinctive character. In such cases — subject to the possibility of a justified reason — the application is refused upon the opposition of the earlier rightholder, irrespective of whether the goods and services are identical, similar or entirely different.
Where the application contains a third party’s name, trade name, photograph, copyright or any other intellectual property right, an opposition by the rightholder requires refusal.
Applications made within the three-year period running from the date on which protection ended because a collective mark or guarantee mark was not renewed may be refused upon the opposition of the earlier rightholder. For this, the new application must be identical or similar to the mark in question and must cover identical or similar goods and services.
Where the term of protection of a registered trademark has expired because it was not renewed, applications made within the two years following that date may likewise be made the subject of an opposition by the earlier proprietor. Here it is further required that the trademark have been used during that two-year period; the new application must be identical or similar to the earlier trademark and must cover identical or similar goods and services.

Independent Legal Assessment

A significant proportion of refusal decisions stems from a failure to consider the legal character of the sign before the application is filed. Terms that describe the sector or that have become established in the market may look attractive commercially, but they cannot be entered in the register because they fail to cross the threshold of distinctiveness. With relative grounds for refusal, the problem turns on timing: once the period for opposition has been missed, all that remains to the holder of the earlier right is an action for invalidity.

The matters that should be given priority in a registration file are as follows:

Checking whether the sign is descriptive or generic in character, specifically for the classes of goods and services targeted
Commissioning a similarity search before the application and screening earlier registrations and applications
Determining the list of goods and services so that it corresponds to the field of activity in which the mark will actually be used
Diarising the periods for opposing publication and regularly monitoring competitors’ applications
Evidencing priority rights arising from unregistered use by means of invoices and promotional documents
Recording renewal dates so as to prevent any gap in protection

Independent Legal provides advice across the full range of industrial property disputes, from the preparation of trademark applications to the conduct of opposition and court proceedings against decisions of refusal.