Trademarks
To ensure consistency of decisions in trademark examination, the Trademarks Department of the Turkish Patent and Trademark Office (TÜRKPATENT) applies decision criteria that are updated at various intervals. Below is a summary of the Trademarks Department's decision criteria on certain issues that tend to cause problems at the application and opposition stages.
The assessment criteria set out the basic rules; it would therefore be wrong to regard these principles as standard rules to be applied to every application. Since each application file has its own particular features, it should be emphasized that the assessment criteria only highlight the key points.
There is no order of priority among the grounds for refusal in Article 7 of the Decree-Law. All the grounds listed by the legislator in Article 7 are independent of each other; accordingly, it is appropriate practice for a trademark refused for lack of distinctiveness to be refused under other subparagraphs as well.
Slogans:
Any word or group of words can serve as a trademark, provided that it is distinctive.
Slogans are distinctive where there is no obstacle to registration under the other provisions of Article 7, where the slogan is not descriptive of the goods or services on which it will be used, where it does not indicate quality, and where its essential element is not identical or similar to another trademark.
However, like other expressions, slogans may lack distinctiveness, particularly in view of their meaning. Slogans will therefore not be assessed differently from other expressions.
Slogans or terms of this kind that have entered everyday life and are used by everyone every day will not be considered distinctive.
Distinctiveness of Applications in Non-Latin Characters:
Such applications (applications in Chinese, Japanese, Arabic or Cyrillic script, etc.) are in principle distinctive and eligible for publication. Since the application form must include a transliteration of the expressions into Latin letters, examiners are also able to research their meaning. Accordingly, such applications will be published unless there is a ground for refusal under the other subparagraphs of the Decree-Law.
Identical or similar expressions combined with a figurative element:
For trademark applications consisting of a word and a figurative element, priority will be given to the word element when assessing the distinctive element of the mark.
Where a figurative element is combined with the full trade name, similarity will be assessed by taking into account the distinctive element of the trade name.
Figurative Similarity
In cases of figurative similarity (whether the figure appears alone or together with another element in the mark), the refusal procedure under Article 7/1-(b) will be applied if the goods/services are also similar.
Assessment under Article 7/I(d)
In assessments under this subparagraph, whether the expression for which registration is sought (signs and names used by everyone or serving to distinguish members of a particular profession, craft, trade or professional group) is registrable will be assessed with regard to the sector concerned. If the expression is related to the goods and services for which registration is sought and the sign or name is used by everyone in the relevant sector, the application will be refused under Article 7/I(d).
However, if a professional title, or a sign or name used by everyone, has no connection with the goods or services for which registration is sought, such an application will not be refused under this subparagraph.
In assessing professional names and titles, public order will be taken into account, and applications that damage the dignity of a profession will be refused (taking the goods and services into account).
Assessment under Article 7/I(f)
Where the name of any product or service appears in the mark, the list will not be restricted under Article 7/1-(f).
Refusal under Article 7/f based on the nature of the goods will be applied in the following and similar cases:
- for products that are dangerous or objectionable by their nature;
- for trademarks that may be misleading as to geographical origin;
- for trademark applications filed with the product packaging that include the name of the product, in respect of the other goods in the list of goods;
Province Names
Names of provinces in Türkiye will not be registered on their own and will be refused under Article 7/a. (Province names that have other meanings, such as Aydın, are excluded from this practice.)
An application will also be refused where a province name is accompanied by the name of the goods or services produced or by the sector of the goods or services. Applications in which a province name appears together with a trade name will also be refused.
However, if a province name is accompanied by an element that provides distinctiveness, such expressions will be considered registrable.
In applications such as “ANKARA xxxxxxxxx CHAMBER” or “ISTANBUL xxxxxxxxxxxx UNION”, the mark will be assessed as a whole.
Where a province name has become identified with a product or refers to a specific geographical origin, the application will also be assessed and refused under Article 7/c.
Foreign capitals and city names
Names of foreign capitals, states and cities will be refused only if the application covers goods/services for which they are famous or well known and which they may directly evoke; in all other cases they will be registered.
Country names
As a general principle, names of foreign countries will not be registered as trademarks in the name of third parties.
Names of countries party to the Paris Convention will be protected under Article 7/I(g) when they are filed as trademark applications on their own, without any accompanying distinctive element.
Assessment of the expressions TÜRKİYE, TÜRK, TURKA, TURCA, TURC
The expression TÜRKİYE will not be granted as the essential element of a mark or as a mark on its own. However, it may be used on the trademark specimen as a secondary element of the mark, provided that it does not itself function as a mark.
Türk, Turco, Turca, Turka, Turkish and other words meaning Turkish will not be granted as marks on their own; they will not be refused if they acquire distinctiveness together with an accompanying expression. In this context, the assessment will consider whether the added expression is capable of functioning as a trademark, also taking the list of goods/services into account.
Assessment of EURO expressions
An assessment similar to that in the preceding paragraph will be made. However, since the expression “euro” on its own is protected, it will also be refused under Article 7/1-(g). On the other hand, if the expression accompanying the word “euro” is capable of functioning as a trademark for the relevant classes of goods/services, the application will be published. In this context, the assessment will consider whether the added expression is capable of functioning as a trademark, also taking the list of goods/services into account.
Assessment of applications containing the Turkish flag
No trademark containing the Turkish flag as an essential or secondary element will be registered, and such applications will be refused under Article 7/1-(g). Applications filed by organizations legally authorized to use the flag may, however, be published.
Assessment of applications containing the map of Türkiye
Applications containing the map of Türkiye exclusively or as an essential element will be refused. However, applications containing the map as a secondary or auxiliary element may be published.
Internet domain names
In trademark applications that contain internet top-level domain elements as a prefix and/or suffix, prefixes and suffixes such as “www.” and “.com” will be disregarded in the assessment. In other words, adding such prefixes and suffixes to a trademark that is not distinctive without them does not make it distinctive. Such applications must be assessed as if the prefixes and suffixes were not there.