Distinctiveness Acquired Through Use In Turkish Trademark Law

According to Article 4 of the Turkish Industrial Property Law (IPL) No. 6769, for a sign to be registered as a trademark, it must possess distinctive characteristics that enable it to differentiate the goods or services of one entity from those of another. This article provides a brief explanation of how some signs that were used prior to the trademark application can be considered to have acquired distinctiveness through use in Turkish law, making them eligible for trademark registration.

Article 4 of Turkish Industrial Property Law (IPL) No. 6768 defines the scope of trademarks in Turkish law as follows:

"Trademarks may consist of any signs, such as words, including personal names, figures, colors, letters, numbers, sounds, and the shape of goods or their packaging, provided that these signs are capable of distinguishing the goods or services of one entity from those of others and can be represented in a manner that clearly and precisely defines the subject matter of the protection granted to its owner."

According to this relevant provision, a trademark in Turkish law must possess two fundamental features:

1. Distinctive Character

2. Representability in the Registry

As a general rule, a sign must possess these features and capabilities to be eligible for trademark registration with the Turkish Patent and Trademark Office. However, IPL Article 5 states that "If a trademark has been used before the application and, as a result of this use, has acquired a distinctive character concerning the goods and services covered by the application, the trademark application shall not be refused based on subparagraphs (b), (c), and (d) of the first paragraph."

Under this provision, if a sign had been used before the application date and, through this use, gained distinctive character for the goods and services covered by the application, the application cannot be rejected for the following reasons:

1. The sign lacks any distinctive character (IPL Article 5/1-b).

2. The sign consists exclusively of or includes as an essential element signs or indications that are commonly used in trade to describe the type, characteristics, quality, quantity, intended purpose, value, geographical origin, or production time of goods or services or other attributes of goods or services (IPL Article 5/1-c).

3. The sign consists exclusively of or includes as an essential element signs or indications used by everyone in the trade sector or that serve to distinguish members of a specific professional, vocational, or commercial group from others (IPL Article 5/1-d).

IPL specifies that for a trademark lacking distinctive character to be considered to have acquired distinctive character through use, the usage must be substantial. In determining substantial use, factors such as the duration of sign usage, advertising and marketing expenditures, market share, and the geographical area in which the trademark was used will be taken into account.

To qualify for the provisions of IPL Article 5/2, the sign must have acquired distinctiveness through use at the time of the trademark application. Uses after the trademark application will not be considered. However, it should be noted that in the event of an invalidity action, according to Article 25/4 of the IPL, if a trademark has been registered despite not meeting the requirements outlined in paragraphs (b), (c), and (d) of Article 5/1 of the IPL but has subsequently acquired distinctive character through use for the goods or services for which it is registered prior to the request for invalidation, it shall not be invalidated.

Conclusion

In conclusion, the Turkish Industrial Property Law (IPL) provides a comprehensive framework for the registration of trademarks, emphasizing the importance of distinctive character and representability in the trademark registration process. Article 4 of the IPL outlines the essential criteria, while Article 5 offers a pathway for signs that have acquired distinctiveness through prior use. This nuanced approach ensures that trademarks effectively fulfill their role in distinguishing goods and services in the marketplace. Furthermore, it highlights the significance of substantial and historical use in granting distinctiveness. This legal framework serves as a crucial tool in safeguarding intellectual property rights and fostering fair competition within the Turkish market. It is essential for businesses and practitioners to navigate this landscape carefully, understanding the conditions under which a trademark may be registered and the potential avenues for challenging registrations that do not meet the established criteria. Ultimately, the IPL's provisions contribute to the protection and promotion of innovation and brand identity in Turkey while opening up a possibility of registration for signs that lack distinctive character but has been used prior to the application.