Mutlu Yıldırım Köse provides an update for Class 46 readers:
On 30 September 2019, the Turkish Patent and Trademark Office published The New Trademark Examination Guideline that defines the criteria regarding the examination of trade mark applications on absolute grounds within the scope of the Industrial Property Code that came into force in 2017.
The main purpose of the Guideline is to update the previous guideline which was in force since 2011, clarify the principles of absolute grounds for refusal that are explained in the IP Code and provide consistency in the Office’s decisions.
Within this context, the absolute grounds for refusal that are included between the articles 5(1)(a) and 5(1)(i) of the Law are examined in 12 main sections. The Guideline consists of 379 pages and includes a great number of examples in detail. The examples are given by taking the decisions of the Courts and the Office and also the recent EU developments into consideration.
While the guideline includes details and great number of examples, the highlighted points can be summarized as follows:
With regards to the representation of the trade mark in the registry, it is stated that since the graphical representation is not required, it is enough to upload the videos and the voice recordings for the applications of the sound marks. Further, it is highlighted that for colour mark applications, the section for the colour example must be filled fully and the Pantone colour code must be indicated.
With regards to “distinctiveness” and “descriptiveness”, the Guideline mentions the main criteria that should be taken into consideration in evaluating trade mark applications. It is emphasized that (i) the trade mark to be registered should be evaluated together with goods and services that are the subject of the application, (ii) the application should be evaluated as a whole, and (iii) the perception of the target consumers should be taken into consideration.
Then there are a lot of examples provided for word marks, slogans, device marks, colour marks, colour combination marks, voice marks, movement marks, trade marks including INNs etc.
With regards to the indistinguishable similarity to a senior trade mark or trade mark application, it is specified that there will be an ex officio similarity evaluation by the Office for the same or indistinguishable trade marks. It is emphasized that (i) if there are two composite marks under evaluation, the overall impression that the marks leave will be taken into consideration, (ii) if there are one composite and one non-composite mark under evaluation, the evaluation will be made upon the distinctive elements, and (iii) the distinctiveness level of the trade marks such as low-middle-high should be taken into consideration while the protection scope is determined.
A lot of examples are provided for indistinguishable similarity of trade marks that include phrases such as OPTİMUM, GLOBAL, STAR, BY, THE, MY, GROUP, EURO, PLUS, SMART, EXTRA, PURE, SOFT, LIFE as well.
As mentioned in the announcement of the Guideline by the Office, it is expected that the Guideline will clarify the principles of absolute grounds for refusal and provide consistency in the Office’s decisions. The Guideline is available here.
By Mutlu Yıldırım Köse, Gün+Partners, a member of the MARQUES Copyright Team