Trademark registration is a cornerstone of brand protection, offering legal safeguards and a competitive edge in the market. In Turkey, the process is governed by the Industrial Property Code (IPC) No. 6769, which came into force on January 10, 2017. A critical aspect of this legal framework is Article 5, which outlines the “Absolute Grounds for Refusal.” These provisions represent fundamental, non-negotiable barriers to trademark registration, designed to protect broader public interests, prevent the monopolization of common or generic terms, and safeguard deeply held cultural, historical, and religious values.
The Turkish Patent and Trademark Office (TPTO or “Office”) plays a proactive role in enforcing these absolute grounds. Unlike “relative grounds for refusal” (governed by Article 6), which typically require an objection from a third party, the Office examines applications ex officio for compliance with Article 5. This proactive examination underscores the fundamental importance of these grounds in maintaining the integrity and fairness of the trademark system. It ensures that signs inherently unsuitable for trademark protection, or those that would harm public interest, are prevented from registration from the outset.
While these grounds appear stringent, the IPC provides crucial flexibility in specific scenarios. Mechanisms like “acquired distinctiveness” and “notarized consent” offer pathways to overcome certain refusals, demonstrating a nuanced approach that balances strict legal principles with commercial realities and the legitimate rights of brand owners. This report will delve into each sub-paragraph of IPC Article 5(1) and explore these vital exceptions, providing a comprehensive guide for navigating trademark registration in Turkey.
Quick Reference – Absolute Grounds for Refusal (IPC Article 5(1))
To provide an immediate overview, the table below summarizes the eleven absolute grounds for refusal under IPC Article 5(1):
IPC Article 5(1) Sub-paragraph
Ground for Refusal
Brief Explanation
a) Signs Incapable of Being a Trademark
Signs that do not meet the fundamental definition of a trademark under Article 4 (e.g., not distinctive, not representable).
b) Signs Devoid of Any Distinctive Character
Signs that cannot distinguish goods/services of one undertaking from others (e.g., “Aroma” for coffee).
c) Descriptive Signs
Signs that exclusively or essentially describe the kind, quality, purpose, or other characteristics of goods/services (e.g., “Jetmontaj” for assembly services).
ç) Identical or Indistinguishably Similar to Prior Marks
Signs identical or indistinguishably similar to an earlier registered or applied-for trademark for identical or similar goods/services.
d) Generic Signs or Signs Used by Everyone in Trade
Signs widely used in trade or serving to distinguish members of a specific professional group (e.g., red “E” for pharmacies).
e) Shapes from Nature, Technical Result, or Substantial Value
Signs consisting exclusively of shapes or characteristics resulting from the nature of goods, mandatory for a technical result, or giving substantial value to the goods.
f) Deceptive Signs
Signs that would deceive the public about the nature, quality, or geographical origin of goods/services.
g) Signs Refused Under Article 6ter of the Paris Convention
State emblems, official hallmarks, and emblems of intergovernmental organizations without authorization.
ğ) Public Interest, Historical/Cultural Values, Emblems Without Consent
Signs of public interest containing historical/cultural values, emblems, badges, or escutcheons without competent authority consent.
h) Signs Containing Religious Values or Symbols
Signs that incorporate religious concepts, figures, or emblems.
ı) Signs Contrary to Public Policy or Accepted Principles of Morality
Signs that contradict public order, morality, encourage harmful habits, incite crime, or contain profanity, insults, racism, or discrimination.
i) Signs Consisting of or Containing a Registered Geographical Sign or which contain a registered geographical sign.
Detailed Analysis of Absolute Grounds for Refusal (IPC Article 5(1))
Each sub-paragraph of Article 5(1) addresses a specific category of signs deemed unsuitable for trademark registration, reflecting the core principles of trademark law and broader public policy objectives.
Article 5(1)(a): Signs Incapable of Being a Trademark According to Article 4
This provision mandates the refusal of signs that fundamentally cannot function as trademarks under IPC Article 4. For a sign to be accepted as a trademark, it must satisfy three crucial conditions: it must be a “sign,” it must be capable of distinguishing the goods or services of one undertaking from those of others, and it must be capable of being represented clearly and precisely in the trademark register.
This ground serves as a foundational filter for all trademark applications. If a sign fails these basic definitional requirements, it cannot fulfill the core function of a trademark—to identify the commercial origin of goods or services. For instance, a sign that is too abstract to be clearly represented, or one that inherently cannot differentiate products, would fall under this category. This emphasizes that the system is built on signs that can genuinely identify commercial origin, ensuring that only appropriate identifiers enter the register.
Article 5(1)(b): Signs Devoid of Any Distinctive Character
A sign is considered “devoid of any distinctive character” if it cannot differentiate the goods or services of one business from those of another. Such signs fail to perform the primary function of a trademark: to act as a unique identifier in the marketplace.
Common examples of signs lacking distinctiveness include generic terms or terms that are merely descriptive of the goods or services themselves. For instance, the term “Aroma” for coffee (Class 30) or “Karite” (shea butter) for cosmetic products (Class 03) would typically be refused, as they describe a characteristic or ingredient rather than uniquely identifying a source. Similarly, “Fresh Sardines” for sardines (Class 29) or “BROWNIE” for nutrition goods (Classes 29 and 30) are considered non-distinctive. This ground is frequently cited for refusal, highlighting the importance of selecting a truly unique mark.
Article 5(1)(c): Descriptive Signs
This ground targets signs that consist exclusively of, or include as an essential element, indications that serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, time of production of goods or services, or other characteristics. The purpose here is to prevent any single entity from monopolizing terms that are necessary for competitors to describe their own goods or services.
For example, the term “Jetmontaj” (meaning “Jet Assembly”) for assembly services (Class 40) would be refused because it directly informs the consumer about the nature of the service offered. Similarly, “PLAY GROUND” for entertainment services (Class 41) or “S, M, L” indicating product sizes (Class 25) would be considered descriptive. While closely related to signs devoid of distinctiveness, this provision specifically focuses on the descriptive nature of the mark. Both 5(1)(b) and 5(1)(c) aim to ensure that common descriptive terms remain freely available for all market participants.
Article 5(1)(ç): Identical or Indistinguishably Similar to a Trademark Already Registered or Applied For
This provision prohibits the registration of signs that are identical to, or indistinguishably similar to, a trademark already registered or applied for registration, especially for identical or similar goods and services. The Office defines “identical” as two signs being indifferent or exact copies of each other; even minor differences would typically prevent them from being accepted as identical.
Examples of marks deemed identical or indistinguishably similar by the Office include ANJELIKA and ANGELIKA, INFINTY and INFINITI, or MULTITECH and MULTITEK. This ground is a significant reason for refusal, constituting a large percentage of rejections. The Office’s ex-officio examination of this ground means that clear-cut cases of identity or indistinguishable similarity for identical or similar goods will be refused automatically, protecting existing rights and preventing immediate conflicts without requiring a third-party opposition.
Article 5(1)(d): Signs Consisting Exclusively of or Including as an Essential Element Signs Used by Everyone in the Trade
This ground for refusal applies to signs that are widely used by everyone in a particular trade or serve to distinguish members of a specific professional, vocational, or commercial group. The objective is to prevent the monopolization of terms or symbols that are essential for common communication within an industry or are generally understood by the public to represent a certain type of business or product.
Examples include the red “E” letter commonly used on pharmacy signs, or the universally recognized symbols for the Dollar ($) and Euro (€) currencies. Similarly, the Supreme Court has ruled that the sign “FLORİST” for floriculture-related services cannot be registered because it indicates the type of service and includes the name of an occupational group related to that field. This provision ensures that generic identifiers remain in the public domain, fostering fair competition by allowing all traders to use necessary descriptive or indicative elements.
Article 5(1)(e): Signs Consisting Exclusively of the Shape or Another Characteristic Resulting from the Nature of the Goods, Mandatory to Obtain a Technical Result, or Giving Substantial Value to the Goods
This complex provision prevents the registration of signs that consist exclusively of the shape or another characteristic of goods which: i) results from the nature of the goods themselves; ii) is mandatory to obtain a technical result; or iii) gives substantial value to the goods. This ground aims to prevent trademark law from being used to extend protection typically granted by other intellectual property rights, such as design patents (for aesthetic features) or utility patents (for technical functions).
For instance, the shape of a banana cannot be registered as a trademark for bananas, as it results from the nature of the good itself. In a notable case, the ECJ refused the registration of the shape mark for a three-headed rotary electric shaver because the shape was mandatory to achieve a technical result. This provision ensures that the limited monopoly of trademark registration does not stifle innovation or competition by allowing perpetual rights over functional or inherently valuable product features that should either be freely available or subject to finite patent and design protection periods.
Article 5(1)(f): Signs Which Would Deceive the Public
This ground prohibits the registration of signs that are of such a nature as to deceive the public, for example, about the nature, quality, or geographical origin of the goods or services. This provision prioritizes consumer protection, ensuring that trademarks accurately represent the goods or services they identify.
A prominent example, though under EU law, illustrates the principle: the “Turkaegean” trademark was canceled because it falsely implied a territorial claim over the Aegean region, misleading consumers about geographical origin. This demonstrates the strong emphasis on preventing misleading commercial branding. The prevention of deception is paramount, ensuring that consumers can trust the information conveyed by a trademark, thereby maintaining public confidence in the marketplace.
Article 5(1)(g): Signs Refused Under Article 6ter of the Paris Convention
This provision directly incorporates the prohibitions outlined in Article 6ter of the Paris Convention for the Protection of Industrial Property. It stipulates that signs consisting of armorial bearings, flags, and other State emblems of countries of the Union, as well as official signs and hallmarks indicating control and warranty, and emblems of international intergovernmental organizations, shall not be registered as trademarks without authorization from the competent authorities.
This reflects Turkey’s commitment to international intellectual property conventions and global cooperation. It ensures that national and intergovernmental symbols are protected from unauthorized commercial use, which could have diplomatic implications or undermine public trust. For example, trademarks containing the Turkish flag cannot be registered. This demonstrates a broader commitment to global IP norms and preventing the misuse of official insignia.
Article 5(1)(ğ): Signs of Public Interest Containing Historical, Cultural Values, Emblems, Badges, or Escutcheons Without Consent
This ground extends beyond the scope of Article 6ter of the Paris Convention, specifically addressing signs that are of public interest and contain historical or cultural values, emblems, badges, or escutcheons, for which the consent of the competent authority has not been given. This provision aims to prevent the monopolization and commercial exploitation of symbols, names, and values deeply ingrained in the nation’s collective heritage.
Examples of names that would be refused under this provision include Atatürk (the founder of the Republic of Turkey), Mevlana (a renowned 13th-century Persian poet and theologian), or Evliya Çelebi (a famous Ottoman explorer). Allowing private entities to commercialize such names without proper authorization would be seen as disrespectful or exploitative by the public. This aspect of the law underscores the “public interest” mandate of absolute grounds and reflects profound cultural sensitivities within the Turkish legal framework.
Article 5(1)(h): Signs Containing Religious Values or Symbols
This provision explicitly states that signs containing religious values or symbols cannot be registered as trademarks. The intent is to prevent the commercialization or inappropriate use of elements deeply revered within religious contexts.
For example, names such as “Kuran-ı Kerim” (the Holy Quran), “Hz. Muhammed” (Prophet Muhammad), or “KABE” (the Kaaba in Mecca) are explicitly cited as unregistrable trademarks. This demonstrates a clear public policy stance aimed at maintaining respect for religious sensitivities and avoiding any perceived sacrilege or offense through commercial appropriation. This reinforces the idea that trademark law serves not only commercial interests but also societal values and public order.
Article 5(1)(ı): Signs Contrary to Public Policy or Accepted Principles of Morality
This broad, overarching ground stipulates that signs contrary to public policy or accepted principles of morality cannot be registered as trademarks. This encompasses signs that could disrupt the normal functioning of society based on its general principles and values, contradict societal understanding of morality, encourage harmful habits, incite crime, or contain profanity, insults, racism, or discrimination.
For instance, the word “Terrorist” would be refused registration. International examples illustrate this principle further, such as the refusal of marks that are offensive (“FICKEN”) or exploit tragic events (“MH17,” “MH370”). This provision acts as a crucial ethical safeguard, providing the flexibility to address new forms of offensive or harmful branding that might not fall under other specific categories. It reflects the legal system’s role in upholding societal values beyond mere commercial function.
Article 5(1)(i): Signs Consisting of or Containing a Registered Geographical Sign
This provision prohibits the registration of signs that consist of or contain a registered geographical sign. Geographical indications (GIs) protect products whose quality, reputation, or other characteristics are essentially attributable to their geographical origin.
Examples of trademarks that would be rejected under this ground include “Antakya Kunafah” or “Malatya Apricot,” as these are registered geographical indications. This measure prevents the dilution or misuse of GIs, which are vital for protecting the reputation and quality of products tied to specific regions. It safeguards the collective rights of producers in those regions and ensures consumer trust in the authenticity of regional specialties, thereby supporting local economies and cultural heritage.
Exceptions to Absolute Grounds for Refusal
While the absolute grounds are generally strict, the IPC provides two significant exceptions that offer flexibility for trademark applicants.
Article 5(2): Acquired Distinctiveness
Article 5(2) provides a vital exception to the refusal grounds outlined in Article 5(1)(b) (signs devoid of distinctive character), 5(1)(c) (descriptive signs), and 5(1)(d) (generic signs or signs used by everyone in trade). If a trademark, despite its initial lack of inherent distinctiveness or descriptive nature, has been used prior to the application date and has, through such use, acquired a distinctive character in respect of the goods and services concerned, its registration may not be refused on these grounds.
Proving acquired distinctiveness requires substantial evidence of the mark’s recognition in the market. This typically includes comprehensive documentation of extensive and continuous use, such as sales figures, advertising expenditures, market surveys, and unsolicited media coverage. The evidence must convincingly demonstrate that the relevant public has come to associate the mark exclusively with the applicant’s goods or services, effectively transforming a weak or descriptive sign into a strong source identifier. This mechanism highlights the law’s pragmatic approach, rewarding genuine market investment and brand building efforts by allowing marks that have earned consumer recognition to gain protection.
Article 5(3): Notarized Consent from Prior Trademark Proprietor
Article 5(3) offers a crucial exception specifically for refusals based on Article 5(1)(ç) (identical or indistinguishably similar to prior marks). If a notarized document indicating the clear consent of the prior trademark proprietor for the registration of the application is submitted to the Office, the trademark application will not be refused on this ground.
The consent must be unconditional and without reservations. While the IPC does not detail the specific format, practice indicates it should be provided on a special form issued by the Turkish Patent and Trademark Office. For applicants residing outside Turkey, the consent form typically requires legalization by apostille. This notarized consent can be submitted either at the time of the initial application or, if a refusal is issued, during the appeal process to the Office. This provision offers a highly practical solution for potential conflicts, facilitating commercial agreements like co-existence agreements or licensing, and allowing parties to resolve potential disputes privately, thereby reducing the need for protracted litigation.
Strategies to Overcome Refusals
Navigating the absolute grounds for refusal requires a clear understanding of the law and strategic planning. For certain grounds, the IPC provides specific mechanisms to overcome initial objections:
IPC Article 5(1) Ground
Method to Overcome
Key Requirements/Evidence
b) Devoid of Distinctive Character
Acquired Distinctiveness
Proof of extensive, continuous use (e.g., sales figures, advertising, market surveys) demonstrating public association with the applicant.
c) Descriptive Signs
Acquired Distinctiveness
Same as above.
d) Generic/Trade Usage Signs
Acquired Distinctiveness
Same as above.
ç) Identical/Similar to Prior Marks
Notarized Consent
Unconditional, notarized consent from the prior trademark proprietor, submitted on the official form.
Should an application face a refusal based on absolute grounds, applicants have the right to appeal the decision. An appeal must typically be filed within two months from the notification date of the refusal decision to the Re-examination and Evaluation Board of the Office. If the appeal is dismissed, further legal action can be pursued by initiating a cancellation action before the specialized IP courts in Ankara. Engaging experienced legal counsel familiar with Turkish IP law is highly advisable to prepare compelling arguments and gather the necessary evidence for a successful appeal.
Conclusion
Article 5 of the Turkish Industrial Property Code stands as a critical gatekeeper for trademark registration in Turkey. It embodies fundamental principles designed to safeguard public interest, ensure fair competition, and protect cultural, historical, and religious values from commercial appropriation. The Office’s proactive examination of these absolute grounds underscores their non-negotiable nature and importance in maintaining the integrity of the trademark system.
Despite their strictness, the provisions for acquired distinctiveness and notarized consent offer crucial avenues for flexibility. These exceptions demonstrate a sophisticated legal framework that balances rigid public policy considerations with the dynamic realities of brand development and commercial agreements. For aspiring brand owners and businesses, a thorough understanding of these absolute grounds and their exceptions is paramount. Proactive legal consultation and diligent preparation of trademark applications can significantly mitigate the risk of refusal, streamlining the registration process and securing robust protection for valuable brand assets in Turkey.
📩 For professional advice on trademark registration and overcoming refusal grounds:
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