Article 5(1)(e) – Turkish Industrial Property Code
Signs which consist exclusively of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods shall not be registered as trademarks.
🔎 Understanding the Rule
Trademark law does not allow the registration of product shapes and essential characteristics that should remain free for all competitors to use. This ensures that trademarks are not misused to create perpetual monopolies over natural, functional, or aesthetically valuable features.
The exclusion applies to three situations:
1️⃣ Shape resulting from the nature of the goods
Example: the shape of a banana for bananas.
2️⃣ Shape necessary to achieve a technical result
Example: Lego brick studs, which interlock due to their technical function.
3️⃣ Shape giving substantial value to the goods
Example: a luxury handbag or a decorative perfume bottle whose appeal is primarily aesthetic.
⚖️ Why This Rule Exists
Patents cover technical solutions (limited duration). Designs & Copyrights cover artistic/aesthetic value (limited duration). Trademarks cover distinctive signs that indicate origin (potentially indefinite).
Allowing functional or aesthetic shapes as trademarks would undermine this balance and unfairly block competition.
🌍 Refusals in WIPO (Madrid) Applications
When filing via the Madrid System (WIPO), each designated country examines the application under its own national law.
If a country finds the mark unregistrable under rules like Article 5(1)(e) IPC or Article 7(1)(e) EUTMR, it issues a provisional refusal. WIPO simply records and forwards this refusal—it does not examine or decide itself. All appeals must be made directly with the national IP office that refused the mark.
👉 Each country sets its own deadlines and procedures for objections.
⏳ Objection Deadlines and Procedures
Turkey (TÜRKPATENT)
Deadline: 2 months from notification. Procedure: Appeal to the Higher Board of Re-Examination and Evaluation (YİDK).
EUIPO (European Union)
Deadline: 2 months. Procedure: Appeal to the EUIPO Board of Appeal. Further remedies: General Court and Court of Justice of the EU (CJEU).
UKIPO (United Kingdom)
Deadline: 2 months. Procedure: Written submissions, oral hearing if necessary. Further remedies: Appeal to the Appointed Person or High Court.
WIPO (Madrid System)
No direct appeal at WIPO. Objections must be lodged with the national office that issued the refusal.
🚀 Overcoming a Refusal under Article 5(1)(e)
Challenging a refusal under this rule is difficult, but possible in certain circumstances:
Not Exclusively Functional or Natural Show that alternative shapes exist on the market, so your design is not inevitable. Acquired Distinctiveness Prove that consumers now associate the shape with your brand (e.g., Coca-Cola bottle). Narrowing the Specification Limiting goods/services can sometimes reduce conflicts. Using a Combined Sign Applying a distinctive logo or word element alongside the shape may help.
📌 Practical Tips
Always run a registrability assessment before filing shape marks. Consider filing for design protection (appearance) or patent protection (function). Monitor deadlines closely in WIPO filings—appeal windows are short and strict.
❓ Frequently Asked Questions (FAQ)
Q1: Can I trademark the shape of my product in Turkey?
✔️ Yes, but only if the shape is distinctive and not excluded under Article 5(1)(e).
Q2: What happens if my WIPO international trademark is refused in one country?
✔️ The refusal applies only in that country; protection remains valid elsewhere.
Q3: Can I overcome a refusal by proving acquired distinctiveness?
✔️ In the EU and some other jurisdictions, yes—if you can show long and exclusive use.
Q4: What is the deadline to appeal a refusal in Turkey?
✔️ 2 months from the date of notification.
Q5: Should I apply for design protection instead?
✔️ Yes, if your product’s main commercial value comes from its appearance.
📞 Need Expert Help?
If your trademark application has been refused under this rule in Turkey, the EU, or via WIPO, professional legal advice is crucial to assess your appeal options.
📧 Email: emre@emrekurt.av.tr
📱 WhatsApp: +90 551 942 20 34
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