For a trademark to be registered, consumers must be able to identify the commercial origin of the goods or services upon seeing the mark. This essential function—known as distinctive character—is at the very heart of trademark law.
Article 5(1)(a) of the Turkish Industrial Property Code (IPC) provides that signs lacking distinctive character cannot be registered as trademarks. This provision mirrors EU trademark legislation and is critical not only from a procedural standpoint but also in terms of consumer perception in the marketplace.
1. Legal Text – Article 5(1)(a) Industrial Property Code (Turkey)
ARTICLE 5(1)(a) – Signs which may not be trademark according to Article 4 shall not be registered as a trademark.
2. Legal Context
In Turkish trademark law, a fundamental condition for registration is that the sign must be capable of distinguishing the goods or services of one undertaking from those of another (IPC Article 4).
If a sign does not meet this distinctive function, it fails under Article 5(1)(a) and will be refused ex officio by the Turkish Patent and Trademark Office (TPTO).
This provision aligns with Article 3(1)(a) of the EU Trade Mark Directive (EUTMD) and Article 7(1)(a) of the EU Trade Mark Regulation (EUTMR).
3. What is “Distinctiveness”?
A distinctive sign enables consumers to immediately identify the commercial source of goods or services.
Lack of distinctiveness occurs when:
The sign is too generic (e.g., “BREAD” for bakery services). The sign is customary in the trade and does not indicate origin. The sign is too simple (e.g., a plain geometric shape without unique features). The sign is purely descriptive in its overall impression (even if not caught by Article 5(1)(c)).
4. Examples in Practice
❌ “CHAIR” for furniture – generic and non-distinctive. ❌ Basic circle symbol for clothing – simple geometric shapes without acquired distinctiveness are not registrable. ✅ Invented words like “KODAK” – inherently distinctive.
5. EU and Turkish Case Law Guidance
CJEU, “Libertel” (C-104/01) – A single colour per se may be distinctive only if it departs significantly from the norm of the trade. CJEU, “Henkel” (C-218/01) – Basic packaging shapes are non-distinctive unless they differ markedly from what is customary. Turkish IP Court rulings confirm that signs must be assessed as a whole; a single non-distinctive element does not necessarily doom the mark if the overall impression is distinctive.
6. If a Trademark is Refused for Lack of Distinctiveness: What Can You Do?
If TPTO refuses a trademark on the ground of Article 5(1)(a), the applicant has legal remedies:
File an Appeal before TPTO’s Re-examination and Evaluation Board (YİDK) Deadline: 2 months from the notification of the refusal. Grounds for appeal can include: The sign is inherently distinctive. The sign has acquired distinctiveness through use (IPC Article 5(2)). The TPTO made an error in assessing distinctiveness. Provide Evidence of Acquired Distinctiveness (Secondary Meaning) Continuous and substantial use in Turkey before the application date. Market surveys demonstrating consumer recognition. Advertising and marketing data. Sales volumes and distribution coverage. Modify and Re-apply Adding distinctive figurative elements or stylisation. Combining the word mark with a unique logo. Using a distinctive colour scheme or layout. Judicial Review If YİDK rejects the appeal, a lawsuit can be filed before the Ankara IP Court within 2 months of the YİDK decision.
7. Key Takeaways
Distinctiveness is the core function of a trademark; without it, registration is impossible. Article 5(1)(a) targets signs that fail to meet the basic definition of a trademark in Article 4. Turkish law mirrors EU law, meaning EU case law is persuasive when interpreting distinctiveness. Refusal is not the end of the road — with strong evidence of acquired distinctiveness or design changes, registration may still be possible.
📌 Practical Tip for Businesses:
When choosing a brand name, avoid generic or overly simple signs. Select words, logos, or designs that are immediately recognisable as your brand, not just a description of the goods or services.
📢 Need professional advice on trademark registration or refusal appeals?
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