Contact: Att. Pelin Baydar; Erdem & Erdem (Turkey)
Acquired Distinctiveness through Use
The absolute grounds required to refuse the registration of a trademark are defined by Article 7/1 of the Decree Law on Protection of Trademarks (“Decree Law No. 556”). Pursuant to the aforementioned grounds, an exception exists for the refusal of a trademark registration under these circumstances:
- Lack of distinctiveness (7/1(a))
- Descriptiveness (7/1(c))
- Common use in trade (7/1(d))
In accordance with Article 7/2 of Decree Law No. 556, registration of a trademark cannot be refused if it has been used before the registry date and has acquired distinctiveness through such use regarding the goods and services subject to registry as per clauses 7/1(a), 7/1(c) and 7/1(d).
The case of acquired distinctiveness through use is an exception only for refusal conditions stipulated in clauses 7/1(a), 7/1(c) and 7/1(d). Therefore, marks that are unable to be registered on the basis of other absolute grounds not mentioned above cannot benefit from registration based on acquired distinctiveness through use.
Submission of Acquired Distinctiveness through Use
In the Trademark Examination Guidelines prepared by the Turkish Patent Institute (TPI), it is stated that acquired distinctiveness claims can be submitted in two ways. Accordingly, acquired distinctiveness claims can be submitted only if evidence is provided during the application phase. Claims can also be submitted during the objection phase if the application is refused.
Demonstration of Acquired Distinctiveness through Use
Some of the criteria to be considered when determining whether a mark has acquired distinctiveness or not through use are listed in the Trademark Examination Guidelines. However, the criteria listed in said Guidelines is not exhaustive and does not prevent claimants from presenting other criteria to prove acquired distinctiveness.
Principally, it must be proven that the mark indicated in the application is presently in use and has acquired distinctiveness related to the same goods and/or services indicated in the application. It must also be proven that the mark is perceived as a trademark in Turkey. Proof of acquired distinctiveness abroad is not sufficient for registration in Turkey.
The relevant public for the goods and/or services covered by the mark should be taken into consideration in evaluating the evidence submitted regarding the proof of distinctiveness. If these goods and/or services in question are, by their very nature, addressed to specialists or a limited public, the evidence regarding the relevant public is essential and sufficient. On the other hand, food and beverage products are available to all consumers. In that case, the evidence must further demonstrate that the mark is perceived as a trademark by a sufficiently large portion of the public.
Opinion polls, surveys, statements from trade and consumer organizations, articles, brochures, samples, turnover and advertising/promotion figures, successful infringement prosecutions, and previous trade mark registrations can be served as proof for acquisition of distinctiveness through use.
Well-conducted opinion polls are particularly persuasive if the questions are relevant and not leading. This applies in particular to polls or surveys carried out by independent and well-recognized organizations or institutions. Evidence from independent trade associations, consumer organizations and competitors should also be given weight. Evidence from the people related with the applicant, such as suppliers or distributors, should generally be given less weight.
Figures for turnover or advertising should only relate to the goods and/or services with respect to which registration is sought. Market share figures must relate to the mark claiming acquired distinctiveness through use. It is significant that sales figures provided as evidence should indicate the sales regarding the mark in relation to total market sales figures. A sequence table demonstrating the sales figures of other trademarks within the same market segment would be attributed with high probative value.
Evidence should provide information on how the mark is used, its exposure time, consistency and permanency.
Conclusion
Lack of distinctiveness (7/1(a)), descriptiveness (7/1(c)) and common use in trade (7/1(d)) are defined as absolute refusal grounds for trademark registry in the Decree Law on Protection of Trademarks No. 556. However, there is an exception regarding these absolute refusal grounds. If a trademark is presently in use and has acquired distinctiveness and relates to the same goods and/or services indicated in the application, it cannot be refused according to clauses 7/1(a), 7/1(c) and 7/1(d). Nevertheless, acquired distinctiveness claims shall be submitted during the application phase or during objection phase if the application is refused, such claims must be proved.
