The Turkish Patent and Trademark Office (the office) published the New Trademark Examination Guideline (guideline) on September 30 2019. The guideline defines the criteria for the examination of trademark applications on absolute grounds within the scope of the Industrial Property Code (IP Code) that came into force in 2017.
The guideline aims to update the previous guideline which was in force from 2011, clarify the principles of absolute grounds for refusal that are explained in the IP Code and provide consistency in office decisions.
The guideline consists of 379 pages and includes a great number of examples encompassing the decisions of the office and the courts, as well as recent developments in the EU. In particular, Article 5/1(c) regarding descriptiveness and Article 5/1(ç) regarding indistinguishable similarity to a senior trademark or trademark application are discussed in detail, providing various examples.
The key points of the guideline can be summarised as follows:
Since graphical representation is not required, it is enough to upload videos and voice recordings for applications for sound marks. For colour mark applications, the section for the colour example must be filled out fully and the "Pantone" colour code must be indicated.
When evaluating the trademark applications for "distinctiveness" and "descriptiveness", i) the trademark to be registered should be evaluated together with the goods and services that are the subject of the application; ii) the application should be evaluated as a whole; iii) the perception of the target consumers should be taken into consideration.
While the ex officio similarity evaluation is conducted by the office for the same or indistinguishable trademarks i) if there are two composite marks under evaluation, the overall impression that the marks leave should be taken into consideration, ii) if there is one composite and one non-composite mark under evaluation, the evaluation should be made upon the distinctive elements, iii) the distinctiveness level of the trademarks such as low-middle-high should be taken into consideration while the protection scope is determined.
The office, in its announcement, stated that this is a living document and should be updated occasionally according to changes in practice and evaluation. We believe that this detailed work will clarify the principles of absolute grounds for refusal and provide consistency in the office's decisions.
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