According to Article 6/6 of the Turkish Industrial Property Code, “An application for registration of a trademark shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another.” Based on this provision, it is possible to oppose an application relying upon the opponent’s other intellectual property rights ownership.
On December 20 2022, the Re-Examination and Evaluation Board (the Higher Board) of the Turkish Patent and Trademark Office (the IP Office) rendered a decision including detailed explanations regarding the copyright ownership argument and set an excellent example of the IP Office’s criteria for accepting such an argument. Before discussing the decision, it should be noted that the Higher Board consists of three senior examiners and generally conducts a comprehensive and consistent examination. So, the Higher Board’s decisions are valuable as precedents in opposition proceedings.
The application and CBS opposition
An application was filed for the following for the services in class 35 by a real person.
As illustrated, the application consists of a hand gesture known as the ‘Vulcan salute’, which was used in the Star Trek series by the character Mr. Spock and become famous throughout the world.
An opposition was filed against the application by CBS Studios Inc. (CBS), the owner of certain rights regarding the television series Star Trek and all the related rights. CBS’ rights include numerous copyrights, trademarks, and merchandising and other subsidiary rights relating to the series and 13 motion pictures, including logos, ships, characters’ names, fictional species, phrases, uniforms, props, and other elements appearing therein (Star Trek Properties). The opposition was based on CBS’s genuine right ownership over Star Trek Properties, CBS’s copyright over Star Trek Properties, the well-known status of Star Trek Properties, and the applicant’s bad faith.
The Turkish IP Office’s decision
The Trademark Department of the IP Office rejected the opposition entirely. Upon CBS’s appeal, the matter was reviewed by the Higher Board. In its decision, the Higher Board mentioned the facts below, which were included in CBS’s petitions and evidence:
Star Trek was first broadcast in 1966;
There are numerous books, comic books, magazines, and collectibles dedicated to Star Trek;
Mr. Spock is the iconic character of Star Trek, who makes the authentic hand gesture known as the Vulcan salute;
The Vulcan salute gesture has been made in reference to Star Trek by Barack Obama, NASA, Hollywood stars, and Turkish celebrities;
The Star Trek series have been broadcast in Turkey since the 1970s, on several channels;
The series were presented as comics in the most highly circulated newspapers;
The series are still followed by Turkish audiences; and
CBS is the holder of the intellectual property rights emerging from the trademarks related to Star Trek.
Within this context, the Higher Board stated that the application includes the iconic figurative device of the Vulcan salute, associated with the famous Star Trek series, and directly evokes or references the relevant series, and accepted CBS’s appeal based on Article 6/6 of the Turkish Industrial Property Code (CBS’s copyrights over Star Trek properties). The decision was finalised upon no further appeal by the applicant.
The importance of the ruling
Based on the decision, a copyright ownership argument is supported by providing the history, showing extensive use nationally and internationally, and underlining the popularity of the artistic work.
Precedents regarding implementation of this article by the office are limited since it is considered as a supporting argument and generally alleged with bad faith and genuine right ownership. Therefore, the Higher Board’s decision sets an important example, since it accepted the opposition based solely on copyright ownership. Also, it provides the criteria that the office considers while assessing a copyright ownership argument.
