A trademark may be defined basically as any sign that provides the goods or services of an undertaking to be distinguished from other undertakings’ goods or services. According to this definition, the prior condition for a sign to be registered as a trademark is distinctiveness characteristic. If a sign does not distinguish a good or service from others, it cannot be registered as a trademark.
The signs which cannot be registered as a trademark have been determined by law (Industrial Property Law). The signs which cannot be registered as trademarks pursuant to law are as follows;
- Signs that are the same kid or indistinguishable from the trademark that was registered or applied for registration previously concerning the same or the same type of goods or services
- Signs including characteristics of products or services such as type, genre, quality, quantity
- Signs demonstrating the place where the product was produced and the time of its manufacturing
- Signs including the natural form of the product or the form that appeared at the production phase
- Signs that define in general a profession or activity and are used by everyone, i.e. generic trademark and names
- Signs that misguided the public regarding matters such as the characteristic, quality, or geographical origin of the goods or services
- Pursuant to the Paris Convention to which the Republic of Turkey is a party; signs with cultural and historical significance such as coat of arms, emblems, medals, flags etc. belonging to the countries that are party to this convention
- Signs including religious values and symbols
- Signs contrary to public morality or public order
- Signs consisting of or including registered geographical signs
EXAMPLES OF SIGNS THAT CANNOT BE REGISTERED AS A TRADEMARK
The subject regarding which signs cannot be registered as a trademark is a very technical subject legally. Therefore, it may be easier to understand if it is explained with examples. For instance, the registration application of ”Çeşme Kumrusu” as a trademark was rejected. The reason is that the trademark whose registration is requested includes the Çeşme county of the trademark, which may misguide the consumer regarding the origin of the product. The examples of signs that cannot be registered as trademarks are as follows;
- Signs specifying the quality or qualification of a product cannot be registered as a trademark. For instance, “taze peynir” cannot be registered as a trademark. The reason is that it includes the qualification of the product as the main element.
- Production places of products may affect the consumer’s preferences. For instance, Şirince is well-known for its wine production in Turkey. If ”Şirince” is registered as a trademark in this class, it is not possible to be registered because of the geographical origin is indicated.
- The natural forms of some products or the forms that emerge in consequence of production may be the same. Registration of these forms as main elements is not possible. While an ordinary bicycle picture cannot be registered as a trademark; a new and unique image created by putting a trading name will be registered as a trademark.
- Professional names such as attorneyship, engineering, and teaching will not be registered as trademarks. Such names must have a combination which has a distinctive character in order to be registered as trademarks. It will be possible to register a sign in the manner of a private name and surname + engineering.
- Turkey and the UK are both parties of the Paris Convention. Order of The British Empire cannot be registered as a trademark in Turkey, because it has a historical and cultural value in England. Along the same line, the flag of the Republic of Turkey will not be registered as a trademark in England.
- It is not possible to register symbols as a trademark that include any religious value, such as a mosque minaret or a figure of religion.
- Signs contrary to public order and public morality may be defined as signs that will not be approved by the majority of the public.Revilement and/or insulting words and pictures including violence are in this category.
- The geographical sign is defined in the law as a sign indicating the product which identified with the territory, area, region, or country regarding a significant feature, reputation, or other characteristics. As it is understood from the definition, identification is essential for a geographical sign.
Şeref Şen, Attorney At Law