The introduction of Industrial Property Code No. 6769 (IP Code) in Turkey in 2017 changed the definition of a trademark and explicitly listed colors as one of the signs that can be registered as trademarks using international color codes. But practice is showing that some color marks are easier to register than others.
Registering single color marks can be more difficult, which can also be the case when it comes to enforcing them.
Even before the legislative change, registration of color marks was permissible. However, it was not possible to state the internationally recognized color codes in the application form. It was therefore necessary to specify the color code with a separate petition, and the color code was neither published nor recorded. Also, such applications were referred to as “device trademarks” in the register, not “color marks.”
Under the IP Code, color marks can be registered by specifying the Pantone code, one of the internationally recognized color codes, to ensure the exact tones of the colors and by providing the color samples expressed by these codes.
Color marks are examined in two subgroups, as “marks consisting of a single color” and “marks featuring a combination of colors.” Marks consisting of a single color have a less distinctive character than those that feature a combination. Therefore, an application consisting of a single color must be seen as lacking distinctive character, unless acquired distinctiveness through use is proven with sufficient evidence.
When consumers encounter signs such as words and designs on a product, they usually perceive these signs as a trademark. However, for a color to be perceived as a trademark, the color must be used continuously and for an extended period of time on the product. From this use it must acquire a distinctive character to function as a trademark in relation to the relevant goods or services.
It is generally difficult to convince the Turkish Trademark and Patent Office (the Office) to accept single-color marks as distinctive signs even if the applicant submits extensive evidence of use. For example, the Turkish designation of Kraft Foods’ International Registration no. 644464 for its “purple color” trademark was first refused by the Office during the ex officio examination. However, it was later registered after Kraft submitted extensive evidence during the appeal phase. The application was filed in 2005 as a designation of an International Registration in Turkey and was first refused in 2006, after the filing of the refusal appeal. The supporting evidence was submitted with the appeal and after the appeal in 2007 and 2008. The application was registered in 2008, and not renewed in 2015. It is interesting to note that despite the efforts to register this color mark, it was not renewed at the end of its 10-year term.
Under the Trademark Examination Guidelines, providing a broad and exclusive right on colors is incompatible with a balanced competition system, as allowing such rights could create an unfair competitive advantage for a single company. For this reason, the public interest should be considered to prevent the unjust restriction of the use of a color on the same kinds of goods or services as those subject to registration by other enterprises.
Also, based on case law, it is accepted that colors are nondistinctive if they are necessary or functional with respect to the use on the goods or services subject to an application. If the use of a color on the product (or in the provision of services) provides a certain benefit in terms of the use of the relevant product, it is accepted that the color is functional and lacks distinctive quality. For example, the color red for fire extinguishers is not considered in case law to be distinctive as it is a commonly used color.
Furthermore, colors lack distinctive qualities if they are commonly used in the sector or colors with a descriptive character for the desired class of registration. For example, the use of yellow in the food industry is a common use that indicates that the product is lemon-flavored.
Color combination marks, meanwhile, are accepted to have a higher degree of distinctiveness. When determining the distinctiveness of a mark featuring a combination of colors, the way colors are presented and their possible use in relation to goods or services are important factors. Possible uses should be considered in the distinctiveness assessment. For example, it may be more difficult to register a color combination on goods or the packaging commonly used in connection with the goods, or their advertising. However, in general, color combination marks are registered without need of proof of distinctiveness as there is not a strict examination, unlike single color marks. But if the color combination is widely used on related goods/services and has a low distinctiveness in that field, it may be difficult to register it.
In practice, almost all color combination marks are registered without need of proof of distinctiveness.
The difficulties that applicants are experiencing in registering single color marks are mirrored when it comes to their enforcement.
For example, in a final decision of the Eleventh Chamber of the Supreme Court, 2017/3812 E. 2019/1021 K., February 11, 2019, the plaintiff claimed that the packaging design and color of the defendant’s chocolate wafer products advertised under the CENTRO trademark created a likelihood of confusion with the plaintiff’s get-up of its ALPELLA product.
The plaintiff relied on its registered ALPELLA trademark to prevent the following use by the defendant:
The regional court (Twentieth Chamber of the Regional Court, 2017/689-2017/636, June 30, 2017) decided that although the purple background color used in the packaging was similar in both trademarks, this color did not have a trademark distinctiveness independent of the word element and that the purple color did not directly suggest the plaintiff company and its products and trademarks in terms of the “chocolate wafer” goods in Class 30. The Supreme Court upheld the decision of the regional court which states the color purple has no distinctive feature.
A possible reason for this decision is that the plaintiff was not able to rely on a single-color registration for the purple color, but only a figurative trademark registration for ALPELLA with a purple background color. In the authors’ opinion, the plaintiff may have been successful if it had been able to claim infringement of a single-color trademark registration for the purple color. For now, the enforcement of color marks in Turkey remains uncertain, as both the Office and the courts lack established precedents.
First published by INTA Bulletin, in 26.05.2021