One of the major changes brought by the IP Code that came into force on 10 January 2017 is on non-traditional marks and, especially, on color marks. Although it was also possible to register color marks prior to the change of legislation, in practice, the use of an internationally recognized color code within the application form was not possible, hence color codes were mentioned by a separate petition, and the applications were considered as “device trademarks” within the records. Accordingly, trademarks were not particularly identified as having color marks in the records of the Turkish Patent and Trademarks Office (the Office), which caused uncertainties, in practice, while enforcing the trademarks.
After the IP Code came into force, implementations concerning non-traditional marks, the color marks changed, and it became possible to file applications using color marks by indicating the Pantone code.
In the application form. it must be explicitly stated that the application is filed with a color mark. The Pantone code(s) must be specified within the name of the trademark section, and the color applied for registration must be displayed under the trademark sample section without any colorless part in the space reserved for this. The trademark sample also should not consist of any frames.
In terms of the evaluation regarding the distinctive character of the color marks, this must be conducted in two aspects, one being the “marks consisting of a single color,” and the other being the “marks featuring a combination of colors.”
It is accepted that the marks consisting of a single color have a less distinctive character, as compared to those that feature a combination of colors. In this respect, similar to the prior implementation of the Office, it must be proved with adequate evidence that these types of marks have acquired distinctiveness by means of use. Furthermore, with a similar approach adopted in traditional marks, colors are often accepted to be descriptive for the specified goods/services, in the event where they are commonly used in the sector, or where they have a descriptive character of the goods/services for which the mark is used, e.g. “yellow,” suggesting lemon-flavored products, or “green,” suggesting mint-flavored products.
Furthermore, as stated in the Trademark Examination Guideline, it is accepted that the provision of a broad and exclusive right on colors does not comply with a balanced competition system, since it may lead to an unfair competitive advantage for a single enterprise. For this reason, the public benefit must be considered in order to ensure that other enterprises are not subject to unjust restrictions in terms of the use of color on the same kinds of goods/services with those that are subject to registration.
Accordingly, although filing an application for a single color is possible before the Office in Turkey, similar to the previous practice, these types of applications are normally rejected during examination on absolute grounds and, unless their acquired distinctiveness is proven with sufficient evidence, it is also difficult to convince the examiners during the appeal phase.
Regarding the marks featuring a combination of colors, these types of marks are accepted to have a higher degree of distinctiveness, as compared to the marks that have a single color. When determining the distinctiveness of a mark featuring a combination of colors, the following criteria is taken into account: Whether the color combination is commonly used in the sector for the relevant goods or services; whether it has a functional quality for the relevant goods or services; whether the colors are only perceived as an ornamental element; and the impact and impression of the mark on the related consumer mass, in respect of its appellation of the origin of the product.
In addition, although not mandatory, it is recommended for the applicants to specify the location and distribution ratio of the colors comprising the color combination for the marks that feature a combination of colors.
In the event that a color combination is not formed on a previously determined and integrated order, it prevents the criteria of explicit and definite display of the subject of the protection in the registry from being fulfilled, since there are numerous possible variations. The explanations must comply with the display, and must not expand the scope of the protection, since the scope of the protection is determined only by the display.
Together with the above changes in respect of color marks, by which the borders of registration become more clear, company owners have begun to file new applications for the colors of their entities and/or brands in order to strengthen visual distinctiveness and memorability of their brand, products and services. Therefore, the number of applications filed with color marks before the Office increased after the IP Code entered into force.