The New Trademark Examination Guideline

TÜRKATENT published The New Trademark Examination Guideline (“the Guideline”) on September 30, 2019. The Guideline defines the criteria regarding the examination of trademark applications on absolute grounds for refusal within the scope of the IP Code that came into force in 2017.

The Guideline updates the previous guideline that had been in force since 2011, clarify the principles of absolute grounds for refusal that are explained in the IP Code, and provides consistency in the Office’s decisions.

The Guideline comprises a number of examples, which include the decisions of the Office and the Courts, as well as the recent developments in the EU. Especially, 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 numerous examples.  

While the Guideline includes details and a number of examples, the highlighted points are summarized, as follows:

  • With regard to the representation of the trademark in the registry, it states that since graphical representation is not required, it is sufficient to upload videos and voice recordings for the applications of sound marks. Furthermore, it is highlighted that for color mark applications, the section for the color example must be filled in, fully, and the “Pantone” color code must be indicated;
  • With regard to “distinctiveness” and “descriptiveness,” the main criteria that should be taken into consideration for the evaluation of the trademark applications are noted, and it is emphasized that i) the trademark to be registered should be evaluated, together with goods and services that are the subject of the application, ii) the application should be evaluated as a whole, and iii) the perception of the target consumers should be taken into consideration. Many examples are provided for word marks, slogans, device marks, color marks, color combination marks, voice marks, movement marks, and trademarks, including INNs, etc.; and
  • With regard to an indistinguishable similarity to a senior trademark or trademark application, it is specified that there will be an ex officio similarity evaluation by the Office for the same, or indistinguishable, trademarks, and it is emphasized that i) if there are two composite marks under evaluation, the overall impression that the marks leave will be taken into consideration, ii) if there is one composite, and one non-composite, mark under evaluation, the evaluation will 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. Many examples are provided for indistinguishable similarities of trademarks, which include phrases such as OPTİMUM, GLOBAL, STAR, BY, THE, MY, GROUP, EURO, PLUS, SMART, EXTRA, PURE, SOFT, and LIFE, as well.

The Guideline has helped to shape practices, and has provided consistency of the Office’s decisions, especially before the appeal board of the Office. The Office is currently working on the second part of the Guideline that will address the examination of trademark applications on relative grounds, the publication of which is expected within the second or third quarter of 2020. We predict that this second Guideline will continue to assist the practice, by providing guidance to both examiners and practitioners, which will hopefully lead to high quality decisions by the Office.

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