Article 5 of the Turkish Industrial Property Law No. 6769 outlines the absolute grounds for refusal in trademark registration applications. In this article, we will discuss the refusal grounds specified under Article 5/1 of the Law in detail.
1. Article 5/1-a: Refusal of Signs That Cannot Be Trademarks
Article 5/1-a of the law stipulates the mandatory refusal of signs that cannot be trademarks under Article 4 of the Industrial Property Code. For a sign to be accepted as a trademark under Article 4 of the law, it must meet three conditions:
- It must be a sign,
- It must have the ability to distinguish the goods or services of one undertaking from those of other undertakings in a general sense,
- It must be capable of being represented in the register in a manner that allows the subject of the protection granted to the trademark owner to be clear and precise.
2. Article 5/1-b: Non-Distinctive Signs
According to Article 5/1-b of the law, ‘signs that lack any distinctive character’ cannot be registered as trademarks. For example, the term “Aroma” for coffee in Class 30 or “Karite” for cosmetic products in Class 03 would not be considered distinctive and should be refused.
3. Article 5/1-c: Generic Terms Used in Trade
Article 5/1-c of the law states that signs or names that exclusively or primarily consist of indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services, should be refused. For example, the term “Jetmontaj” (meaning “Jet Assembly”) in Class 40 for assembly services would be refused as it provides information about the nature of the service.
4. Article 5/1-ç: Refusal of Identical or Similar Marks
Article 5/1-ç of the law states that signs identical with or similar to an earlier trademark registered or applied for the same or similar goods or services must be refused. For instance, if there is an already registered trademark “Kasaba Süt” (Kasaba Milk) in Class 29 for dairy products, a subsequent application for the mark “Kasaba” would need to be refused.
5. Article 5/1-d: Widely Used Signs in Trade
Article 5/1-d of the law specifies that signs or names widely used in trade by everyone or which serve to distinguish members of a particular trade, craft, or profession must be refused. An example would be the use of the red “E” letter on pharmacy signs or the symbols for the Dollar and Euro currencies.
6 Article 5/1-e: Signs Representing the Nature of the Goods
Article 5/1-e of the law stipulates that signs which consist exclusively of the shape, or another characteristic, of goods which results from the nature of the goods themselves, or which is necessary to obtain a technical result, or which gives substantial value to the goods, should be refused. For example, using the shape of a rugby ball as a logo without any additional design elements would fall under this category.
7 Article 5/1-f: Deceptive Signs
Article 5/1-f of the law states that signs which are of such a nature as to deceive the public as to the nature, quality, or geographical origin of the goods or services should be refused. For example, a trademark application for “Global Fruit Juices” in Class 32 for waters and beers would be considered deceptive and thus refused.
8. Article 5/1-g: Prohibited Signs under the Paris Convention
Article 5/1-g of the law refers to the refusal of signs that are prohibited under Article 6ter of the Paris Convention. For instance, trademarks containing the Turkish flag cannot be registered.
9. Article 5/1-ğ: Public Interest and Cultural Values
Article 5/1-ğ of the law covers signs that are not protected under Article 6ter of the Paris Convention but are nevertheless of public interest, or are associated with cultural or historical values that belong to the public, as well as emblems, insignia, or names that have not been authorized for registration by the competent authorities. Names such as Atatürk, Mevlana, or Evliya Çelebi would be refused under this provision.
10. Article 5/1-h: Religious Symbols and Values
Article 5/1-h of the law stipulates that signs containing religious values or symbols cannot be registered as trademarks. For example, names such as “Kuran-ı Kerim,” “Hz. Muhammed,” or “KABE” cannot be registered as trademarks.
11. Article 5/1-ı: Signs Contrary to Public Order or Morality
Article 5/1-ı of the law specifies that signs that are contrary to public order or morality cannot be registered as trademarks. This includes signs that may harm the normal functioning of society based on its general principles and values, that contradict society’s understanding of morality, that encourage harmful habits, that incite crime, or that contain profanity, insults, racism, or discrimination. For example, the word “Terrorist” would not be registrable as a trademark. However, applications that clearly indicate a fictitious nature, even if they appear to represent an official institution, are not assessed under this provision. An example would be the “Turkish Fil Kurumu” (Turkish Elephant Institution).
12. Article 5/1-i: Geographical Indications
Article 5/1-i of the law states that signs consisting of or containing a registered geographical indication cannot be registered as trademarks. For example, “Antep Baklavası” or “Malatya Kayısısı” (Malatya Apricot) cannot be registered as trademarks.
Oppositions under Article 5/1
The absolute grounds for refusal under the law Article 5/1 are examined ex officio by Turkpatent during the application stage. These grounds may also be considered during the opposition stage. If an applicant believes that the examiner has made an incorrect publication decision based on absolute grounds for refusal, they may also base their opposition on the grounds stated in Article 5, excluding Article 6.
