Trademark law stipulates certain fundamental conditions for the registration of a trademark. The most important of these conditions are regulated under Article 5 of the Industrial Property Law No. 6769 :
- Article 5/1-b: Emphasizes that a trademark must possess distinctive characteristics.
- Article 5/1-c: States that a trademark must not consist of signs indicating the kind, type, quality, quantity, value, or other characteristics of goods or services.
Before filing a trademark application, it is crucial to examine the potential absolute grounds for refusal regarding the proposed trademark. The existence of a previously registered trademark does not guarantee the acceptance of a new application for the same trademark. Therefore, it is essential to conduct a detailed analysis of the trademark’s current conditions.
Absolute Grounds for Refusal Under Articles 5/1-b and 5/1-c
Articles 5/1-b and 5/1-c of the IPL clearly outline the situations where a trademark cannot be registered, taking public interest into account:
- Article 5/1-b: Specifies that non-distinctive, ordinary, or descriptive signs cannot be registered as trademarks.
- Article 5/1-c: Explains that signs directly indicating the essential characteristics, usage purpose, or geographical origin of goods or services are excluded from registration.
Proof of Distinctiveness
Distinctiveness refers to the recognition a trademark gains among consumers through use and its association with specific goods or services. Therefore, the following documents should be submitted during the application process:
- Invoices showing the use of the trademark.
- Advertising and promotional materials (brochures, catalogs, digital advertising proofs).
- Social media accounts and website content.
- News articles or publications about the trademark.
- Trade fair participation certificates.
These documents are effective tools to support the distinctiveness of the trademark and to prevent potential refusal decisions.
Additionally, analyzing the possibility of refusal in advance is crucial for the success of the application process and effective time management. In this context, the following points should be taken into consideration:
- Trademark Distinctiveness: The low level of distinctiveness of a previously registered trademark does not guarantee that a new application will be accepted.
- Anticipation of Possible Refusal Decisions: Decisions to refuse registration may be issued under Articles 5/1-b and 5/1-c of the IPL. Proving acquired distinctiveness is a critical factor for the acceptance of the trademark.
- Submission of Supporting Documents: Submitting information and documents regarding the use of the trademark during the application process is essential to prevent potential refusals and save time.
- Countries Where the Trademark Is Registered: Providing documents showing that the trademark has been registered in other regions or countries may increase the likelihood of acceptance.
- Claiming Acquired Rights: If there is a similarity between a previously registered trademark and the new application, claiming acquired rights may be brought up. However, the acceptance of this claim alone may not be sufficient.
Application Strategy
To overcome the grounds for refusal under Articles 5/1-b and 5/1-c, it is recommended to submit Supporting Documents during or immediately after the application process. Providing additional arguments to clearly demonstrate that the trademark is not descriptive or ordinary but has instead acquired distinctiveness through use, and supporting this with relevant documents, can help applicants avoid rejection during the preliminary examination phase and prevent potential time loss.
Conclusion
Before filing a trademark application, a detailed analysis and preparation process must be carried out. In this context, the risks should be evaluated with the attorney involved in the process, and the application process should be conducted accordingly. Preparing documents related to the use of the trademark in advance will increase the likelihood of acceptance and help prevent potential time losses.