Ezgi Baklacı Gülkokar, LL.M. and Pelin Ersoy - December 25, 2018
The Turkish IP Law No: 6769 (“IP Law”) came into force in January 2017, including protection for geographical indications and traditional specialties. The Turkish approach encourages geographical indications to be registered by providing these with wider protection than unregistered indications.
According to the IP Law, absolute grounds for the Turkish Patent and Trademark Office (“TPTO”) to refuse a trademark application include signs which:
– Consist entirely, or include as an essential element, of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, production time, time of rendering, or other aspect of goods or services.
– Would deceive the public. For instance, as to the goods or services’ nature, quality or geographical origin.
– Consist of a registered geographical sign or which contain a registered geographical sign.
The TPTO will also refuse a trademark application upon receiving an opposition from the right holder if the application in question consists of a person’s name, trade name, photography, copyright or any other intellectual property right belonging to another party. The phrase “any other intellectual property right” includes geographical indications, geographical designation of origins, as well as traditional specialties.
The TPTO’s practice for examining oppositions to trademark applications (including geographical indications) is different to practices adopted in some other countries, which often interpret a term’s deceptiveness widely. A wide interpretation means that regardless of whether a geographical indication is registered, such country will directly limit the goods covered by an application to the subject of the geographical indication.
Similar to the European Union’s practice, the TPTO distinguishes between geographical indications which are registered before the TPTO and unregistered geographical indications.
The TPTO provides wide protection for trademark applications (including geographical signs) which are registered before the TPTO. In these cases, the TPTO will reject applications for goods other than the subject of the geographical indication, limiting the application only to the relevant good.
For instance, consider a trademark application which includes the geographical indication “Scotch Whisky” (registered before the TPTO as geographical indication), such as “X Scotch Whisky”. In this case, if the applicant sought to use general wording in the trademark application such as “alcoholic beverages (except beers), wines, raki [traditional Turkish alcoholic drink], whisky, liqueurs, alcoholic cocktails”, the TPTO would actually limit any trademark registration it grants to “Scotch Whisky” alone.
The TPTO would reject all of the other goods noted in the application’s scope on the basis that if it grants a trademark with this scope, the trademark could deceive the public about the nature, quality or geographical origin of the goods which were not the geographical indication’s direct subject.
For trademark applications which include geographical signs that are not registered before the TPTO, protection is based on provisions in the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”). The TRIPS Agreement allows signatory countries to refuse or invalidate a trademark which contains or consists of a geographical indication in relation to goods which do not originate in the territory indicated, if using the indication for such goods would mislead the public as to the good’s true origin.
The TPTO bases its limited protection for unregistered geographical indications on the TRIPS Agreement. In this case, the TPTO will limit the registration in relation to goods which are directly linked to the geographical sign, but the registration process would continue for the other goods included in the application.
For instance, consider a trademark application which includes the geographical indication “Prosecco” (which is not registered as geographical indication before the TPTO), such as “X Prosecco”. In this case, if the applicant sought to use general wording in the trademark application such as “alcoholic beverages (except beers), wines, raki, whisky, liqueurs, alcoholic cocktails”, the TPTO would limit the term wines as “wines, namely sparkling wines” but the registration process would still continue for the other goods in the class (i.e. raki, whisky, liqueurs and alcoholic cocktails).
According to the TPTO’s practice, the other goods within the application’s scope would be published in the trademark bulletin and normally continue through the registration process. Given this aspect, it can be concluded that the application would continue to be deceptive for the remaining goods, since these are included in the trademark application but are not directly related to the geographic indication.
The TPTO’s approach encourages geographical indications to be registered by providing these with wider protection than unregistered indications, as well as narrowly interpreting deceptiveness.
The TPTO’s practice in this respect is similar to many countries, including Australia, Brazil, Chile, China, Colombia, France, Portugal, and Spain. The intention is always to restrict a trademark application (including a geographical indication) to its subject alone and remove other goods or services from the application’s scope on the basis of potential deceptiveness.
Given the TPTO’s current practice and approach, entities which wish to protect their geographical signs should definitely apply for these to be registered since this would enable a comparatively wider scope of protection. On the other hand, the TPTO’s intention of providing wider protection to registered geographical indications may need to be revised, given the potential for confusing and deceiving the average consumers when a geographical indication is registered as trademark for goods other than those which are the indication’s subject.