How to register a store design
In Turkey trademark law as applied to store designs is unsettled, and greater protection may be found under the industrial design registration process. However, this option has some drawbacks, and companies should consider the relative merits of each alternative.
Turkish law regarding the registrability of non-traditional trademarks is still in flux. According to Article 5 of Trademark Decree Law No. 556: “A trademark, provided that it is capable of distinguishing the goods and services of one undertaking from the goods and services of other undertakings, may consist of all kinds of signs being represented graphically such as words, including personal names, designs, letters, numerals, shape of the goods or their packaging and similarly descriptive means capable of being published and reproduced by printing.”
Based on this provision it appears that the interior or exterior design of a store can be registered as a trademark; however, many questions remain, including the level of distinctiveness required and the level of protection that needs to be provided.
"Registering as an industrial design seems to be the easier and therefore preferable option, but industrial design protection includes a few disadvantages."
The distinctiveness test for three-dimensional trademarks differs from that relating to traditional trademarks. In principle, the Turkish Patent Institute (TPI) takes into account the fact that the shape of a three-dimensional trademark becomes more distinctive as it diverges from its natural shape, or what is standard in the relevant sector. Also, the average consumer should be able to identify the origin of the three-dimensional trademark without any effort because of the unusual and extra features added to it.
Although the TPI and the Turkish courts have started accepting the three-dimensional shape and visual identities as signs that differentiate one company from another, in practice the TPI has made many contradictory decisions that prevent settlement.
Some recent examples lead to one definite conclusion: in cases where a three-dimensional device is filed together with a word element, the word element is taken into account and granted protection. So the chances of registering the store view in combination with a word mark are high. But this registration does not grant exclusive rights to the three-dimensional image as it is filed in combination with a word mark. Therefore, in cases where the design of a store needs to be protected, filing a trademark application in combination with a word mark will not provide the desired protection.
When three-dimensional trademarks are filed without word elements, the TPI rejects them. In such cases, applicants need to file an appeal and prove that (i) the rejected trademark is presently in use and has acquired distinctiveness through its use; (ii) the rejected trademark’s acquired distinctiveness relates to the same goods and/or services indicated in the application; or (iii) that the rejected trademark is perceived as a trademark in Turkey. Proof of acquired distinctiveness abroad is not sufficient in this case.
It is much easier to register a store concept as an industrial design. According to Design Law No. 554, a design shall be regarded as having individual character if the overall impression that it conveys to the informed user is significantly different from the overall impression conveyed to the same user by any design. The TPI does not examine a design application on absolute grounds for refusal; it examines for the correct application format and whether it complies with public and morality policies. The TPI is not responsible for evaluating a design’s novelty or individual character and examines these issues only if a third party files an opposition. Therefore, when an applicant files an application for its newly designed interior or exterior store concept, the TPI will publish it and, unless challenged by third-party opposition, it will be granted registration.
Registering as an industrial design seems to be the easier and therefore preferable option, but industrial design protection includes a few disadvantages, such as a maximum 25 years of protection and differences in the test required for similarity. Companies seeking to introduce new designs to the public may want to consider registering them as industrial designs first, to obtain the protections that registration provides, and then consider registering them as trademarks once the designs acquire distinctiveness.
Isik Ozdogan is a partner at Moroglu Arseven. She can be contacted at: iozdogan@morogluarseven.com
Ezgi Baklaci is a senior associate at Moroglu Arseven. She can be contacted at: ebaklaci@morogluarseven.com
