27 November 2014Jurisdiction reportsIsik Ozdogan and Ezgi Baklaci

How to register an interior or exterior store design in Turkey

Many jurisdictions around the world, including the US, provide trademark protection for store designs. In Turkey, however, 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 registration and protection of non-traditional trademarks is in flux. According to article 5 of Trademark Decree Law No. 556: “A trademark ... 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, but in practice, many questions remain, including the level of distinctiveness required to obtain registration and the level of protection that needs to be provided.

The distinctiveness test for three-dimensional trademarks differs from the distinctiveness test relating to traditional trademarks. In principle, the Turkish Patent Institute (TPI) takes the following criteria into account:

• 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; and

• 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 both the TPI and 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 rendered many contradictory decisions that have prevented the settlement of the practice in Turkey.

There is a definite assessment: in cases where the 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 on the three-dimensional image as it is filed in combination with a word mark. Therefore, in cases where an interior or exterior design of a store needs to be protected, filing a trademark application in combination with a word mark will not provide the sufficient protection that is desired.

And when three-dimensional trademarks are filed without word elements, the TPI rejects them. In such cases, applicants need to file an appeal and prove one of the following:

• The rejected trademark is presently in use and has acquired distinctiveness through its use;

• The rejected trademark’s acquired distinctiveness relates to the same goods and/or services indicated in the application; or

• The rejected trademark is perceived as a trademark in Turkey. Proof of acquired distinctiveness abroad is not sufficient in this case.

Evidence submitted in support of the trademark should prove the acquired distinctiveness at the date of filing. Consequently, the evidence should date back to the period before the filing date. This means an interior or exterior store design can be registered as a trademark only if it acquired distinctiveness in relation to the relevant service which led the consumer to relate the store design with the trademark owner without seeing a word mark/company name.

Although the bar of registration is high in the trademark context, it is much easier to register an interior or exterior store concept as an industrial design in Turkey.

Unlike with trademark applications, the TPI does not examine a design application on absolute grounds for refusal; it only examines for the correct application format and whether it complies with public policy and morality policies. The TPI is not responsible for evaluating a design’s novelty or individual character. The TPI examines these issues only if a third party files an opposition. Therefore, where 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.

This article was originally published in  CEE Legal Matters

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

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