Dr. Özlem Döğerlioğlu IŞIKSUNGUR

Yaşar ÜniversityYaşar Üniversity Lecture NotesLecture Notes

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ozlem@dogerlihukuk.com

The average person sees or hears more than 1,500 trademarks each day!

IMPORTANCE OF TRADEMARKIMPORTANCE OF TRADEMARKincreased competition among companies

undertaking trade in more than one countryused to simplify the identification by consumers

of goods or services, as well as their quality and value

Effects on consumer preferationsConsumer dependency on products/servicesIncrease on the demand of product/services Distinction: Pepsi-Cola and Coca-ColaAsset value? Trademark value?

The main purpose of a trademark

the main purpose of a trademark is -to identify the source of a product and

-to distinguish that product from products coming from other sources.

1. What is a trademark?What it is not Classical definition: “A trademark is any sign that

individualizes the goods of a given enterprise and distinguishes them from the goods of its competitors”. Two functions:- individualization- distinction (Also shows quality, origin/ be used as advertisement)

Two main characteristics: -it must be distinctive -it should not be deceptive

1. What is a trademark?Court of Justice of the European Communities, September 29,

1998 - Case C-39/97, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., formerly Pathe Communications Corporation:

“… according to the settled case-law of the Court, the essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin.”

TRIPS, Article 15Article 15 - Protectable Subject Matter

1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

European Directive 89/104Article 2 - Signs of which a trade mark may

consist

A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

AIM/OWNER/REGISTRATIONAim:

to protect the name of the product rather than the invention or idea behind the product.

Owner: can be owned by individuals or companies

Registration:should be registered at a governmental agency, which is usually referred to as the Trademarks Office.

A trademark may consist of words, designs, letters, numerals or packaging, abbreviations or names (famous make of car, Ford –

named, of course, after Henry Ford, who built the first one)

slogans,devices, symbols, etc.

Sample TrademarksWords: ‘Apple’ for computers; Deutsche Bank for a

bank,Arbitrary or fanciful designations: Coca-Cola, Nikon,

Sony, NIKE, Easy Jet.Names: Ford, Peugeot, Hilton (hotel)Slogans: ‘Fly me’ , for an airline;Devices: the star for Mercedes Benz, the flying lady

for Rolls RoyceNumber: the 4711 cologneLetters: GM, FIAT, VW, KLMPictures or symbols: Lacoste (small crocodile)

Reference: WIPO Notes concerning General Course on Intellectual Property Rights

DISTINCTIVENESSwhen assessing the distinctiveness of a sign

for a TRADEMARK it has to be judged together with the goods or services it is to be associated with.

The most common way of protecting a trademark is to have it registered in the Trademark Register

unregistered trademarks are also protected in some countries but it is a less reliable form of protection.

COLLECTIVE MARKS“Collective marks usually belong to a group or

association of enterprises. Their use is reserved to the members of the group or association. A collective mark therefore distinguishes the goods or services of members of the association from those of other undertakings.

The function of the collective mark is to inform the public about certain particular features of the product for which the collective mark is used. An enterprise which uses the collective mark may, in addition, use its own trademark. Example: in an association of architects or engineers, a member may use the logo of the association as well as the logo of the enterprise.”

Reference: WIPO Notes concerning General Course on Intellectual Property Rights

CERTIFICATE MARKS“A certificate mark is a mark indicating that the

goods or services in connection with which it is used are certified by the proprietor of the mark in respect of the origin, mode of manufacture of goods, quality or other characteristics. The certification mark may only be used in accordance with the defined standards. Example: ISO 9000.

Reference: WIPO Notes concerning General Course on Intellectual Property Rights

WELL-KNOWN TRADEMARKS“Some companies have successfully established,

via their trademarks or service marks, worldwide renown. Subsequently, consumers can, without effort, recognize and identify their goods and services, their qualities and their features without referring to the location of the company in question. These trademarks are called well-known marks or famous marks. Examples: Sony, Versace, Louis Vuitton, etc.”

Reference: WIPO Notes concerning General Course on Intellectual Property Rights

When a trademark is well-known trademark?

The Factorsdegree of knowledge or recognition of the mark in the relevant sector of the public and the duration, extent and geographical area of any use of the mark.

TRADEMARK IN TURKISH LAW

RATIFIED INTERNATIONAL AGREEMENTS RELATED TO PROTECTION OF TRADEMARKSParis ConventionTRIPs AgreementMadrid ProtocolTrademark Law TreatyViyana AnlaşmasıNice Agreement

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Decrees with the effect of law numbered 556

By-law related to the application of Decrees with the effect of law numbered 556

Current Legislation

DEFINITIONDecrees with the effect of law numbered 556

Article 5

“Any sign .......... provided that it distinguishes the goods or services of a given enterprise from the goods&services of its competitors”

Trademark consist of any sign such as

names ,words, letters, NumeralsColour combinations ,

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TYPES OF THE TRADEMARKCommercial TrademarksService TrademarkCollective TrademarksGuarantee TrademarkCommunity Trademark Industrial Designs can not be registered as

Trademark

Application for Trademark Registration

Real &Legal person or their legal representativeNecessary Documents:PetitionTrademark sampleThe list of goods or services where the trademark

shall be usedPayment documents For each trademark registration, seperate

application is necessary

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Process

1) Formal Examination2) Meritorious Examination3) Objection period4) Registration

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Grounds for refusal of trademark registrationAbsolute grounds (Article 7)Relative grounds (Article 8)