T.P.I.’s Higher Council Decision : Registrability of a trademark that consists of a descriptive term and a distinctive figurative element

Summary

The Higher Council of the Turkish Patent Institute has determined in a very recent decision dated September 20, 2016 (Decision No. 2016-M-9078) that trademarks composed of "Descriptive terms + distinctive figurative elements" are eligible for registration and established a three question test for registrability of such applications.

History

The application in classes 29-30-35 has been rejected by the Turkish Patent Institute in view of Article 7/1 (c) of the Decree Law No. 556, on the basis of descriptiveness.

The applicant appealed the decision before the Higher Council claiming that the application is not descriptive in the entirety since the device component of the application is sufficiently distinctive.

Decision

The Higher Council has accepted the claims of the applicant and decided registration of the application determining that;

In order for the mark to be registrable, the added figurative element, if in itself distinctive, needs not be “dominant” or “co-dominant”. It suffices that it is clearly recognizable.

If the distinctive figurative element is not the recognizable in the whole mark at first sight, if it stands too much in the background comparing to the word element, insignificant or as a silhouette then the word element would be regarded as descriptive element.

In the subject decision it is also determined that the following three step test will be applied to determine the eligibility for registration of "Descriptive terms + distinctive figurative elements":

  1. Does the application also include descriptive terms for the requested goods/services

If yes,

  1. Does the figurative element of the application is registrable per se for the requested goods/services

If yes,

  1. What is the recognizable component of the application at first sight, the device or the word?

If the answer is word; the application shall be refused

If the answer is device; the application shall be registered 

Comments

T.P.I.’s decision is an important and expected development clearing the way for filing a trademark application including DEVICE component accompanied with descriptive word components.

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