TRADEMARK

1. TRADEMARK Dr. Özlem Döğerlioğlu IŞIKSUNGUR Yaşar ÜniversityLecture Notes ozlem@dogerlihukuk.com

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

3. IMPORTANCE OF TRADEMARK • increased competition among companies undertaking trade in more than one country • used to simplify the identification by consumers of goods orservices, as well as their quality and value • Effects on consumer preferations • Consumer dependency on products/services • Increase on the demand of product/services • Distinction: Pepsi-Cola and Coca-Cola • Asset value? Trademark value?

4. The main purpose of a trademark the main purpose of a trademark is -to identify thesource of a product and -to distinguish that product from products coming from other sources.

5. 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 bedistinctive -it should not be deceptive

6. 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.”

7. TRIPS, Article 15 Article 15 - ProtectableSubjectMatter 1. Anysign, or anycombination of signs, capable of distinguishing the goods or services of one undertakingfromthose of otherundertakings, shallbe capable of constituting a trademark. Suchsigns, in particularwordsincludingpersonalnames, letters, numerals, figurative elements and combinations of colours as well as anycombination of suchsigns, shallbeeligible for registration as trademarks. Wheresigns are not inherently capable of distinguishing the relevant goods or services, Membersmaymakeregistrabilitydepend on distinctivenessacquiredthrough use. Membersmayrequire, as a condition of registration, thatsignsbevisually perceptible.

8. European Directive 89/104 Article 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.

9. AIM/OWNER/REGISTRATION • Aim: 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 agovernmental agency, which is usually referred to as the Trademarks Office.

10. 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.

11. Sample Trademarks • Words: ‘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 Royce • Number: the 4711 cologne • Letters: GM, FIAT, VW, KLM • Pictures or symbols: Lacoste (small crocodile) Reference: WIPO Notes concerning General Course on Intellectual Property Rights

12. DISTINCTIVENESS • when assessing the distinctiveness of asign for a TRADEMARK it has to be judged together with the goods or services it is to be associated with.

13. The most common way of protecting a trademark is to have it registered in the Trademark Register • unregistered trademarks are also protected insome countries but it is a less reliable form of protection.

14. COLLECTIVE MARKS • “Collective marks usually belong to a group or association of enterprises. Their use isreserved to the members of the group or association. A collective mark thereforedistinguishes 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 particularfeatures of the product for which the collective mark is used. An enterprise whichuses the collective mark may, in addition, use its own trademark. Example: in anassociation of architects or engineers, a member may use the logo of the associationas well as the logo of the enterprise.” • Reference: WIPO Notes concerning General Course on Intellectual Property Rights

15. CERTIFICATE MARKS • “A certificate mark is a mark indicating that the goods or services in connection withwhich it is used are certified by the proprietor of the mark in respect of the origin,mode of manufacture ofgoods, quality or other characteristics. The certification markmay only be used in accordance with the defined standards. Example: ISO 9000. • Reference: WIPO Notes concerning General Course on Intellectual Property Rights

16. WELL-KNOWN TRADEMARKS • “Some companies have successfully established, via their trademarks or servicemarks, worldwide renown. Subsequently, consumers can, without effort, recognizeand identify their goods and services, their qualities and their features withoutreferring to the location of the company in question. These trademarks are calledwell-known marks or famous marks. Examples: Sony, Versace, Louis Vuitton, etc.” • Reference: WIPO Notes concerning General Course on Intellectual Property Rights

17. When a trademark is well-known trademark? • The Factors degree of knowledge or recognition of themark in the relevant sector of the public and the duration, extent and geographicalarea of any use of the mark.

18. TRADEMARK IN TURKISH LAW

19. RATIFIED INTERNATIONAL AGREEMENTS RELATED TO PROTECTION OF TRADEMARKS • Paris Convention • TRIPs Agreement • Madrid Protocol • Trademark Law Treaty • Viyana Anlaşması • Nice Agreement

20. Current Legislation • Decrees with the effect of law numbered 556 • By-law related to the application of Decrees with the effect of law numbered 556

21. DEFINITION • Decrees with the effect of law numbered 556 Article 5 • “Any sign .......... provided that it distinguishes the goods or services ofa given enterprise from the goods&services of its competitors”

22. Trademark consist of any sign such as • names ,words, • letters, • Numerals • Colour combinations ,

23. TYPES OF THE TRADEMARK • Commercial Trademarks • Service Trademark • Collective Trademarks • Guarantee Trademark • Community Trademark • Industrial Designs can not be registered as Trademark

24. Application for Trademark Registration • Real &Legal person or their legal representative • Necessary Documents: • Petition • Trademark sample • The list of goods or services where the trademark shall be used • Payment documents • For each trademark registration, seperate application is necessary

25. Process • Formal Examination • Meritorious Examination • Objection period • Registration

26. Grounds for refusal of trademark registration • Absolute grounds (Article 7) • Relative grounds (Article 8)