Turkish Patent Institute changes approach to descriptive foreign words

The Turkish Patent Institute (TPI) has changed its approach to trademark applications which use foreign words to describe characteristics of the goods applied for.

In 2015 Sumitomo Rubber Industries Ltd, a leading Japanese manufacturer and vendor of tyres and rubber parts for vehicles, filed an application to register the trademark  SILENT CORE in Class 12 ("tyres and their parts/fittings").

The application was rejected by the TPI Trademarks Department Directorate pursuant to Article 7/1(c) of Decree-Law 556 on the Protection of Trademarks. The examiner at the directorate based his ex officio refusal on the descriptive character of the mark SILENT CORE, which was the name of Sumitomo's patented technology to reduce tyre noise, and concluded that the mark indicated characteristics and intended purpose of the goods.

The ex officio refusal was appealed by the applicant, which claimed that its mark was a combination of the words ‘silent' and ‘core' which did not directly evoke goods in Class 12 and could not be deemed descriptive of the related goods. It also claimed that even if the mark were recognised as entirely descriptive of tyres as it was the name of a patented technology for tyres, the majority of Turkish consumers were not aware of the cited meaning. 

The applicant's appeal was accepted and the provisional refusal was cancelled. This final decision confirms that the TPI's approach to the distinctiveness and descriptiveness of trademarks has been relaxed when it comes to the use of foreign words indicating characteristics of the goods. However, it would appear that the examiners handling the ex officio examinations have not yet followed this approach.