Descriptiveness and Acquired Distinctiveness in Turkey Under Article 5(1)(c)

Türkiye applies a strict standard when assessing descriptive trade marks. Under Article 5(1)(c) of the Industrial Property Code No. 6769 (the “IPC”), signs that consist exclusively of, or include as an essential element, indications that serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, or the time of production of goods or the rendering of services are refused registration on absolute grounds. TÜRKPATENT examines descriptiveness ex officio during the formal and substantive examination phase, meaning the applicant does not need to wait for a third-party opposition to encounter this objection.

What TÜRKPATENT Considers Descriptive

The Office evaluates the applied-for mark in relation to the specific goods and services claimed, from the perspective of the targeted consumer in Türkiye. A word that is directly descriptive of the nature, quality, or purpose of the goods will be refused. This applies to Turkish-language terms as well as foreign-language words that the relevant Turkish consumer would understand as descriptive. The assessment is not limited to dictionary definitions; TÜRKPATENT also considers whether the term is commonly used in the relevant trade sector to describe the goods or services.

Article 5(1)(b) provides a related but distinct ground: signs that are devoid of any distinctive character. Together, paragraphs (b), (c), and (d) form a comprehensive barrier against the registration of non-distinctive marks. Paragraph (d) targets signs that have become customary in everyday language or established trade practices.

The Acquired Distinctiveness Exception

The IPC provides an important safety valve. Under Article 5(2), a trade mark that would otherwise be refused under paragraphs (b), (c), or (d) may nevertheless be registered if the applicant can demonstrate that, before the application date, the mark was used and through that use acquired distinctive character in respect of the goods or services for which registration is sought. This is the Turkish equivalent of “secondary meaning” or acquired distinctiveness.

Critically, acquired distinctiveness is not examined proactively by TÜRKPATENT. It is only assessed when the applicant files an appeal against a refusal on absolute grounds. The applicant must affirmatively raise the claim and submit supporting evidence. If the initial application is refused as descriptive, the applicant has two months to appeal to the Re-examination and Evaluation Board, at which point evidence of acquired distinctiveness may be presented.

Evidence Required

TÜRKPATENT requires substantial evidence that the mark has acquired distinctiveness in the Turkish market. The key factors considered include:

Duration of Use

The mark must have been used for a significant period before the application date. There is no fixed minimum, but longer periods of continuous use are more persuasive. The use must predate the filing date — post-filing evidence is not relevant to establishing acquired distinctiveness at the time of application.

Advertising and Marketing Expenditure

Evidence of investment in promotion within Türkiye is important. This includes advertising spend across television, print, online, and outdoor media, supported by copies of actual advertisements, media placement records, and campaign materials directed at Turkish consumers.

Market Share

Data demonstrating the applicant’s share of the relevant market in Türkiye strengthens the claim. Sales figures, revenue data, and distribution records showing meaningful commercial presence across the country are relevant. The evidence should indicate that the mark is not merely known but is actually associated by consumers with the applicant as a source identifier.

Geographical Scope of Use

Use must be demonstrated across Türkiye, not limited to a single city or region. Evidence of nationwide distribution, retail presence in multiple cities, or online sales reaching consumers throughout the country supports the argument that the mark has acquired distinctiveness among the relevant Turkish public.

Consumer Perception

Consumer surveys or market research demonstrating that the relevant public in Türkiye associates the descriptive term with the applicant as a source of goods or services can be powerful evidence. However, such surveys must be methodologically sound and reflect the perception of Turkish consumers specifically.

Practical Challenges

Proving acquired distinctiveness in Türkiye presents several practical difficulties. The standard is high: the usage must be “substantial,” and TÜRKPATENT takes a demanding view of what qualifies. International use or reputation is insufficient on its own — the evidence must demonstrate recognition within Türkiye. Additionally, because the claim can only be raised on appeal after an initial refusal, applicants must be prepared to compile and present their evidence within the two-month appeal window.

The letter of consent mechanism provides an alternative pathway in some situations. Under the IPC, if a descriptive mark is refused because it is identical or indistinguishably similar to an earlier registration (an absolute ground under Article 5(1)(ç)), the applicant may submit a notarised letter of consent from the earlier mark owner. However, this mechanism addresses conflicts with earlier marks rather than descriptiveness objections per se.

Strategic Recommendations

• Avoid purely descriptive marks: The most reliable strategy is to select marks with inherent distinctiveness. Coined words, arbitrary terms, and suggestive marks face no descriptiveness objection.
• Build Turkish market evidence before filing: If a descriptive mark is commercially important, invest in substantial use within Türkiye before filing. Collect sales data, advertising records, and distribution evidence systematically from the outset.
• Combine descriptive elements with distinctive features: A composite mark that includes a descriptive word alongside a genuinely distinctive figurative element may overcome the objection, though the descriptive word element alone will not be protected.
• Prepare for appeal: If filing a mark that may attract a descriptiveness objection, have the evidence of acquired distinctiveness ready before the application is filed, so it can be submitted promptly upon appeal.

Key Takeaway

TÜRKPATENT applies a strict standard to descriptive marks, and the burden of proving acquired distinctiveness falls entirely on the applicant during the appeal process. Evidence must demonstrate substantial use within Türkiye before the application date, covering duration, advertising investment, market share, and geographic reach. For businesses committed to a descriptive brand, early and well-documented commercial use in the Turkish market is essential.