The developments in business activities cause changes in Trademark Law, as well. In this respect, the non-traditional mark, also known as a non-conventional mark, has been adopted. The non-traditional mark is a new type of a trademark, and this category is not limited. European Union Intellectual Property Network (“EUIPN”) explains the examples for non-traditional such as shape, position, pattern, color, sound, motion, multimedia, hologram. ("Common Communication On The Representation Of New Types Of Trade Marks, p. 4-5")In this article, our purpose is to explain the “position mark” that is one of the non-traditionally marks.
A position mark was regulated firstly in 2017 by Article 3 of the Commission Implementing Regulation (EU) 2017/1431 (“EU Regulation”). The provision defines the position mark and explains the details of the application. The term “position mark” specifies that a trademark comprising the specific way in which the mark is placed or affixed on the goods. The best examples of the position marks are three stripes of Adidas and red bottoms of Louboutin's shoes.
Besides, any specific provision for position mark is not stipulated in Turkish Law. However, trademarks defined in Article 4 of the Industrial Property Law (“Turkish IP Law”) do not count as numerus clausus. Further, Article 7 of the Regulation on Enforcement of Industrial Property Law (“Regulation”) includes some examples of non-traditional marks and explains the requirements for the application of these trademarks. According to these legislations, “other” types of non-traditional marks are accepted, and the position mark is able to be registered.
On the other side, the elements of position marks are explained in Court Decisions. According to these practices, the position mark has two key elements which are “the sign” and “the position”. Firstly, the sign element should be specified. However, the sign element does not have to be distinctive by itself. The notable point is that the sign should be distinctive with its position. The other main element is the “position”. This position has to be the same for all goods, and the sign has to be placed identically. ("Assoc. Prof. Dr. Burçak Yıldız, “Position Marks in Light of Jurisprudence of Justice of the European Union”, 2018") According to the doctrinal approach, position mark becomes different from simple three-dimensional marks due to the fact that position marks are used with identical color, size and is placed on the goods’ identical area. Thus, these marks remind consumers of related goods in which the position mark is placed even though the signs are separate from the good.
Additionally, Trademark Examination Guide (“Guide”) published by the Turkish Patent and Trademark Office (“TURKPATENT”) explains the position trademarks, and the definition in this guide is the same with the explanation in EU Regulation. According to this Guide, the following points require to be considered:
The representation of the position. (mandatory)
The representation of the elements which do not form part of the subject matter of the registration. (mandatory) Broken or dotted lines may be preferred.
The explanation of how the sign is placed on goods. (optional) This explanation should be just for informing.
The most notable issue is making the representation of the sign’s position. For example, the application is for clothes and hats would be rejected due to the fact that the representation is just for shoes.
Accordingly, there is an example in which a circle on the side of a sports shoes was found distinctive for ‘footwear’ by the Board of Appeals of the EUIPO (“the Board of Appeals”). The Board of Appeals clarified that “it is entirely customary today for manufacturers of sports and leisure shoes always to display the same pattern on their goods, which may be a pattern of lines, stripes, geometric shapes or a combination thereof, always in the same place on the outside of the product, making it visible from a distance. The consumer is accustomed to such signs and can in principle be guided by them when buying sports and leisure shoes.”
A position mark which is placed on the toe of the sports shoes was found distinctive by the Turkish Supreme Court. On the other hand, when TURKPATENT’s practices were reviewed, it has been seen that the practices do not provide consistent results. Even though the Guide published by TURKPATENT explains the requirement for the registration of position marks, TURKPATENT does not have a consistent practice. For this reason, r in some cases, even though the position mark has distinctiveness, TURKPATENT may reject the application.
Briefly, the position mark is a new term for the Turkish trademark law. However, the registration of a position mark is possible according to Article 4 of the Turkish IP Law and Article 7 of the Regulation. The main point is the distinctiveness of the sign with its position on goods. The position mark’s distinctiveness should be examined in each individual concrete case. Further, if the position mark creates impressions of a specific business in the eye of the consumer, it should not be rejected.