In the courts: 3D trademarks in Turkey - the case of the Absolut bottle

October 2016 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

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Lars Olsson Smith, known as the King of Vodka, began making Absolut vodka in 1879 using a revolutionary distillation method to remove all impurities for what he called “an absolutely pure vodka”. So began the journey of one of the world’s most iconic brands. First exported in 1979, the trend-setting Absolut vodka bottle – with its rounded shoulders and short neck – stands out in the market and has been an icon for several generations and one of the world’s most recognised ‘silhouettes’.

In many countries, including Turkey, trademark laws not only grant exclusive rights to trademark owners in relation to the words, logos and phrases used to identify their products, they also extend protection to three-dimensional (3D) shapes making it possible to protect the shape or packaging of a product. But it can be relatively difficult to register 3D trademarks without demonstrating distinctiveness and extensive use. The recent experience of the Absolut Company which sought to protect its famous Absolut vodka bottle in Turkey, highlights some of the difficulties that companies can face when seeking to register a 3D trademark.

The registration of the Absolut vodka bottle as a trademark in Turkey started with the designation of Turkey in international registration (IR) number 1079104 back in 2011. That international registration consisted of a 3D multi-visual representation of the bottle with visuals from different angles. It sought registration for class 33 alcoholic beverages (wines and spirits except beers).

The Turkish Patent Institute (TPI) subsequently assigned a national application number and undertook an initial examination under absolute refusal grounds and was rejected. The TPI found the mark devoid of distinctive character under article 7(a) of the Turkish Trademark Decree Law no. 556 of 1995. This decision, however, was appealed and submitted to the IP Court for review.

The IP Court (the Court) appointed experts to review the application and comment on its distinctiveness and recognition in the market. The experts concluded that the mark’s extensive global commercial use and its promotion in Turkey meant that it was widely recognised among the general public. This, they concluded, demonstrated that the mark had clearly acquired distinctiveness in Turkey at the time of the TPI’s decision.

The experts also made important observations relating to the timing of the acquired distinctiveness claims. They argued that the Court’s practice was not clear in terms of whether evidence of acquired distinctiveness was required from the date of filing the application or whether evidence up to the rendering of the TPI decision was admissible. The question of admissibility of evidence and the relevant time limits was left to the Court to determine.

The Court, however, took a different stance. It determined that the application consisted of a drawing of a bottle with visuals from different angles (see decision of Ankara 3. Civil IP Court No. 2012-23E-2013/259 of 17.12.2013). As such, it viewed the application as a technical description of a bottle and dismissed the case on formal grounds. The application, it noted, was more like an application for design rights than an application for trademark rights. It determined that all evidence pertaining to extensive use and recognition of the Absolut vodka bottle was not directly applicable to the acquired distinctiveness of this particular application and dismissed the acquired distinctiveness claim.

However, by ignoring all evidence relating to the distinctiveness and recognition of the Absolut bottle, the Court’s decision conflicted with current TPI practice and the Court’s jurisprudence.

Lessons learned: a second attempt

While this first encounter with the IP authorities did not favour the registration of the Absolut bottle as a mark, it did provide useful insights about the type of evidence required for an acquired distinctiveness claim to be successful.

A new national application for the Absolut bottle was filed. The applicants retained the same 3D multi-visual representation but improved its original elements with additional details and dimensions. The new application for registration of the Absolut bottle under class 33 for alcoholic beverages was rejected once more by the TPI which again found it to be devoid of any distinctive character.

This time around, however, the TPI Re-Examination and Evaluation Board, which makes decisions on disputes which arise from the Turkish Patent Institute (TPI) and decides on the registration of industrial property rights, accepted the appeal and overturned the refusal. The Board determined that although there were insufficient grounds to declare the application inherently distinctive, “the long-established use of the mark and the intense promotional activities conducted over the years” meant that the mark had acquired distinctiveness through use and therefore was capable of registration as a trademark (see Decision 2015-OE-414492 of the Re-Examination and Evaluation Board of the Turkish Patent Institute dated 16.09.2015).

The evidence submitted during the appeal included general information on history of the company, Absolut vodka, and the Absolut mark, global sale of Absolut vodka for the past 30 years, global advertising campaigns, as well as the company’s sponsorship of high-level art and culture projects including Andy Warhol’s 1985 design of the Absolut bottle and the hundreds of awards it has received. This was complemented with local evidence on the widespread commercial use of the mark in Turkey since 1979 and promotional materials relating to the launch of the special edition Absolut Istanbul bottle design, created by a Turkish artist.

The expert report submitted to the first appeal before the IP Court, which argued in favour of Absolut’s claim of acquired distinctiveness, was also submitted as evidence.

Absolut vodka: a lifestyle mark

The company’s significant investment in promoting Absolut vodka has clearly resulted in its global and local recognition as a ‘lifestyle mark’. However, what in fact tipped the scales in the appeal was the applicant’s ability to demonstrate the trademark function of the Absolut bottle itself, in other words, its distinctiveness.

Ultimately, amid overwhelming evidence, the TPI Board ruled that the Absolut bottle did, in fact, qualify for registration as a trademark. The Board’s decision demonstrates that acquired distinctiveness of 3D marks can be shown when backed-up with evidence to confirm long-established use of the mark and its reputation and value. Any evidence can be submitted to prove this, including but not limited to information about the product, its annual sales, samples of promotional activities and advertisements preferably in a chronological order.

A changing landscape in Turkey

However, regulatory restrictions introduced in Turkey in September 2013 which prohibit the promotion of alcoholic beverages to the public, make it significantly more difficult to build or maintain acquired distinctiveness of marks relating to alcoholic beverages.

Brand owners operating in this sector are therefore advised to acquire trademarks rights in Turkey before it is no longer possible to secure such registrations. Also, when claiming acquired distinctiveness, brand owners need to act promptly if they are to make use of evidence available to them prior to the implementation of the new restrictions (September 2013) relating to the promotion of alcoholic beverages.

Uğur Aktekin is a partner and Ceren Aral is counsel at Gün+Partners. Mr Aktekin can be contacted on +90 (212) 354 00 77 or by email: ugur.aktekin@gun.av.tr. Ms Aral can be contacted on +90 (212) 354 00 82 or by email: ceren.aral@gun.av.tr.

Uğur Aktekin and Ceren Aral

Gün+Partners