Jurisdiction: Republic of TURKEY / Ankara Civil Court of Intellectual and Industrial Property Rights
Subject Heading: Descriptiveness
Case Name and Citation:

Docket No : 2009/309
Decision No : 2010/294

Marks Associated with Goods/Services:

The Plaintiff’s trademark which has been applied for the registration in respect of all goods in class 30 consists of THE JELLY BEAN FACTORY indication on a black label background. Considering the overall design of the mark, the words JELLY BEAN constitute the essential part of the trademark as it is written with bigger fonts in proportion to the words THE and FACTORY. On the other hand, unique arrangement of the words make the indication JELLY BEAN more dominant besides others. The graphical representation of same is as follows:

Nature of Case:

The plaintiff ARANCANDY LIMITED claims the cancellation of the final refusal decision of the Higher Council of TPI which rejected the applicant’s objection on appeal and ruled that the trademark application for THE JELLY BEAN FACTORY can not be registered on ground of descriptiveness due to the fact that it refers to the type of goods intended to be registered, in class 30.

Overview of Decision and Ruling:

The court upheld the decision of TPI by adopting entirely the conclusions of the panel of experts who retained that considering the unique arrangement of indications in the graphic representation, the indication JELLY BEAN is more dominant in proportion to the indications THE and FACTORY. Accordingly, the indication JELLY BEAN refers to the type and name of goods in respect of the goods for Non-Medicated Confectionery, Candy, Chewing Gum, , Ice-Cream And Frozen Confections, which fall under the 10., 11. and 12. sub-classes in class 30 whereas it does not in respect of Chocolate, Cakes And Biscuits and snack foods goods which fall under different sub-classes. Furthermore, on the basis of prior decisions of the Supreme Court for “MULTICANAL” “FLORIST” “SELPAK AQUA” “SERVICE MASTER” where it has been ruled that the indications are descriptive despite the fact that they are not in Turkish; the experts stated that an indication in a foreign language, that is other than in Turkish, does not affect the assessment of descriptiveness.

As a result the Court has partially accepted the action and ruled to the cancellation of Higher council decision in respect of goods “Chocolate, Cakes and Biscuits and snack foods” resulting of the registration of the trademark in respect thereof.

Importance of Case:

This decision is important because with this decision it has been accepted that in the assessment of an indication as to whether it is descriptive or not, language differences shall not be taken into consideration and an indication shall not get registered in case it is descriptive even in another language than in Turkish.