Overview of Supreme Court decisions

By Kerim Emre Yardimci, Senior Partner at Deriş; Latif Emre Şirikçi, Associate; and Kardelen Karataş, Associate

Introduction

A trade mark is a sign that serves to distinguish the goods and services of one undertaking from those of others, and enables consumers to establish an association between the product or service and its source.

Under Turkish law, the types of signs that may be registered as trade marks are explicitly regulated in Article 4 of the Industrial Property Code No. 6769 (“IPC”). Pursuant to this provision, a trade mark may consist of “any signs, including personal names, words, figures, letters, numbers, colors, sounds, and the shape of goods or their packaging”. However, in order to be eligible for registration, such signs must be distinctive and capable of being represented in the trade mark register in a clear, precise, intelligible, and objective manner.

Non-traditional trade marks encompass signs that go beyond conventional word and logo marks, often incorporating innovative and creative elements. These include three-dimensional shape marks, packaging marks, sound marks, colour marks, motion marks, hologram marks as well as position marks.

Following the entry into force of the IP Code at the beginning of the year 2017, the registration process for non-traditional trade marks in Türkiye has become more favourable, leading to a significant increase in applications in this area. In particular, there are now numerous examples of three-dimensional shape marks, packaging marks, sound marks, colour marks, motion marks, and position marks being registered before the Turkish Patent and Trademark Office (TPTO).

Nevertheless, despite this progress, judicial enforcement of such trade marks remains limited in practice, with relatively few court decisions addressing their protection.

This article aims to review the Turkish Supreme Court’s approach to non-traditional trade marks within the framework of existing case law, with a focus on the legal criteria adopted and practical implications for trade mark enforcement in Türkiye.

I. Position marks

In its 2024 decision concerning PUMA (11th Civil Chamber of the Supreme Court, E. 2024/4695, K. 2024/8718), the Turkish Supreme Court established significant criteria regarding the protection of position marks. The Court emphasised the importance of how a position mark is perceived in the mind of the average consumer and acknowledged that the use of a similar position on a product may create the impression of a commercial or economic link between undertakings.

The Court further held that the fact that the defendant had used its own well-known mark alongside the contested position mark was not sufficient to eliminate the likelihood of confusion.

It emphasised the dominant role of the figurative element, found that the marks were similar from the consumer's perspective, and concluded that the use was made in bad faith. As a result, the Court granted a broad scope of protection to position marks.

II. Three-dimensional trade marks and designs

Another significant issue highlighted in the Supreme Court’s case law is the ability to successfully oppose design registrations by relying on three-dimensional trade marks, which are a type of non-traditional mark. In its 2015 decision (11th Civil Chamber of the Supreme Court, E. 2015/1180, K. 2015/7386) and in a 2013 decision concerning a lighter product (11th Civil Chamber of the Supreme Court, E. 2013/11025, K. 2014/87), the plaintiffs sought the invalidation of a registered design on the basis of their earlier three-dimensional trade marks. In both cases, the Supreme Court accepted the claims.

The Court found that the shape subject to the design registration created the same overall impression on the informed user as the earlier three-dimensional trade mark. It concluded that the similarities between the two were sufficient to deprive the design of the required novelty. These rulings demonstrate that trade marks—particularly non-traditional ones—may serve not only to protect rights within their own legal domain but also as an effective tool against conflicting industrial property rights, such as designs.

III. Packaging trade marks and the assessment of colour use on packaging as a trade mark

In the Ülker Napoliten case (11th Civil Chamber of the Supreme Court, E. 2015/5438, K. 2015/12846), the Turkish Supreme Court offered a noteworthy evaluation regarding the distinctiveness of colour use and product imagery on packaging. The Court held that the use of the colour red on the packaging, in and of itself, was not distinctive due to its widespread use in the relevant sector; it therefore did not give rise to a likelihood of confusion among consumers, and the overall appearance of the packaging trade marks at issue was deemed sufficiently different.

Through this decision, the Supreme Court emphasised that, for packaging trade marks—and especially for the use of colour on such packaging—to qualify for trade mark protection, they must create a strong distinctive character in the perception of the consumer.

IV. Colour trade marks

In its Milka decision (11th Civil Chamber of the Supreme Court, E. 2015/6881, K. 2016/1095), the Turkish Supreme Court adopted a restrictive approach to the protection of colour trade marks. The Court emphasised that consumers are unlikely to confuse products solely based on the similarity of colour tones, and that differences in the overall appearance of the products are sufficient to prevent confusion. By doing so, the Court set a high threshold for distinctiveness in the context of colour marks and thus afforded a relatively limited scope of protection.

Conclusion and evaluation

The case law of the Turkish Supreme Court provides important precedents for the protection of non-traditional trade marks, both within the scope of trade mark law and in relation to other industrial property rights. The key principles derived from the decisions can be summarised as follows:

• In the context of position marks, consumer perception is the primary consideration, and where the figurative element is dominant, the likelihood of confusion is interpreted more broadly.
   
• With respect to packaging marks and the use of colour on packaging, a high degree of distinctiveness is required for trade mark protection, with an emphasis placed on the assessment of the overall appearance.
   
• The recognition that design registrations may be successfully challenged based on earlier three-dimensional trade marks illustrates that non-traditional marks can serve as effective tools not only within the field of trade mark law but also in the domain of design law.
   
• As for colour trade marks, mere similarity in colour tones is not deemed sufficient for infringement; rather, the overall impression created by the packaging—including font style and variations in tone—is taken into account, resulting in a narrower scope of protection.

In this regard, the Turkish Supreme Court’s approach demonstrates that a high threshold of distinctiveness is applied to non-traditional trade marks, and that their protection requires a careful analysis based on consumer perception.

Courts tend to find that such marks may not fulfil the same established trade mark function as traditional marks. As a result, concrete evidence of the mark’s distinctive character and source-identifying function becomes crucial—both during the registration process and in infringement proceedings. Accordingly, the effective protection of non-traditional trade marks necessitates a strategic approach to brand development and a deliberately structured practice of consistent and distinctive use.

FICPI’s view and involvement 

FICPI uniquely combines education and advocacy on topics around patents and trade marks, with a focus on developing the professional excellence of its individual members. FICPI Forums, Congress, committees and meetings are opportunities to gather insights from the international IP attorney community on any issue, whether it be practice-related or topics of patent and trade mark law.

Next steps 

• Connect with FICPI member IP attorneys in Türkiye – search the FICPI member directory
• Consider getting involved with the work of FICPI’s Study & Work Committee or its working groups on areas such as CET 1 trade marks. 

This article was first published on IPStars on July 10, 2025