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A. INTRODUCTION
Trademarks are fundamental commercial signs that serve to distinguish the goods and services of enterprises. However, in practice, it is observed that some trademarks may, over time, become the common name of the relevant product or service. This phenomenon, referred to as “genericide of a trademark,” may lead to the loss of distinctiveness and the weakening of legal protection.
This article examines the concept of genericide in Turkish trademark law within the framework of legislation, practice, and judicial precedents.
B. LEGISLATIVE FRAMEWORK ON GENERICIDE IN TURKISH TRADEMARK LAW
In Turkish trademark law, the genericide of a trademark is regulated under the Industrial Property Law No. 6769 (“IPL”). Pursuant to Article 26 of the IPL, a trademark may be subject to revocation if, after registration, it has become a common name for the relevant goods or services as a result of the acts or omissions of the trademark owner.
This provision aims to preserve the distinctive function of trademarks and imposes an active obligation on the trademark owner to control the use of the mark and maintain its distinctiveness. Accordingly, if the trademark owner fails to exercise due care to prevent the mark from becoming generic, they may lose their exclusive rights over the trademark.
For genericide to occur, two main conditions must be met. First, the trademark must come to be perceived by the relevant consumer group not as indicating a particular commercial source, but as directly referring to the type of goods or services. Second, this situation must arise as a result of the acts or omissions of the trademark owner.
In this respect, genericide is not merely a phenomenon dependent on consumer perception, but also a legal condition closely linked to the conduct of the trademark owner.
C. CIRCUMSTANCES LEADING TO GENERICIDE OF A TRADEMARK IN PRACTICE
In practice, there are various circumstances that may lead to the genericide of trademarks. The common feature of these situations is the gradual weakening, and ultimately the loss, of the trademark’s distinctive function.
One of the most frequently encountered situations is the widespread and uncontrolled use of a trademark as if it were a generic term. In particular, the frequent use of a trademark by consumers to refer to an entire category of products may, over time, cause the mark to become generic. Although this may arise as a result of the commercial success of the trademark, it can lead to adverse legal consequences for the trademark owner.
Another important factor is the failure of the trademark owner to take necessary measures against third parties using the mark in a generic sense. The lack of control over licensed or unlicensed use, tolerance of incorrect or widespread use, or failure to intervene when the trademark is used as a product name can accelerate the process of genericide.
Furthermore, the use of a trademark as a direct product name in advertising and marketing activities may also contribute to genericide. For this reason, it is of great importance for trademark owners to consistently position their marks as distinctive signs and to carefully manage their manner of use.
D. ASSESSMENT OF GENERICIDE IN THE DECISIONS OF THE COURT OF CASSATION
In Turkish trademark law, the determination of whether a trademark has become generic is largely shaped by judicial decisions. An examination of the case law of the Court of Cassation shows that, in identifying genericide, particular attention is paid to whether the trademark has lost its distinctive character in relation to the relevant goods or services and how it is perceived by the relevant group of consumers.
In this context, the Court of Cassation considers as the primary criterion for genericide whether a sign no longer indicates a specific commercial source but instead directly refers to the type of goods or services. Furthermore, with regard to the consequences of genericide, it is also considered important whether the acquisition of this characteristic results from the acts or omissions of the trademark owner.
Decision of the General Assembly of the Court of Cassation dated 27.05.2021 and numbered 2017/2497 E., 2021/631 K.:
This decision provides important findings regarding the transformation of a trademark into a generic term over time and its impact on trademark registration. In the case at hand, it was accepted that a sign which was initially distinctive had, through use, become a common term referring to a specific type of product in the paint sector.
The General Assembly emphasized that once a sign becomes generic, it loses its distinctive function and, therefore, can no longer be registered as a trademark for the relevant goods or services. Accordingly, since it was established that the sign in question had become generic for the relevant goods as of the application date, it was concluded that the trademark application should be rejected.
The decision also draws an important distinction: whether the genericization of a trademark results from the acts or omissions of the trademark owner is not to be assessed at the trademark application stage, but rather within the scope of revocation actions. On the other hand, once it is determined that a sign has become generic, it can no longer be registered as a trademark for the same goods or services by anyone, including the trademark owner.
This decision demonstrates that genericide plays a decisive role not only in the termination of trademark rights but also in the assessment of new trademark applications.
Decision of the 11th Civil Chamber of the Court of Cassation dated 19.09.2013 and numbered 2012/3535 E., 2013/16154 K.:
This decision demonstrates the impact of generic or descriptive elements within a trademark on the assessment of distinctiveness and likelihood of confusion. In the case at hand, the term “ZERO” was considered to have a descriptive meaning in the perception of consumers, referring to product characteristics such as “sugar-free” or “zero calories.”
The Court of Cassation emphasized that such elements have weak distinctiveness in relation to the relevant goods and services and should not be regarded as the dominant element of the trademark. In this context, it was held that, in the overall assessment of the marks, the elements “ULUDAĞ” and “PANDA” came to the forefront, while the term “ZERO” remained secondary and descriptive.
Accordingly, it was concluded that the presence of a common descriptive element alone would not create a likelihood of confusion and that the assessment of distinctiveness should focus on the dominant elements of the marks.
This decision limits the role of generic or descriptive elements in trademark protection and demonstrates that such elements carry limited weight within the overall assessment of a trademark.
Decision of the 11th Civil Chamber of the Court of Cassation dated 24.11.2014 and numbered 2014/11351 E., 2014/18224 K.:
This decision demonstrates that a trademark may, over time, become generic with respect to certain goods or services and highlights the impact of this situation on the assessment of distinctiveness. In the case at hand, it was accepted that the term “jeggings,” although initially distinctive, had, through widespread use, evolved into a concept referring to “a specific type of product, namely ‘leggings-like trousers’”.
The Court of Cassation emphasized that genericide should not be assessed uniformly across all goods and services, but rather specifically in relation to the relevant product group. In this context, it was held that the term “jeggings” had lost its distinctiveness only with respect to a particular category of products, while retaining its distinctive character for other goods and services.
The decision also clearly establishes that, once a term has become generic, it cannot be argued that it has acquired distinctiveness through use. Accordingly, where a sign has come to denote the type of goods in question, it can no longer be protected as a trademark for those goods.
This decision clearly illustrates that genericide must be assessed on a sectoral and product-specific basis and that a trademark may produce different legal consequences depending on the goods and services concerned.
E. CONCLUSION
The case law of the Court of Cassation demonstrates that, in assessing genericide, it is essential to determine whether a sign has come to be perceived by consumers as a generic term and that this assessment must be conducted separately for each category of goods and services. While the determination that a sign has become generic is taken directly into account in the examination of trademark applications, whether this situation results from the acts or omissions of the trademark owner is assessed within the scope of revocation actions. In this context, it is of great importance for trademark owners to actively manage their trademarks and to take the necessary measures to preserve their distinctive character.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
