Acquired Distinctiveness

Some signs are not distinctive at the outset: they describe the product, are common in the trade or are simple expressions. But if an undertaking uses such a sign for a long time and intensively, consumers may start to see it as a name identifying that undertaking rather than the product itself. This is known as acquired distinctiveness.

Legal Basis

• At the registration stage: A sign that acquired distinctiveness through use before the filing date cannot be refused as descriptive or non-distinctive (IPL Article 5(2)).
• At the invalidity stage: A mark registered in breach of these grounds cannot be invalidated if it acquired distinctiveness through use before the invalidity claim (IPL Article 25(4)).

When Is It Accepted?

The decisive question is whether a significant proportion of the relevant consumers perceive the sign as indicating the origin of the goods or services. Relevant factors include:

• Duration, intensity and geographical extent of use
• Market share and sales volume
• Advertising and promotional spend
• Documents showing press, trade and consumer perception

Use should be close to the form applied for. It is difficult to prove that a word used together with a distinctive logo has acquired distinctiveness on its own.

In Practice

This argument is frequently raised in appeals against TÜRKPATENT refusals and in trademark litigation. The burden of proof lies on the applicant, and well-organised, dated and sourced evidence is often decisive. For the general principle see Distinctiveness.