• NSN Law Bulletin

A Medical Symbol or the Swiss Flag: IP Court’s Decision on Disinfectant Bottles

According to the Article 58/4(ç) of the Turkish Industrial Property Law (“IPL”), which refer to Article 6ter of the Paris Convention, the usage of “armorial bearings, flags, and other State emblems of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them” as elements of industrial designs will be outside of the scope of protection, notwithstanding for which designs will be used for; and third parties have a right to oppose the Turkish Patent and Trademark Office (“TURKISHPATENT”)’s decision on the grant of design registration that bears such elements as per the Article of 67/2 of IPL.

The same is also available for trademarks. According to Article 5/1(g) of IPL, using such elements within the trademark speciman without authorization by the competent authorities is strictly prohibited. This Article should apply to all trademarks ex officio by the TURKISHPATENT as it is one of the absolute grounds for refusal in trademark registration.

The purpose of Article 6ter is to prevent unauthorized registration or usage of trademarks that reproduce or imitate State flags/emblems of the countries of the Union since these protected flags/emblems are related to the sovereignty of States and any unauthorized usage of them will harm the “control and warranty adopted by States that are members of the Paris Union”[1] through these signs.

Recently, Ankara 3rd IP Court has decided to cancel industrial designs no. 2020 05833 9&10 containing “” figure which are created to be used on disinfectant bottles, due to the similarity between the “” sign and the Swiss Flag with the decision dated December 16, 2021, as a result of a lawsuit filed by Swiss authorities.

The lawsuit has been filed against the decision of the Turkish Patent and Trademark Office (“TURKISHPATENT”), rejecting the opposition against industrial designs no. 2020 05833 9&10. In its contested decision, TURKISHPATENT stated that the disputed sign [“”] is a common sign in the medical sector, and it has differences with the Swiss Flag, and thus, the industrial design application cannot be evaluated under the scope of Article 58/4(ç) of the IPL.

In parallel with the TURKISHPATENT’s decision, defendants mainly claimed that the cross figure on a red background is a common sign for the medical sector and not the Swiss Flag during the legal proceedings before the Ankara 3rd IP Court. Therefore the contested sign in the industrial designs can be used by the public freely, and the lawsuit should be dismissed.

The legal expert report obtained during the legal proceedings found that, although the color and the shape of the background in the disputed design slightly differ from the Swiss Flag, the overall impression it creates is the same as the Swiss Flag, which causes "intelligent copying". Therefore, the conflicting industrial designs should be canceled for the “” sign. The legal expert report also rejected the argument raised by the defendants that the conflicting sign is a symbol of medical services and can be used by the public freely. The legal expert report concluded that the sign being used for medical services is not the Swiss Flag but the Red cross.

In its decision, the Court also concluded that the sign being used in the medical sector widely is not the Swiss Flag [] but the Red Cross emblem[], which is an inversion of the Swiss Flag. Therefore, the Court rejected the claims of the defendants and decided the cancellation of the conflicting industrial designs.

Indeed, not only the usage of the Swiss Flag but also the usage of the Red Cross emblem by unauthorized parties is prohibited by the Geneva Convention dated August 12, 1949 (Geneva Convention for the Amelioration of the Condition of the Wounded and Sick in Armed Forces in the Field). However, many people still file trademark or industrial design applications bearing signs similar to the Swiss flag to be used on medical products by confusing the Swiss Flag with the Red Cross, which is a medical symbol. Again, as mentioned, the usage of the Red Cross by unauthorized parties is not allowed.

Articles 58/4(ç) and 5/1(g) of the IPL provide an absolute ground for refusal for industrial designs and trademarks, respectively, and they should be considered by TURKISHPATENT ex officio since it is related to the public order.

In practice, although the TURKISHPATENT ex-officio reject the trademark and industrial design applications bearing State flags/emblems identically, it occasionally overlooks trademark and industrial design applications which contain State flags/emblems, and the trademark and industrial design applications violating Article 6ter of Paris Convention mature into registration in the end if they do not encounter with any oppositions. Also, if the disputed sign used in the trademark and industrial design applications is not an exact copy of the State flags/emblems, the TURKISHPATENT usually publishes such applications. Yet, the sign used in the trademark and industrial design applications does not need to be an exact copy of State flags/emblems. The trademark and industrial design applications that contain a sign evokes the State flags/amlebs should also be rejected as per the said articles. Therefore, it is crucial to get a full scope of trademark and design watch service to prevent the registrations of such trademark and industrial designs by filing oppositions.

In conclusion, since TURKISHPATENT’s current practice based on Article 6ter of the Paris Convention has not been fully established yet, conducting watch services for trademarks and designs is highly important for the relevant parties which are eager to protect their State flags/emblems in Turkey.

[1] WIPO Standing Committee On The Law Of Trademarks, ‘Industrıal Designs And Geographical Indications, Fifteenth Session, Geneva, November 28 to December 2, 2005, ‘Article 6ter Of The Paris Convention: Legal And Administrative Aspects’.

Author: Gülay Göksu, Müge Kahveci Contact: