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CategoryTrademark
Published14 February 2026
Authors
Uğurcan TekinPartner
Alican TekinPartner
Beyza ErdemirAttorney at Law

The Court of Cassation’s Approach to Trademark Registrations with a High Degree of Genericness

Under Industrial Property Code No. 6769, the fundamental principle governing the registration and protection of a sign as a trademark is that it must possess distinctive character. Distinctiveness is the quality enabling consumers to distinguish one product or service from others. In certain cases, however, even descriptive elements or elements that have become generic in common usage may, as a result of intensive and continuous use, acquire distinctive character, be registered, and afford absolute protection.

The decision of the 11th Civil Chamber of the Court of Cassation dated 16 December 2024, numbered 2024/9044, constitutes an important precedent on the registration of terms alleged to have become generic — a phenomenon frequently encountered in the food sector — and on claims of likelihood of confusion arising from those terms. Through an assessment carried out in relation to a specific term (RUBY) said to have become generic in the chocolate sector, the decision clearly delineates the limits of the protection afforded by registered trademarks.

In sectors where terms readily become generic, the strength of a registration is tested most severely.

The Legal Journey of the “Ruby” Term: The Dispute and the Proceedings

The dispute began with an application by the claimant, a chocolate manufacturer founded in Belgium in 1911, to register the term “Callebaut Ruby Callets” as a trademark under application number 2019/57164. The Re-examination and Evaluation Board of the Turkish Patent and Trademark Office partially refused that application — in particular in respect of the product groups “chocolate, cocoa and derivatives” in class 30 — on the ground that it carried a likelihood of confusion with the mark “RUBY”, registered under number 2017/83169 in the name of the defendant company operating in the same sector.

The annulment action brought against that refusal gave rise to differing interpretations at successive judicial stages.

The First-Instance Judgment

The first-instance court held that there was a strong visual and phonetic similarity between the mark applied for and the earlier registered mark. Accepting that the shared term “RUBY” was an essential and exclusive element of the defendant’s mark, the court concluded that there was a high likelihood of confusion between the marks and dismissed the action.

The Regional Court of Appeal Judgment

The Regional Court of Appeal, relying on the expert report submitted to the file, reversed the lower court’s judgment and upheld the action. The expert report stated that the disputed shared term “RUBY” was a generic term denoting a particular type of chocolate worldwide. According to the report, because the term had become generic it carried no distinctiveness on its own and would therefore not create a likelihood of confusion between the marks. The Regional Court of Appeal took the view that the other elements of the mark would provide sufficient differentiation for consumers.

The Court of Cassation’s Judgment: Absolute Protection of the Registered Mark

The 11th Civil Chamber of the Court of Cassation reversed the judgment of the Regional Court of Appeal, re-emphasising a key principle of trademark law. The reasoning rests, in summary, on the following critical points.

The strength of the registered mark. The Court stated in categorical terms that, even if the shared term denotes a type of chocolate, so long as it is registered in the name of the defendant company that term affords absolute and exclusive protection. Registered marks are binding erga omnes and afford legal protection unless and until a decision of invalidity is given.

The requirement of an invalidity action. Under Article 5/2 of the Industrial Property Code, a descriptive sign may be registered where it has become distinctive through use. The Court emphasised, however, that if it is to be argued that the term concerned is descriptive, that argument can be assessed only by way of a separate action in which the invalidity of the mark is sought. In the absence of a valid decision of invalidity, it is not legally possible to narrow the scope of protection of a registered mark.

Likelihood of confusion. The Court held that, by reason of the shared term “RUBY” in the marks, a consumer of average attentiveness might perceive the products as belonging to the same commercial undertaking or to economically linked undertakings. That situation gives rise to a likelihood of confusion within the meaning of Article 6/1 of the Code.

The dissenting opinion. The dissenting opinion appended to the judgment offers a different perspective. In the dissenting view, the term “RUBY” has genuinely become generic in the chocolate sector. For that reason, even though registered, the term should not confer an absolute monopoly on the proprietor. The dissent argued that, just like the word “chocolate” itself, the term “RUBY” denotes the general description of the product. It further stated that the “other distinctive elements” of the mark applied for should have been taken into account and that, considering those elements to eliminate the likelihood of confusion, the judgment of the Regional Court of Appeal was the more appropriate one.

“So long as a mark remains registered, its protection continues; it can be removed only by a judgment of invalidity.”
Registration remains determinative until an invalidity judgment says otherwise.

General Assessment and Strategic Recommendations for Proprietors

This judgment of the Court of Cassation once again sets out clearly the strength and scope of registered trademarks in Turkish trademark law. It emphasises that even where a term is descriptive in nature, or shows a tendency towards genericness, it affords absolute and exclusive protection so long as it is registered. That protection can be removed only by a court judgment in an action for invalidity.

This approach will directly affect the protective strategies of proprietors and the choices of competing firms as to the commercial terms they use, particularly in fields such as the food sector where certain terms can readily become generic. In the light of this judgment, there are important conclusions and recommendations for proprietors and prospective applicants.

The importance of the invalidity action. Where it is asserted that a term in an existing registered mark has become generic, the only lawful means of removing the exclusive rights afforded by that mark is to bring an action for invalidity. Unless such an action is brought, the absolute protection of the registered mark will remain in force. In other words, where a legal dispute is initiated on the basis of a registered mark with a high degree of genericness, it may not be sufficient for the proprietor of the later mark simply to plead the generic character of the shared element. The safer course for the proprietor of the later mark is to seek, by way of an invalidity action, the removal of the registration of the weakly distinctive earlier mark and to have that action treated as a preliminary issue in the main dispute.

Care in trademark applications. When making a new application, the distinctive character of each term used must be assessed with care. Where a term is initially descriptive or generic, a strategy of acquiring distinctiveness through use should be adopted in order to guard against possible future oppositions and actions.

Comprehensive assessment in disputes. In disputes involving the use of shared terms with competing marks, rather than focusing solely on the term itself, all factors must be taken into account as a whole — the scope of use of the term, the perception of the average consumer, the general structure of the mark (slogan, logo, other word elements) and the dynamics of the sector.

Proactive trademark strategies. For companies operating in sectors open to genericness — food, cosmetics, fashion and media — a proactive trademark strategy is of vital importance. Commissioning detailed similarity and distinctiveness analyses before filing, and opposing in good time applications that carry a likelihood of confusion, can forestall potential legal problems.

Regular protection of weakly distinctive marks. It bears emphasis that, even where marks initially have low distinctive power, if they acquire distinctiveness through regular and intensive use and are registered, the likelihood of their being protected against legal challenge increases materially within the scope of the absolute protection afforded by registration. Moreover, conducting a continuous and attentive trademark protection programme against similar applications by competitors — oppositions, watch services and the like — will consolidate the mark’s market power and its level of legal protection.

Watching, opposing and documenting use are what turn a weak registration into an enforceable one.

A Brief Assessment of the Contradictions in Practice

In the light of this judgment it may plainly be said that where a mark is registered, the strength of that registration must be taken into account in oppositions filed and actions brought on the basis of that mark, and similarity assessments must be conducted accordingly. This shows that the positive approach to registration must continue even where the generic character of the registered mark is high or has increased over time.

In the practice of the Turkish Patent and Trademark Office in particular, however, where the earlier mark has a high generic character, or lacks a high distinctive character, or has become diluted to a certain degree, decisions are issued as though the mark had effectively ceased to exist. The presence of such terms as shared elements in the parties’ marks is treated by the Office’s examiners as almost a nullity; no weight at all is given to the existence of the registration, and oppositions are refused outright.

In a system such as Türkiye’s, in which finding a new trademark has become almost impossible, the inability of registered marks to afford any protection on the ground that their distinctive character is not high — notwithstanding their registration — is diametrically at odds with the Court of Cassation’s judgment. Attaching so little importance to the strength of registration in a system containing so many marks gives rise to numerous legal problems in practice. Foremost among them is the increase in annulment actions. Refusals, which the Office has made almost routine, compel proprietors to bring proceedings, and this in turn causes a material increase in the burden on the judiciary.

Accordingly, and having regard to the Court of Cassation’s judgment, we would wish to see greater importance attached to trademark registrations, and the Office in particular making more holistic assessments in favour of the protection of registered marks, taking into account the disadvantageous realities of Türkiye in terms of the sheer number of marks on the register.

The judgment further serves as a reminder that even marks with initially low distinctive power may acquire market strength through regular and intensive use, and that continuous watching and opposition activity against competing applications consolidates the mark’s level of legal protection.

Comparable debates are current in comparative law: in the case law of the EUIPO and the Court of Justice, the weight of weakly distinctive shared elements in the assessment of likelihood of confusion is kept limited; the existence of a registered right is not, however, disregarded without a separate invalidity process being conducted. In that respect the Court of Cassation’s approach is also consistent with international practice.

Related practice areaIndustrial Property Law→

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