Turkish Olympian Seeks to Trademark Iconic Pose

The Turkish Olympic shooter Yusuf Dikec applied for his globally viral pose of a relaxed stance with one hand in his pocket and no elaborate equipment for shooting to be trademarked however, still unclear whether the trademark application for the stance would be a figurative mark, motion mark or an image mark. Even though the application procedure is the same for all marks, different marks provide different kinds of protection and benefits.

The application was filed to prevent others from using his image commercially over products not associated with him. It was observed that people have already applied for the famous pose to be trademarked to receive profits and have started using the pose on products like mugs and t-shirts. Such trademark applications made in bad faith by non-owners are common stunts in Turkey to the extent that rightful owners sometimes are unable to trademark their mark.

So far two applications have already been detected on the Turkish Patent and Trademark Office’s online database, however, since the applications are not published the applicant’s names are unknown. These applications include Yusuf Dikec’s name with his drawing or an image without the gun but making his hand like a gun. The application with the drawing was provisionally rejected by the office because it was against public order and morality, mostly due to the gun's visual. The decision is not final and can be appealed before the Re-examination and Evaluation Board. The other application which is believed to be of Yusuf Dikec himself is under 1st examination. Once the ex-officio examination is passed, the applicant's name will be made available to the public.

The Attorney handling the matter stated that registering photos of individuals as trademarks can be challenging due to concerns about distinctiveness. While there are precedents for such registrations, the individual's trademark application should ultimately be successful. However, if the registration is limited to the photo alone, without including the accompanying motion, the level of protection will be narrow.

In such a case, the Turkish Patent and Trademark Office and courts will scrutinize any potential similarities closely. The lawyer emphasized that the essential and protectable element is the stance or movement, not merely the photo. Furthermore, including the celebrity's name in the application could further narrow the scope of protection, making it harder to prevent others from using similar stances or postures.

Mahesh Gupta v. Assistant Controller of Patents and Design

Background/Facts of the Case :

An application was filed challenging the refusal of an Indian Patent Application for a "PORTABLE VEHICLE MANAGEMENT SYSTEM," issued by the Assistant Controller of Patents & Designs on 27-12-2018. The refusal was based on the grounds that the claimed invention did not meet the inventive step requirement as stipulated under Section 2(1)(ja) of the Patents Act, 1970. The applicant had sought patent protection for a vehicle monitoring and tracking system aimed at providing real-time monitoring, anomaly detection, and emergency response features for vehicle operations. However, the patent office rejected the application, asserting that the invention did not demonstrate a technical advancement over prior arts D4 and D5.

Arguments of the Case :

The applicant challenged the rejection, arguing that their invention introduced novel features such as portability, enhanced safety, privacy features, and real-time assistance through traffic data analysis, which were not disclosed or suggested by prior arts D4 and D5. They contended that while certain aspects of the invention might overlap with prior arts, the combination of features and the novelty of the overall system justified patent protection. The patent office, however, maintained that the claimed invention lacked an inventive step as the features like real-time monitoring, anomaly detection, and emergency response were already addressed by D4 and D5, and that the shift from fixed to portable systems was an obvious progression.

Judgment :

Justice Sanjeev Narula upheld the decision of the patent office, ruling that the claimed invention lacked an inventive step under Section 2(1)(ja) of the Patents Act, 1970. The Court conducted a detailed comparison between the claimed invention and prior arts D4 and D5 and concluded that the features like portability and real-time assistance were already addressed by D5, and the combination of common features from D4 and D5 was obvious to a person skilled in the art. The Court emphasized that the shift from fixed to portable systems was a natural evolution rather than a distinct inventive step. As a result, the rejection of the patent application was upheld, and the appeal was dismissed.

IP Repository for trade mark practices, legal provisions, case-law and e-learning resources of the EU Member States' IP offices Launched.

The IP Repository is a web-based platform for accessing reusable IP infrastructure. Recently, the IP Legislative and Practice Repository was launched, allowing users to search for guidelines, legislation, case law, e-learning, and European common practices on trademark and design practices within the EU's IP offices. The EUIPO, based in Alicante, Spain, was established under Regulation (EU) 2017/1001 and Council Regulation No. 6/02 of 2001. It oversees registering European Union Trademarks (EUTM) and Registered Community Designs (RCD), ensuring uniformity across the EU.

The guidelines in the repository improve coherence, predictability, and decision quality and are periodically updated, with tracked changes highlighted. They detail the rules for applying for EU trademarks and the necessary supporting documents. The repository allows comparisons of guidelines across the EU and offers multilingual support. However, only the EU and Portugal provide English versions, with the rest in native languages, limiting global accessibility.

Since 2011, the EUIPN has worked to harmonize trademark and design practices, identifying areas of convergence, agreeing on common principles, and spreading best practices. It has completed two waves of convergence projects and is currently working on a third. General practices cover areas like the Nice Classification, distinctive marks, grounds for refusal, and evidence in appeals. These ensure the EUIP system remains efficient, predictable, and accessible.

The repository makes it easy for stakeholders to navigate and access data on EUIPO practices. Advanced search options simplify finding case laws and precedents from EU and national courts.

The LP Academy

Have You Received An Objection From The Uspto Based On A Prior Registered Or Prior Filed Similar Mark?

Recently, we came across such a situation and succeeded in obtaining publication approval for a mark by overcoming an Office Action objection that had initially refused registration owing to an earlier registered similar mark that differed by just one word, but later got approved owing to having distinctive elements and services, despite both being in the legal field.

Slight differences in marks or services are crucial when addressing objections from the USPTO, as they can significantly impact the likelihood of confusion analysis. Highlighting the differences between the purpose and potential consumers of services can demonstrate that your mark is unique compared to existing ones, potentially avoiding overlap and consumer confusion.

It is through such strategic suggestions and application of legal principles that we ensure to afford protection to our client’s trademark and their respective goods.

So, suppose you are facing an objection from the USPTO for your applied mark owing to a prior-filed or prior registered mark. In that case, you can reach out to us to explore the possibility of overcoming such refusals and obtaining a trademark registration .

Editor in chief : Siddharth Mathur

Assistant Editors : Keya Modi

Research Assistants : Keya Modi , Nidhi Khetan , Foram Shah

Blog Author : Nidhi Khetan

Designer : Sanskruti Mohanty