Ali Gül
Hukuk Bürosu

Distinctiveness Assessment in Trademark Examinations

06.12.2024

1. Introduction

“Distinctiveness” has constituted one of the most fundamental elements of the concept of trademark since its emergence. As a matter of fact, the criterion of “enabling the goods or services of one enterprise to be distinguished from those of other enterprises” is regulated as the first criterion of the definition of trademark in the European Union Trademark Regulation. In Turkish Law, almost the same regulation is included in Article 4 of the Industrial Property Law No. 6769 (“SMK”).

One of the first stages of examination during trademark registration is the distinctiveness examination. In this context, the Turkish Patent and Trademark Office (“TURKPATENT”), where all kinds of works and transactions regarding trademark registration and protection are carried out, also acts on this basis in the Trademark Examination Guidelines it publishes.

In this article, we will try to explain which methods and criteria are used in determining the distinctiveness of trademarks, especially in line with TURKPATENT and judicial decisions.

2. The Concept of Trademark in General and Reasons for Absolute Grounds for Refusal

The concept of a trademark is not directly defined in the SMK. But a trademark for the purposes of Article 4;

  • enabling the goods or services of an undertaking to be distinguished from the goods or services of other undertakings,
  • which can be displayed in the register in such a way that the subject matter of the protection afforded to the proprietor of the trademark can be clearly and precisely understood,
  • signs of any kind, including words, figures, colors, letters, numbers, sounds, and the shape of the goods or their packaging, including personal names

consists of. Although distinctiveness comes first in legal regulation, the first requirement during a trademark examination is the existence of a sign as defined in the law.

In the case of traditional trademarks, such as words, shapes, letters, and numbers, it is easier to determine whether a sign can be a trademark. On the other hand, a more detailed examination is required in non-traditional trademarks, such as a goal celebration in the form of a motion trademark or a color trademark in the form of a color combination. On the other hand, the nature of the sign brings with it the examination of another requirement for trademarks, which is the requirement of “being capable of being displayed in the register”. In this context, it is not possible for a sign that cannot be visually represented, or more accurately, a sign that cannot be “displayed in the register” to be a trademark. For example, in a 2005 decision of the EU Court of First Instance, the application for “ripe strawberry smell” was refused; likewise, in a 2001 decision of the EUIPO Board of Appeal, the application for “artificial strawberry taste” was refused.

The examination of the nature of the trademark is carried out by considering certain grounds for refusal. In this context, the absolute grounds for refusal are the grounds that the TURKPATENT ex officio observes during the examination of a trademark application and which absolutely prevent the registration of the trademark. These reasons are listed in a limited number in Article 5 of the Law. All of the absolute grounds for refusal will not be addressed in this article; however, the violation of the above-mentioned issues is the first absolute ground for refusal, and the lack of distinctiveness is the second absolute ground for refusal.

3. Distinctiveness as a Ground for Absolute Refusal

According to Article 5/1 – (b) of the SMK, “signs that do not possess any distinctive characteristic” shall not be registered as trademarks.

As the name suggests, distinctiveness means that the goods or services that are the subject of a sign are distinctive from other goods or services. Therefore, the distinctiveness of a sign primarily depends on “the goods or services” for which it is used. In other words, the distinctiveness of the trademark is examined based on the trademark registration class to which the relevant goods or services are subject. We will return to this issue below.

The person who will recognize a sign is the relevant consumer group. The relevant consumer segment consists of reasonably informed, observant, and average consumers of the relevant good or service. In this context, the second part of the distinctiveness assessment is the perception of the relevant consumers.

Although distinctiveness is an absolute ground for refusal, a registered sign may acquire a distinctive character later on, whereas it did not have a distinctive character initially. As a matter of fact, according to Article 5/2 of the Law, “If a trademark has been used before the application date and has acquired a distinctive character as a result of this use in terms of the goods or services subject to the application, the registration of this trademark cannot be refused according to subparagraphs (b), (c) and (d) of the first paragraph”. For example, lilac color alone is not a sign that can be registered as a trademark. However, since Milka has been designing its chocolate packaging in lilac color for many years, the lilac color has now become distinctive for Milka chocolates. Accordingly, the Re-examination and Evaluation Board accepted the trademark application by stating that “the said color has become identical with or evocative of a particular good or service and the trademark has become identical with the lilac color”. On the other hand, it is also possible for a trademark to lose its distinctive function; as a matter of fact, according to the first paragraph of Article 25 of the SMK, if such a situation arises and is requested, the court may decide to “invalidate the trademark”.

4. General Criteria for Distinctiveness Assessment

The first point to be considered in the distinctiveness examination is the holistic examination of the sign subject to the trademark application. If the sign is not immediately recognized by the consumer and can be understood only after a long examination or reflection, the sign used as a trademark does not have the element of integrity. The importance of this issue arises during comparison with similar signs. It will not be possible to distinguish a sign that has no integrity and whose boundaries cannot be determined.

In assessing the distinctiveness of a sign, the scope of goods and services should be taken into account in two aspects. In this context, firstly, the sign should not be “descriptive”.In other words, the sign should not define the class of goods or services for which it is to be registered. In this context, signs that express, characterize, and define the goods or services for which they are to be used, and that indicate qualities such as genus, variety, qualification, purpose, quality, etc. in trade cannot be considered distinctive (Art. 5/1 – c of the SMK). For instance, phrases such as milkman, greengrocer, master, cook, etc. are not distinctive on their own.

Ancak yukarıda da değinildiği üzere marka bir bütün olarak değerlendirileceğinden, bu tür ayırt edici olmayan unsurların “yan unsur” veya “düşük seviyede ayırt edici unsur” niteliğinde olduğu türden işaretler ayırt edici nitelik taşıyabilir. Söz gelimi aynı sınıfta yer alan “Yayla Mutfağı” ve “MUTFAĞIM” markaları arasındaki benzerlik incelemesinde Ankara 3. FSHH Mahkemesi, 2014 yılında verdiği kararında; “Yayla” ibaresinin esas ayırt edici niteliği haiz olduğu, bu sebeple “markasal ayırt ediciliğinin, ortak unsur olan ‘mutfak’ kelimesinden daha fazla olduğu” gerekçesiyle markaların yeterince farklılaştığına hükmetmiştir. TÜRKPATENT de aynı doğrultuda; “Kebapçı Adem Usta” ile “Adem Usta’nın Tatlıları” ve “Kaportacı Abdullah” ile “Frenci Abdullah” şeklindeki işaretler arasında ayırt edicilik niteliğinin haiz olduğunu değerlendirmektedir. Bu örneklerde kebapçı, usta, kaportacı, frenci gibi ibareler; aslında ilgili mal/hizmet sınıfı için tanımlayıcı nitelikte kabul edilebilecekken, bütüncül değerlendirme neticesinde ayırt edilebilirlik unsuru oluşturan diğer ögeler dikkate alınmıştır.

However, as mentioned above, since the trademark will be evaluated as a whole, signs where such non-distinctive elements are “ancillary elements” or “low-level distinctive elements” may be distinctive. For instance, in the similarity examination between the trademarks “Yayla Mutfağı” and “MUTFAĞIM” in the same class, the Ankara 3rd FSHH Court ruled in 2014 that the trademarks are sufficiently differentiated because the phrase “Yayla” has the main distinctive characteristic and therefore “its trademark distinctiveness is higher than the word ‘kitchen’ which is the common element”. In the same vein, the TURKPATENT assessed that “Kebap Shop Adem Usta” and “Adem Usta’s Desserts”, also “Auto Body Shop Abdullah” and “Brake Mechanic Abdullah” are sufficiently distinctive. In these examples, while expressions such as “kebab shop”, “master”, “body shop” and “brake mechanic” can be considered as descriptive for the relevant class of goods/services, other elements that constitute the element of distinctiveness were taken into consideration as a result of the holistic evaluation.

The second aspect of taking into account the scope of goods or services is to evaluate the distinctive character of the sign requested to be registered separately for each class of goods and services requested. To give an example similar to the above; it is certain that the trademark “ Famous Ali Usta” registered in the food and beverage provision services class and the sign “Known Ali Usta” applied for in the land vehicle service station services class can be distinguished, apart from all other reasons, since the classes of goods and services are different.

Another criterion to be taken into consideration for distinctiveness is the relevant consumer perception. The sign sought to be registered as a trademark must clearly and unequivocally evoke “the perception that it is a trademark” in the relevant consumers. As a rule, this requirement is tested by the same methods if the trademark is directed only to consumers in a certain “specialization” specialized in the relevant class of goods/services.

5. Distinctiveness Analysis Against Earlier Dated Trademarks

According to Article 5/1 – (ç) of the SMK, “signs that are identical or indistinguishably similar to a trademark that has already been registered or for which an application for registration has already been filed in relation to the same or similar goods or services” shall not be registered as trademarks. In other words, the distinctiveness examination is conducted not only in the abstract for the trademark application itself but also in comparison to previously registered or applied trademarks.

It should be noted that the distinctiveness described herein is an absolute ground for refusal, and is, therefore, ex officio observed and supervised by the TURKPATENT. The “likelihood of confusion” between a trademark and a subsequent application is a relative ground for refusal and is only taken into account upon opposition.

As can be understood from the provision of the Article, in this absolute ground for refusal, the goods or services of the compared trademarks must be identical or of the same “type” of goods or services. For example, if the previous trademark application was filed for motor vehicles and the new application was filed for automobiles, the goods are deemed to be identical. The reverse is also the case, i.e. if the earlier application was for automobiles and the later application was for motor vehicles more generally. If the two marks relate to completely different classes, no distinctiveness assessment shall be made under this Article. In determining the classes of goods and services, the Regulation on the Classification of Goods and Services for Trademark Registration Applications shall be taken as the basis.

There are two possibilities in the distinctiveness examination to be conducted within the scope of this absolute ground for refusal:

  • First of all, the trademarks may be identical. As stated in a decision of the Ankara 3rd FSHH Court in 2014, for the trademarks to be accepted as identical, the elements constituting the trademarks must be exactly the same. While all the elements that make up the trademarks are the same, the fact that their sizes are different, or that the typeface or color is different in word marks, does not change the fact that the trademarks are accepted as the same.
  • In the second case, the marks may not be identical but so similar as to be indistinguishable. This is where the assessment criteria get tricky. In the 2021 Trademark Examination Guidelines, the indistinguishable similarity is defined as a similarity that is “so strong and obvious as to make it unnecessary to make a further likelihood of confusion assessment” or “almost identical” as perceived by the relevant consumer group.

In a decision of the 11th Civil Chamber of the Court of Cassation in 2011, the limits of the indistinguishable similarity examination were determined and it became a leading case law. According to the Court of Cassation, to reach the conclusion of indistinguishable similarity, it is necessary to consider the compared signs as a whole and to take into account the impression they leave on the relevant consumer group. In this context, the general impression left by the compared trademarks in terms of their mixed qualities, appearance, spelling, and arrangement, together with the shape and word elements consisting of graphic design, should be evaluated, and the similarity that emerges as a result of this general impression should be strong and clear enough to make it unnecessary to evaluate the possibility of confusion. If this strong and clear situation has not occurred, as stated above, it is not an absolute ground for refusal, but a relative ground for refusal.

Today, many trademark applications and registrations are made using “mixed signs”. In mixed signs, word elements or elements and shape elements or elements are used together. Again, the addition of secondary elements that are “non-distinctive and/or descriptive” mentioned in the headings above also makes the sign of mixed nature.

In this context, indistinguishable similarity examinations are based on the characteristics of the case at hand.

  • Similarity can be analyzed based on the overall impression of the signs. In particular, signs that differ in shape, colors, and style and leave a completely different overall impression will be considered to be indistinguishably similar. Signs consisting of a single word or a few letters may be judged to be similar even if they differ in form. For this, criteria such as the following are evaluated:
    • Is the element of shape alone distinctive?
    • To what extent does the shape influence the overall brand?
    • Is the shape element memorable on its own?
  • Similarity can be analyzed through the distinctive elements of signs. For trademarks consisting of only words or only shapes, the examination is based on the distinctive elements. In this context, distinctiveness is evaluated on a scale ranging from lack of distinctiveness to well-known.
    • Low Distinctiveness: If the sign “implies” or praises the characteristics of the good or service, distinctiveness exists, albeit at a low level. Signs containing words such as star, optimum, exquisite, or geographical place/region names can be considered in this context.
    • Average Distinctiveness: This includes signs that do not contain any implication or praise, such as words such as automotive, clothing, etc.
    • Moderate Distinctiveness: Signs that are not widely used in everyday language and have little connection with the goods/services subject to the application are within this scope.
    • High-Level Distinctiveness: This includes unique signs that are not used in daily life.

The indistinguishable similarity comparison takes into account both visual, auditory, and conceptual similarity. Auditory similarity is in the background, for example, although the words love and lava are aurally identical, they are not conceptually and visually similar. It should be noted, however, that all the above considerations are general criteria. In particular, the nature of the sign will directly determine the scope and how the application will be evaluated.

6. Conclusion

  • One of the first steps in the examination of a trademark application is whether the sign is distinctive. In this respect, distinctiveness, being an absolute ground for refusal, is an evaluation criterion to be taken into account ex officio by the TURKPATENT.
  • In the distinctiveness examination, the trademark application should be evaluated holistically. On the other hand, the class of goods and services in which the application is filed is important both because the sign is descriptive and because each sign will be evaluated in its own class.
  • One of the most important criteria of distinctiveness is the relevant consumer perception. In this respect, the sign is evaluated in terms of whether the relevant consumer segment, which will be determined according to the relevant class of goods and services, perceives the sign as a trademark.
  • Distinctiveness is a ground for absolute refusal not only in the abstract but also in the concrete sense, where it is compared to previously registered or previously applied trademarks.
  • Although there is established jurisprudence on distinctiveness, the nature of the sign brings about more specific examinations. In this respect, before determining whether distinctiveness “exists” or “does not exist”, the nature of the sign will be determined and the extent of distinctiveness will be evaluated.

Av. Enes Duran

SOURCES

TURKPATENT, 2021 Trademark Review Guide

Dilek İMİRLİOĞLU, Marka Hukukunda Ayırt Edicilik ve Markanın Ayırt Ediciliğinin Zedelenmesi, Ankara 2017

Savaş BOZBEL, Fikri Mülkiyet Hukuku, İstanbul 2015

ABAD Birinci Derece Mahkemesi, Olgun Çilek Kokusu Kararı (EDEN SARL), 27/10/2005, T-305/04

EUIPO (OHIM), Eli Lilly, Yapay Çilek Aroması Tadı Kararı, R120/2001-2 (04.08.2003)

Ankara 3. FSHHM, E. 2014/127, K. 2015/236

YARGITAY 11. HD, E. 2008/14092, K. 2010/10118, T. 12.10.2010

Ankara 3. FSHHM, E. 2014/355, K. 2015/268, T. 05/08/2014