As a general rule, a person who creates a sign subject to registration for the purpose of distinguishing goods and services from similar one, is free to choose the sign. The first threshold this freedom must overcome are the requirements set out in paragraph 1 of article of the Law on Industrial Property, entitled “Absolute grounds for refusal of the registration of a trademark”. In other words, the registration of a sign as a trademark depends on whether it includes or not the grounds for refusal stipulated in the said article. The absolute grounds for refusal examined ex officio by the Turkish Patent and Trademark Office can also be alleged by related persons, by virtue of article 18 of the Industrial Property Law. In any case, the decision to be pronounced by the Office as a result of the examination, bears vital importance with regards to the acquisition of a trademark right which grants absolute and exclusive rights to the owner until its cancellation or invalidation by court.

In the decision pronounced by the Reexamination and Evaluation Board, dated 04.06.2020, the Office examined the application related to the expression MR & MRS, in light of subparagraphs b and c of paragraph 1 of article 5 of the Industrial Property Law,  upon the objection raised against  the rejection decision of the Trademark Department, and concluded that the application is not descriptive and that the expression bears minimum distinctive character with respect to the goods for which registration is requested.

The Italian applicant operating in the clothing sector requested that the expression MR & MRS is registered in respect of various goods in classes 14, 18 and 25. The Trademark Department decided that the said expression can be registered as trademark only for “clothes for pets and collars for animals” and that for goods which do not fall within this group, it lacks distinctive character and is descriptive. The applicant objected to this decision on the following grounds and requested that this decision issued by the Trademark Department be cancelled:

– The expression MR and MRS, which is already perceived by the average consumer as a trademark since it has been used for a long time and which means LADIES & GENTLEMEN also in Turkish, does not reflect the rejected goods in conceptual terms and in sectoral terms, accessories, clothes for women, men or for both men and women do not contain tags with the expression MR and MRS but the words WOMEN, MEN and UNISEX,

– There is no direct and special relationship between the expression MR & MRS and the goods covered by this expression and this expression does not directly and immediately evoke a feature of the goods.

The Reexamination and ReEvaluation Board which dealt with the objection for the final decision on the application first underlined that for an application to be rejected by virtue of subparagraph b of paragraph 1 of article 5 of the Industrial Property Law, the trademark must not fulfill its purpose of showing reference which is its essential function. The Board indicated that this case will be examined in stages, and underlined that the expression subject to registration must first be examined in terms of the goods and/or services it covers and then in terms of the perception of consumers that the said goods and/or services appeal to. In the decision of the Board which includes important points and reveals the spirit of the provision of subparagraph c of paragraph 1 of article 5 Industrial Property Law, the Board explained that the outcome which the legislator wanted to achieve with the said regulation was “to prevent a trademark from including descriptive signs and denominations as essential component”. Hence, it is emphasized once more that expressions which due to their nature should be open to public use cannot be granted exclusively to any person within the scope of public benefit. The Board which subsequently referred to rules which need to be considered to determine whether a sign shall be qualified as descriptive, indicated that signs which immediately evoke a characteristic of a goods or service, without the need to make any mental effort can be qualified as descriptive, and that signs which merely evoke certain goods or services or indirectly reminds one of such goods or services, are not descriptive.

Applying the said principles concretely, the Board indicated that the expression contained in the trademark which constitutes the subject matter of the application has no counterpart for the related consumers, within the scope of the goods it covers, that in the sector, for the said products, the terms such as “men, women, unisex” are used and not the expression MR & MRS, and concluded that the expression MR & MRS subject to application cannot be qualified as descriptive and bears the minimum distinctive character required for registration.

The Board decision established the practical meaning of the ‘expression lacking distinctive character’ as well as the cases where an expression can be qualified as descriptive, and two points frequently raised as grounds in rejection decisions have been explained in detail. Accordingly, it must be admitted that expressions which fulfill their purpose of showing reference, in terms of their equivalent usage known by the average consumer, and which implicitly evoke the goods they cover, cannot be considered within the scope of subparagraphs b and c of paragraph 1 of article 5 of the Industrial Property Law.