Author : Att. M.Fatih Güçlü
What Is The Law On Protecting Rightowner’s Industrial Rights on Their Trademarks In Turkey?
In Turkey, the law protecting industrial rights on registered-unregistered – trademarks in exceptional circumstances – is the Industrial Property Law numbered 6769 (in short, “IP Law”). Provisions on trademarks are regulated under the articles of 4 to 32 of the aforementioned law. Provisions on all industrial rights are also regulated under the Articles of 146 and continuation of the same law. Rights on unregistered trademarks are protected under the Articles numbered 6/3 and 25 of IP Law and provisions of the Articles 54 and continuation of the Turkish Commercial Code No. 6455 (in short, “TCC”).
What Is a Trademark?
New inventions, utility models, and original designs are intellectual property products and in order to present and sell these new products to the consumer and distinguish them from other similar products, a promotional tool and a distinguishing sign are needed. These distinguishing marks, which are essential elements of businesses, are trademarks. A trademark is briefly; a sign that distinguishes the products and/or services offered by a business corporation from the products and/or services of another business corporation. It can be said that the trademarks are in one aspect “the fingerprint of a business.” A trademark is a distinctive sign that represents all the assets of a business, just as a person’s name and surname become a kind of distinctive sign which refers to his socio-psychological characteristics after a while, such as his personality and profession/social roles. In this direction, it is possible that we can choose our trademarks, while it is not possible to choose our names before our birth, it is important that this is done with the right consciousness and strategy.
What Are the Trademark Types?
Person names, words, figures, letters, numbers, a form of goods, packaging, etc. can be chosen and used as a trademark. According to the Article 4 of IP Law;
“Provided that the goods or services of an enterprise are distinguished from the goods or services of other enterprise and the trademark is demonstrable in the registry so as to provide a clear and accurate understanding of trademark protection; a trademark may consist of all types of signs, including
a) Words, including person names,
f) Sounds, and
g) The shape of goods or their packaging”
In addition to such signs, a motion can be protected as a “Motion Trademark” provided that the motion has acquired a trademark characteristic before the merchant base, depending on the way it is used. In this regard, the community trademark application for the salting movement through the elbow filed before the European Union Intellectual Property Office (EUIPO) on behalf of D-Et ve Et Ürünleri Gıda Pazarlama Ticaret A.Ş. company of Nusret Gökçe, the owner of “Nusr-et Steakhouse” originated in Turkey, was refused in “food and beverage” services cited in Class 43 for which the application was filed and registered as a ‘motion trademark’ for “All kinds of clothing and clothing products, all kinds of coffee products, all kinds of bakery products, all kinds of pasta, all kinds of sweets, all kinds of spices, sauces and flavoring products and all kinds of grain products and syrup products” registered in the Classes 25 and 30.
Motion Trademark Image
In some countries, scents are also protected as trademarks, but there are no regulations in this regard in our country.
Trademarks are divided into trade and service trademarks within themselves. A trademark is a mark used on commercial products, and service marks are the marks being used in order to distinguish the services offered by the trademark owner. For example, ”Pirelli“, ”Coca Cola“ and ”Ferrari“ are trademarks, while trademarks such as “Mc Donalds”, “Starbucks” and “Hilton” are service marks.
Who is the Trademark Owner?
The Trademark owner is the genuine or legal person who owns the trademark and who has created from scratch, used, promoted, or acquired. According to IP Law, in order to benefit from trademark protection under the aforementioned law, it is mandatory to register the trademark (before the Turkish Patent and Trademark Office, located in Ankara (in short, “TPTO”)) and trademark protection is obtained through the registration. (Article 7 of the IP Law) Therefore, in lieu of the subject law, trademark owners are natural or legal persons who have registered their trademarks. Pursuant to Article 3 of the aforementioned law, a limited number of persons can benefit from the protection provided by IP Law regarding trademarks. These are;
a) Citizens of the Republic of Turkey,
b) Natural or legal entities that are located within the borders of the Republic of Turkey or engage in industrial or commercial activities,
c) Persons who have right of an application under the provisions of the Paris Convention or the World Trade Organization Establishment Agreement dated 15/4/1994,
ç) In accordance with the principle of reciprocity, nationals of states which provide protection of industrial property rights to Turkish citizens.
Is It Possible to Use a Trademark Without Registration?
How Will the Unregistered Trademark Owner Protect the Trademark Rights?
In terms of unregistered trademarks, unregistered trademark owners can benefit from the provisions of Article 54 and continuation of the TTC on unfair competition, and according to Article 6/3 of the IP Law, if the identical, indistinguishably similar or similar trademark, which has become distinctive as a result of the unregistered use of the trademark owner, is tried to be registered in similar classes by third parties, the unregistered trademark owner has the right to oppose to the publication of this trademark application. According to Article 25 of the same law, the unregistered trademark owner also has the right and authority to file an invalidity action if an identical, indistinguishably similar, or similar trademark of his/her trademark is registered by third parties.
It is not always easy to demonstrate the genuine right ownership of the unregistered trademark owners, that they have genuinely, repeatedly, and intensively used the trademarks before their consumer mass hence the trademark became distinctive. On the other hand, the protection provided by the TTC is more general than the protection provided by the IP Law, and it is more difficult to benefit from the preliminary injunction mechanism and to take urgent precautionary measures to prevent infringement compared to the legal remedies provided by the IP Law. For this reason, it is recommended that the trademark owners use the registration mechanism in order to properly protect their trademark.
What Does Genuine Right Ownership of a Trademark Mean?
Having genuine right ownership over a trademark means being the real creator of that trademark, the first to use it and the first to promote it in the presence of consumer mass. According to Article 6/3 of the IP Law, as mentioned above, if the right owner has a non-registered trademark, the right owner shall demonstrate that he/she has filed his trademark distinctive by using it genuinely, repeatedly, and intensively in order to exercise the rights arising from genuine right ownership. The party, who claims the trademark owner is not the genuine right owner, is obliged to substantiate this claim.
In accordance with Article 7 of the IP Law, the trademark right shall be conferred by a registration filed in Turkey, as a principle. However, Article 6/3 of IP Law recognizes an exception by giving a superiority to the trademark owner who acquired the right prior to the registration by creating and using the trademark and enabling the related party to prevent an identical or similar trademark registration; cancel the subject trademark if it is already registered. This principle, called the principle of “genuine right ownership”, is not national, but in accordance with the IP Law, it is also applied to trademarks registered in other countries and not yet registered in Turkey by natural or legal persons who are citizens of the countries who are a party to the international agreements to which Turkey is a party to (Article 8 of Paris Convention). In the implementation of IP Law Article 6/3, there will be a registration obstacle only for the goods and services that are in similar classes with the goods and/or services the superior and prior right has been obtained through prior use for unregistered trademarks. Of course, the presence of identity or similarity between the trademarks is also significant at this point.
In order to issuance of an invalidity decision (or refusal of the registration application in oppositions filed at the registration process) due to genuine right ownership, the trademark owner does not necessarily have to be in Turkey and make sales in Turkey. Article 8 of the Paris Convention also stipulates the protection of trade names registered in a foreign country, even if they are not registered in Turkey. In the “Pussycat London” decision dated 2009, the Court of Cassation approved the district court’s decision which states that Article 6/3 of the IP Law which corresponds to the Article 8/3 of the former Decree-Law enables unregistered trademarks to be protected along with the registered trademarks, emphasizing that this provision aims to protect the unregistered trademark used under all circumstances, enables the non-citizen plaintiff residing in England has been manufacturing with the trademark “Pussycat London” by subcontracting between 2000 to 2002 which is the registration date of the trademark that requested to be cancelled and to 2005 which is the motion date and using these products by importing to England and whose trademark is actually registered before EUIPO and England to be the genuine right owner. 1[11. CC 07.07.2009 D., 2009/4039 F., 2009/8380 D.] [11. HD 07.07.2009 T., 2009/4039 E., 2009/8380 K.]
What Should Be Considered When Creating A Trademark?
First and foremost, the trademark is one of the most important promotional tools -in the commercial sense- used in shaping and managing the perception of the consumer mass to which it is addressed. It should be distinguishable and memorable by the consumer mass in terms of the goods and/or services it is registered for, orienting the customer to the product with its elements such as the word, logo, color that composes it, and its story. On the other hand, a trademark is also an exclusive industrial right granted to the owner. In particular, it should be observed that it does not constitute a violation of the trademark rights of a third natural or legal person at the time of creation and does not create a likelihood of confusion with a trademark belonging to a third party. For this reason, trademark creation has two dimensions, both technical and legal.
While the technical aspect of brand creation is dealt with by the visual trademark identity experts assigned by the trademark owner or the advertising agencies where such designers work, when dealing with legal aspects (also recommended to be a lawyer), a trademark attorney is involved. In practice, the visual trademark identity expert and the trademark attorney work in different time periods without being aware of each other depending on the personal preference or misdirection of the trademark owner, the trademarks are designed by the trademark owner either personally or mostly by going to the visual brand identity expert or an advertising agency, afterward, it is observed that these trademarks created are brought before the trademark attorney for the purpose of registration, which generally negatively affects the operation of the trademark creation process and leads to the evolution of trademarks with low distinctiveness from the very beginning and weak registration capacity.
In order to avoid this, the method that we recommend to follow is that the trademark owner, designer and trademark attorney act as a team with the “awareness of being us” from the very beginning to design a mark that is appropriate to the story in the mind of the trademark owner and employed with a high registration capacity. Visual trademark identity expert and trademark owner, in order for the trademark to be used on the good or service to have a distinctive and catchy trademark perception before the consumer mass from a technical point of view, should identify multiple (meaningful or meaningless, short, catchy, authentic, highly distinctive and capable of containing the trademark’s story within itself) words and/or shapes and they should request from the trademark attorney to carry out preliminary research in national and international trademark databases upon request (in terms of the classes in which the products and/or services to be registered) just before they move to the design phase of the trademark. At this juncture, it should be stated that, as explained in detail within the scope of the next question, the preliminary research and legal risk analysis carried out by the trademark attorney are actually the legal aspects of the investigation, and with these researches, it is investigated upon the trademark databases whether there are similarities between the trademarks that are registered or in the application process by the trademark attorney (who is also recommended to be a lawyer) and the trademark of which the client wants to register, which may prevent the registration from a legal point of view. Usually, these researches are not carried out by the visual trademark identity experts/advertising agencies with whom the trademark owner works with. From here on, according to the preliminary research report of the trademark attorney and/or the results of the legal risk analysis, words and/or shapes that cannot be used as a trademark must be immediately extracted, and others must be decided on altogether. After completing all these processes, in which it needs to be acted with Team awareness, it is possible to create a strong trademark with a low-risk coefficient in the registration process from a technical and legal point of view.
What Are the Essential and Subsidiary Elements Of A Trademark, What Should Be Considered When Creating the Essential And Subsidiary Elements Of the Trademark?
The essential element of a trademark means the dominant element of that trademark in terms of its characteristics, such as size, being ahead or above, authenticity. A subsidiary element of the trademark means an element that defines/depicts the goods and/or services to which the trademark is registered in terms of its characteristics, such as smallness, being positioned in back or bottom, which do not contain authenticity, do not have distinctive characteristics, and therefore can be used by everyone. A subsidiary element of the trademark cannot be registered as a trademark on its own. Accordingly, for example, the “Soft&Dry” trademark that is intended to be registered for baby diapers cannot be registered as a trademark on its own, as they depict dry and soft characteristics that are among the characteristic features of diapers. In order for these words to be registered as a trademark -even if they cannot grant protection in favor of the trademark owner- they must be positioned under the word and/or figurative element of the trademark (dominant qualification) with lowercase letters. The essential element of the trademark is important in terms of shaping consumer perception and giving the trademark its attractive image, as well as in terms of comparison of similarities made to determine the likelihood of confusion of the trademark with other trademarks registered in the identical or similar classes. In fact, in the similarity comparisons to be made -although all elements will be reviewed based on the entirety principle of the trademark- firstly, the essential element of the trademark (consisting of words and/or figure) is determined, and then the comparison is made primarily by observing the essential element. The essential element of the trademark can sometimes be a word, sometimes a figure, but we would like to point out that the word element of the trademark is always sticking more in the consumer’s memory than the figurative element, so the word element is considered first in composite trademarks that contain words and figures. There are some visual examples to clarify this subject below;
– The letter “M” in the trademark can be considered one of the essential elements of the trademark, as it is on the top and larger than the word elements.
– But since the word element is more permanent before the consumer mass, the comparison will be made over the word “Meteor”, which is the other essential element of the trademark. If another trademark has a figure similar to the letter “M” in this trademark, the figure will also be taken into account in the comparison as the essential element of the trademark.
– The word computer, which is one of the word elements of the brand, is a secondary element because it is a non-distinctive name/descriptive sign that everyone can use.
– The essential element of the trademark is the Word “Eriş” and its special typography.
– The words “Electrical Electronic Computer Medical” in the trademark are subsidiary elements of the trademark. For the reason that they are words that can be used by everyone and do not have any distinctiveness on their own, they do not constitute a right in favor of the trademark owner.
– The essential element of the trademark after the word element is the figurative element. When this trademark is evaluated in light of the entirety principle of trademark, the figurative element will also be taken into account along with the word element.
– The essential element of the trademark is the word “Balans”, both because of the font size and the dominance it provides to it, and because it is a word element.
– “Denetim ve Mali Müşavirlik A.Ş.” words are subsidiary elements of the trademark.
Another element that will be taken into account when comparing trademarks, along with the considerations described above, is whether trademark also make a difference in terms of the overall impression before the consumer mass. For example, the prominent element in a trademark is a common name, but the elements/s of other words and forms contained in that trademark can have a completely different effect and perception with the effect of elements such as spelling style, the combination of these words, color and figure. In a decision granted by our Court of Cassation, this situation is stated as follows;
“It consists of the service mark (computer bild + figure) for which the plaintiff has applied for registration, the word computer is written horizontally, and a black table is created in a vertical form that constitutes a cross, and the word “Bild ” is written at the bottom of this table, creating an original figure in this color composition. In the trademark, the names “Computer Bild”, consisting of the words “computer” meaning computer and “bild” meaning picture, are one element, and the composition of the color and figure in question is another second element. (…) The element that constitutes a trademark is a word, letter, number, etc., which allows that trademark to be distinguished from other trademarks if the trademark contains an element rather than one, it is necessary to look for the essential element in the image that emphasizes the appearance and privilege that dominates the entire impression left by the trademark as a whole. The court examined the writing element consisting of two words without taking the figurative element in the trademark, and it was concluded that it was the essential element, citing that the word “Computer” was written slightly larger and bolder.” (Court of Cassation 11. CC 2000/7590 F.,2000/9528 D.,01.12.2000 D.)
In the above-mentioned decision, the Court of Cassation reverse the dismissal decision given by the court of first instance and ruled that the trademark requested for registration had acquired a distinctive character due to the element of the figure consisting of special figure, color and composition, as well as words. The image of the trademark subject to the decision may be found below;
– Because the word “Cute” in the trademark is larger and more dominant than other words, it is the essential element, but since the overall words that constitute the trademark is “Little Cute Things”, it would be appropriate to compare between trademarks based on both the word “Cute” and the overall words of “Little Cute Things”. The trademark also includes distinctiveness in terms of spelling style, color combination, figure and words as a whole.
– The essential elements of the trademark on the side are the figure and the letters RSG, but it contains distinctiveness as a whole in terms of the combination of colors, figures and words.
While creating the trademark in the context of the explanations above, it is vital to act with the awareness of which elements that will be included in this trademark are essential and which elements are subsidiary. Moreover, it is important that the trademark is designed in such a way that it can be separated as a whole in the face of similar trademarks, both before the consumer mass and in terms of the likelihood of confusion.
What Criteria Are Taken into Account When Determining the Identity, Indistinguishable Similarity and Similarity Between Trademarks?
According to Article 5-1/ç of the IP Law, it is not possible to register signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to goods and services of the identical type. In Article 6-1 of IP Law, it is stated that there should not be a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark, due to identity with, or similarity to, the earlier trademark and the identity or similarity of the goods or services covered, otherwise the application shall be refused upon opposition to be filed by related third party. Therefore, before the trademark registration application, it is important to conduct preliminary research and legal risk analysis, which is detailed below, as to whether there is an identical or indistinguishably similar trademark registered or applied for in the identical or the similar type of goods or services, regarding the trademark to be applied for and again, for the identical or similar goods or services, as to see if there is any prior trademark application or registration which may create a likelihood of confusion with the trademark to be applied for. When asked what criteria are to be applied in the comparison of a trademark that is thought or claimed to be identical or indistinguishably similar or similar to a trademark for which a trademark application will be filed or used in trade, the following criteria, taken from the Trademark Guideline and doctrine published by TPTO, are taken into consideration;
In Terms of Identity or Indistinguishable Similarity;;
Three elements should be evaluated when determining whether there is a possibility of identity or indistinguishable similarity between the two trademarks.
a) Trademarks being identical or indistinguishably similar,
b) The goods and services being identical or indistinguishably similar, and
c) In terms of identity, the perception of the trademarks as the same, identical, indistinguishable, exactly counterfeit, and in terms of indistinguishable similarity, the presence of a very close resemblance to the identical that will create the perception of the identical trademark.
“Average consumers of goods for which the brands compared should, without hesitation, perceive the two signs as nearly identical. If it is necessary to reach a conclusion by discussing the existence of the likelihood of confusion between the signs, this issue should now be examined among the relative reasons for refusal in accordance with Article 6/1 of the IP Law and on the opposition of the previous trademark owner. Because, as is often stated in the decisions of the Court of Cassation and the courts of first instance, the provision of IP Law 5/1(ç) should be interpreted and applied by the institution as narrowly as possible..”
According to the court of first instance decisions and case law of the Court of Cassation, the trademark subject to the application being identical with the trademark that was previously registered or applied for, mean that the signs compared are identical, undistinguished, exact counterfeit, exact or one-to-one copies. Trademarks with a small difference between them are not considered identical.. If the word elements of trademarks are identical, but the figurative element contained in at least one of the trademarks is different, the trademarks are not considered identical, it is passed on to the indistinguishable similarity examination
“The impact and impression on the average consumer as a whole are taken into account when determining whether trademarks containing common words are indistinguishable.”
In cases where the impression left by the application and the previous mark as a whole is sufficiently differentiated, the trademarks will not be considered indistinguishably similar.”
In Terms of Similarity (Likelihood of Confusion);
Three elements must be evaluated when determining whether there is a likelihood of confusion/ambiguity between the two trademarks.
a) Trademarks being identical or similar,
b) Goods and services being identical/similar, and
c) Likelihood of confusion of the consumers.
The basic principle in the similarity examination between trademarks is that a global (total) assessment is conducted by taking into account “all factors” together, based on the general impression left by both trademarks before the average consumer mass. Because a consumer with average attention and perception capacity often does not have the opportunity to compare trademarks by putting them side by side. This person compares trademarks to the extent that they are remembered and associated.” The global (total) evaluation should be conducted according to the “general impression” left by the trademarks in the relevant society, taking into account all factors, including whether there is visual, aural and conceptual similarity.”
Court of First Instance in a case; emphasized the importance of a totality approach with the statements that “a trademark should be evaluated in terms of whether it is distinctive in terms of the goods within the scope of registration, from the point of view of the target consumer mass, as well as the totality principle with discussing “visual, aural and conceptual” features of the essential elements of the trademark.”
What is a Trademark Preliminary Research Report and a Trademark Legal Risk Analysis, Why Must It Be Conducted Before Applying for Trademark Registration?
According to the IP Law and the national legislation of many other countries, before a trademark’s application for registration, it is necessary to determine whether it is identical, indistinguishably similar or similar with a trademark in terms of both the word/figurative element and the classes of goods and/or service subject to the application owned by third parties and previously registered or applied to be registered. Since a trademark application filed without a identity, indistinguishable similarity and similarity research causes both time and cost loss, our clients are required to conduct preliminary trademark research by consulting to a trademark attorney (also recommended to be a lawyer) before each trademark application, and if, the registrability of the trademark chosen as a result of this research is found to be risky and this does not allow drawing a reliable and predictable application strategy for the future, it is strongly recommended to request a legal risk analysis which is a more detailed research, from the same trademark attorney. There are many trademark databases and research programs, both private and official, in our country and around the world. Trademark database of TPTO is an official database and is available to everyone. Private trademark databases, on the other hand, are software-supported databases where more detailed searches can be conducted and these searches can be reported manually or automatically, generally subject to a monthly fee. Examination on whether there are identical, indistinguishably similar or similar trademarks belonging to third parties that have been previously applied or registered for the identical or similar good and/or service classes can be done through the TPTO database in order to get a preliminary idea -before the application- by the trademark owners who want to protect their trademarks at the national level. However, at this point, it is recommended to work with a trademark attorney, who is also a lawyer, if possible, in the preliminary research of the trademark, since it requires technical and legal understanding to have a clearer idea on the registrability risks before the application and to determine the accurate trademark application strategy. Likewise, while the foresight of the trademark owner, who does not have sufficient technical and legal understanding on such subject, as a result of such research, is that the trademark cannot be registered, the expert point of view of a trademark attorney during such research may lead to the opposite opinion of the trademark owner. Or while it can be concluded that there are no issues as a result of this type of research carried out personally by the trademark owner, it can be determined that there is a great risk with such application with the expert point of view of a trademark attorney during such research.Based on our 23 years of trademark attorney experience, we would like to state that; since the awareness of creating the right trademark is not sufficiently established in our society, necessary importance is not given to the creation of trademark and the application strategy to be followed, which are seen only as the choice of a word or logo that should simply promote the product or service and some application procedures are carried out by trademark applicants who do not have any legal and/or technical knowledge on the subject without resorting to any professional support. Accordingly, the signs chosen due to the wrong application strategies pursued by the trademark applicants are born to be face with the registration obstacle from the beginning, and the legal issues inevitably arising from this may prevent the chosen signs from being registered as a trademark at the end of the day, and even if it is registered, the applicant may suffer unexpected damages later on, the former trademark owner may take civil and criminal actions against the owner and/or the owner may face with high compensations claimed by third parties. For this reason, we strongly recommend that trademark applications should be filed with the professional assistance of trademark attorneys who are lawyers and experts in their fields.
Who Is the Trademark Attorney, What Are His/Her Duties?
Contrary to the popular belief in practice, the trademark attorney is not a person who is solely responsible for carrying out registration proceedings before the TPTO of the trademark presented by the applicant and have the technical and legal understanding required for such service. To interpret trademark attorney practice in such a way means looking at the profession from a very narrow perspective, unfortunately, the perception of the majority of the society on trademark attorneys cannot go beyond this. Yes, among the duties of the trademark attorney is to carry out the trademark registration process of the client by proxy on his behalf, but the attorney must also be responsible for preparing and implementing an accurate trademark application strategy-including the process of creating a strong trademark. As it can be understood from the answer we gave to the above question of “What Should Be Considered While Creating a Brand?”, it is essential that a strong trademark application strategy is created in coordination with the trademark owner, visual trademark identity expert and trademark attorney, who should all act in cooperation with each other from the beginning of the process. At this point, the trademark attorney should accurately inform his/her client on the paths and processes to be followed from the beginning, should obtain information on the trademark history of the trademark owner, if there is no trademark history, after listening to the owner on which good and/or service class the owner is intended to use the trademark on, the trademark attorney should guide the owner in the most accurate way to choose goods and/or services that will not cause confusion with the possible similar trademarks. This orientation will be shaped by choosing the correct class. The trademark attorney should make the necessary explanations to his client about the importance of the trademark preliminary research before the application, should inform the client about the risks that the trademark application may face during the preliminary research to be carried out with the instruction of the client, should direct the client to the legal risk analysis, which is a more comprehensive similarity research if a clear deduction cannot be made regarding the registrability of the trademark from the results of the preliminary research. The trademark attorney should make the application in line with the application criteria and strategy determined together with the client and follow the whole process with great care and attention from the beginning to the end. The trademark attorney should inform the client in a timely manner about the developments in the process and meet the final terms for the actions (response to the opposition, objection etc.) to be performed by the client’s instructions. In the end, the trademark attorney should pay the fees related to all these proceedings on time and deliver the trademark registration certificate to the client at the end of the proceedings. The fact that our country has strong trademarks depends on the work of natural and legal persons, visual trademark identity experts and trademark attorneys as a team who are conscious of this issue in harmony with the “consciousness of being us”.
Is There a Registration Requirement to Benefit from Trademark Protection?
In order to benefit from trademark protection, registration is not essential, but registration of the trademark is required in order to benefit from the rights granted to the trademark owner by the IP Law. Otherwise, the unregistered trademark is protected according to the unfair competition provisions of the TCC, in addition to the exceptional protection offered by the rights stipulated in Articles 6/3 and 25 of the IP Law, but this protection is more limited than the protection provided by the IP Law. For this reason, it is recommended that trademark owners register their trademarks.
How And Where to Apply For Trademark Registration?
Trademark registration applications are filed before TPTO, based in Ankara, through the “Electronic Application System” (EPATS) via the official website. Access to this system can be carried out via E-Government password, mobile signature, electronic signature, R.T. (electronic) ID card or Internet Banking. While the trademark application can be filed by the applicant personally it can also be filed by a trademark attorney. However, as mentioned above clearly, although the trademark owner can also apply for a trademark registration, since processes such as choosing the right trademark and class, determining the legal risks of the trademark to be registered, registration obstacles, detailed similarity research and in case of opposing to the refusal decision given by the authority or responding to an opposition filed by a third party, appealing or responding within the deadline requires legal knowledge and experience, it is recommended that trademark applications must be filed by a legal trademark attorney who is also preferably a lawyer.
How To Determine in Which Goods or Services (Classes) the Trademark Application Should Be Registered?
Before applying for a national trademark in our country, it is extremely important to determine for which goods or services the trademark to be applied for will be used. In this determination, The COMMUNIQUÉ ON THE CLASSIFICATION OF GOODS AND SERVICES REGARDING TRADEMARK REGISTRATION APPLICATIONS, which was published in the Official Gazette dated 30.12.2016 by TPTO and which is based on the International Nice Agreement on the Classification of Trademarks (shortly, “Nice Agreement”). This communique consists of a total of 45 classes containing goods and services, and the first 34 of these classes are related to goods, and 35 and continuation are related to services. Each class is divided into separate good or service groups, which are referred to as “subclass”. An application can be filed for a whole class, as well as for subclasses or specified goods in that class. For example, the goods and good groups (subclasses) covered by the 16th class are;
Paper, cardboard (cardboard); packaging and wrapping materials made of paper or cardboard, cardboard boxes; disposable products made of paper (except stationery items): paper towels, toilet paper, paper napkins.
Packaging and wrapping materials made of plastic material.
Printing and binding materials.
- Printed publications, printed documents: books, magazines, newspapers, invoices, waybills, income receipts, calendars, posters, photographs, banners, paintings, stickers, stamps.
- Stationery, office, education, writing, drawing, painting and materials for artists (excluding furniture and devices): stationery paper products, glues, pens, erasers, stationery tapes, cardboard for crafts, writing papers, copy papers, cash register paper rolls, drawing instruments, chalkboards, painting paints.
- Office machines.
- Brushes and rolls for whitewashing and painting works.”
The person who will apply for a trademark in Class 16 can apply for goods or services in the whole class, or for all the goods or services in only one goods group (subclass), or a good and/or goods consisting of the products and/or services that applicant has chosen in the 16th class. If there is a specific good or service that may be included in the class content but not mentioned in the communiqué, that good or service may also be specified while making the application. Whether the goods or service in question will actually be evaluated in subject class or not is decided by the trademark experts at TPTO who examine the application ex officio.
The last subclass of Class 35, which is the first class of the service classes, is related to the bringing together of various goods (wholesale or retail sale in a physical or virtual environment), and while applying for a trademark under this class, it needs to be specified -in particular- which goods -the ones before the Class 35 – will be brought together and served;
Class 35 (Final Subclass):
Services for bringing together ……………… (bNames of the specific goods should be written) enabling customers to conveniently view and purchase those goods (specified services may be provided by retail stores, wholesale outlets, catalogues or by means of electronic media and other similar methods).
The issue in which classes a trademark will be requested to be registered is important, and it is recommended to be determined by the joint decision of the trademark applicant and the trademark attorney since the preliminary research and legal risk analysis of the trademark, which is planned to be applied, will be carried out through the specified classes.
What Are the Fees Requested By TPTO in the Trademark Registration Application?
Three different types of fees are requested by TPTO in trademark applications. One of them is the trademark application fee in one class. As the name implies, it is the fee charged if the trademark application is filed for a single class. If the trademark application covers more than one class, an additional class fee is charged in addition to such fee. For example, if the single-class trademark application fee is 280.-TL, the fee for an application to be filed in 5 classes (including the application fee for one class and additional class fees) will be 5 x 280.-TL = 1.400.-TL. Another fee requested by TPTO is the trademark registration fee which will be requested upon the finalization of the trademark application at the end of the proceedings. At the end of the process, this fee is requested by TPTO from the applicant with the letter “Registration Deficiency” or from the attorney if the application is filed with a PoA. The Trademark Application Fee and Additional Class Fees for a Single Class are requested by the Institution at the beginning of the process, and the Trademark Registration Fee at the end of the process. For this reason, trademark applicants should be aware of the fees to be paid to the Office is not only limited to the application fees, but they will also be responsible for the registration fee at the end of the process.
What Are the Stages of the Trademark Registration Application Process?
After the trademark application is filed, there is an ex-officio (self-conducted) examination conducted by TPTO -through the trademark experts working at TPTO-, it is examined whether there is a formal deficiency in the application and whether the identical or indistinguishably similar of the trademark subject to the application was previously registered or applied to be registered in the same classes. If there is no registration obstacle is found as a result of such examination, it is decided to publish the trademark application in the official trademark bulletin. The trademark remains suspended for two months and is opened to the opposition of the relevant third parties. During this time, the relevant third person may oppose with the claim that the application is identical or similar or indistinguishably similar with the trademark with a prior registration or application of the third person for the identical or similar goods and/or services and there is a likelihood of confusion between the trademarks accordingly with reference to the Articles 5 and 6 of the IP Law and on other grounds. If there is no opposition against the trademark application within the two-month suspension period, the trademark application is finalized and TPTO sends the letter referred to as “Registration Deficiency” in practice to the trademark owner or, if the application is filed through a trademark attorney, to the trademark attorney with the request of depositing the trademark registration fee within two months. If the trademark registration fee is paid within the aforementioned period, the trademark registration certificate is prepared by TPTO virtually and sent to the trademark applicant or, if the application is filed through a trademark attorney, to the trademark attorney.
If the TPTO rejects the application upon its ex officio examination or upon the request for opposition filed by the third party, the trademark owner has the right to appeal this decision of the TPMK within 2 months from the notification of the decision. If the Trademarks Department, which has granted the refusal decision, does not accept the appeal, the issue comes before the Re-examination and Evaluation Board, which is the last decision maker, and the administratively final decision granted by this board is subject to judicial review. Against the Board’s decisions, within 2 months from the notification, a “cancellation action for the refusal of the opposition” can be filed before the authorized and competent Ankara Civil Courts of Intellectual and Industrial Rights.
After the opposition to the publication of the trademark, TPTO notifies the trademark owner or his attorney of the opposition in a letter, within 1 month from the notification, the trademark is entitled to submit a response based on “Non-Use Defense” (also known as Non-Use Plea) against the opposition and the opposing party, on the grounds that the subject trademark is not being genuinely used for 5 years prior to the opposition for the related goods and services by the opposing party. If the “Usage Defense” is not claimed by the trademark owner within a period of 1 month, the trademark owner cannot benefit from this right again in the administrative proceedings. For this reason, it is important to pay attention to the deadline of rights related to the “Non-use Defense” that the trademark owner is entitled to in case of an opposition.
What Does the Principle of Territoriality Mean In Trademark Protection?
The “Principle of Territoriality” is applied in trademark protection, as in other types of industrial rights. Accordingly, the protection area of a trademark registered before the TPTO is the borders of our country. The fact that a trademark is registered and protected in our country does not mean that it will also be protected abroad. The only exception to this is well-known trademarks, and for a trademark protected in Turkey also to be protected in another country or countries, either a national application must be filed in that country or countries, or international or regional application procedures such as Madrid or European Union application must be carried out.
What Does a Well-Known Trademark Mean, How Is It Different From Other Trademarks?
A clear definition of the well-known trademark has not been made in IP Law. The reason for this is that the concept of a well-known trademark differs in each case and there is a possibility of not complying with the predetermined criteria. The definition of the well-known mark concept is therefore often made in Court of Cassation’s case law, and rather in doctrine. A well-known trademark in a decision of the 11th Civil Chamber of the Court of Cassation;
“It is defined as “It is possible to describe as a strict commitment to a person or enterprise, assurance, quality, advertising power, consumer connected to a widespread distribution network and without distinction of other subjective interests and relationships, a connotation that emerges as a reflex by people in the same environment regardless of the geographical border, culture, age.” (Decision of 11th Civil Chamber of the Court of Cassation dated 25.02.2007, numbered 2006/10222 and 2007/13328.) Prof.Dr.Hamdi Yasaman stated that, “not the trademarks that are well-known in one or more regions of a country, but trademarks that are known by the relevant communities in the country and abroad, even if not worldwide; trademarks belonging to a citizen of one of the member states of the Paris Convention or to persons residing in one of those countries or owning a commercial or industrial enterprise in those countries” will be understood when referred to trademarks”
According to the Article 6/4 of IP Law, it has been regulated that “well-known trademarks according to Article 6 bis 1 of the Paris Convention, which are not authorized by their owners” cannot be registered. Article 6 bis 1 of the Paris Convention referred to in the aforementioned article of the IP Law is as follows; “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, … cancel the registration, and to prohibit the use of a trademark which is considered to be owned by a person entitled to benefit from this contract by the competent authority of the country where the registration is granted and is generally known to be used for the identical or similar goods in a way to constitute a confusion…” Thus, unlike other trademarks, an exception was made to the principle of territoriality with well-known trademark protection, and it was ensured that the protection was also taken under protection in other countries where the protection was requested for the member states of the Paris Convention.
In this respect, in order for a trademark to be considered well-known by evaluating each event in its own unique circumstances, it must first have a higher level of recognition in the country of origin, in the relevant sector, than the distinctiveness and recognition of a normal trademark. In other words, the well-known trademark must first have reached the level of recognition in the relevant part of the society (in the relevant sector) in the country of origin. The relevant sector consists of the real or potential consumers of the goods or services in which the trademark is used, the business circles in this field and the officials in the distribution channels of the goods or services where the brand will be used. On the other hand, paragraph 2 of Article 16 of TRIPs emphasizes that it is sufficient for a service or trademark to be well-known in the relevant sector of the society. Thanks to this provision of TRIPs, it has been clarified that the well-known trademark will be protected in terms of the identical or similar classes not only in terms of goods but also in terms of services. In the recommendation decision taken by WIPO (“World Intellectual Property Organization”) dated 29.09.1999, it is stated that the trademark being known in the relevant sector will be sufficient for its recognition as a well-known trademark. In accordance with Articles 2/2-(a) and (b) of WIPO’s aforementioned recommendation decision, the trademark being known in one of these circles is sufficient for the recognition of a trademark as a well-known trademark. For example, in term of Article 6/4 of the IP Law, the fact that the trademark used by a tire manufacturer company in its products has become a well-known and highly recognized brand in the relevant sector (i.e. in the tire industry) is sufficient for it to benefit from well-known trademark protection. It is not necessary for the said car tire mark to be known by the whiteware goods consumer mass. Nevertheless, in the recommendation decision of WIPO dated 29.09.1999, it is stated that it is not necessary for a trademark to be registered or used in the country where the protection is requested in order to be protected as a well-known trademark. In addition, if a trademark is well-known in the covenant state in at least one of the relevant sectors of society, it is accepted that the mark is considered a “well-known trademark”, and if it is only known, whether it will be considered a well-known trademark remains at the discretion of the relevant covenant state.
As a result, with reference to Article 6/4 of the IP Law, according to Article 6 bis 1 of the Paris Convention, in the country of origin, in the relevant sector, it is possible that the owner of a trademark that is considered well-known -who is entitled to benefit from the provisions of the Paris Convention-
To prevent registration or usage of an identical or similar trademark
For identical or similar goods or services in another member state of the Paris Convention even though it is not registered or used in one of the member states of the Paris Convention.
Is it possible to protect the well-known trademark of the trademark owner who is residing abroad that is unregistered or non-used or both in our country, even if it is not known at all in its relevant sector in our country under Article 6/4 of the IP Law? There are two different views on this issue. According to one opinion, if a well-known trademark is well-known in its relevant sector in its origin country, it is possible to be protected even if the trademark owner has not sold any products or provided any services under the subject trademark or the subject trademark is not known in the relevant sector in Turkey. According to another opinion, apart from the well-known trademark being well-known in the relevant sector in its own country, it should at least be known to the relevant consumer mass (sector) in Turkey where protection is requested. It is not possible for a trademark that is not registered and used in our country, even if it is well-known abroad, to benefit from the protection of a well-known trademark if it is not at least well-known or recognized in the relevant sector, and it is not possible to be held responsible because the consumer mass in Turkey does not know the well-known trademark. There is no Court of Cassation case law that clarifies this issue.
Another provision regarding well-known trademark protection in the IP Law is Article 6/5. In accordance with Article 6/5 of IP Law, in cases where an unfair advantage may be gained, the reputation of the trademark may be damaged or the distinctive character of the trademark may be damaged due to the well-known status reached in Turkey by a registered or previously applied to be registered trademark application of an identical or similar trademark will be rejected upon the objection of the owner of an earlier trademark, regardless of whether the application is filed for the identical, similar or different goods or services, provided that it is based on a justified reason, and may be cancelled if the earlier trademark has already been registered in Turkey.
Thereafter, according to Article 6/5 of the IP Law, the owner of a trademark which is considered to be well-known due to the “well-known status achieved in Turkey”; may prevent the registration or usage of;
An identical or similar trademark
For the identical or different goods and services
When an unfair advantage may be gained, or,
The reputation of the trademark may be damaged, or,
The distinctive character of the trademark may be damaged
Provided that the trademark is registered in Turkey.
The term “well-known status reached in Turkey” in the text of the article means “the degree of recognition of the well-known brand, the quality and the image of trust, even if the trademark is used in very different classes, it will still lead to the opinion that it comes from the owner of the well-known brand””
One of the innovations brought by the IP Law is that TPTO excluded the well-known trademark from the absolute grounds for refusal ex-officio (on its own motion) and included it in the relative grounds for refusal. In other words, if a trademark that has been published is claimed to be a well-known trademark belonging to another third party, the party making this claim must file an opposition, TPTO does not have to take into account ex officio whether the trademark in question is well-known or not. TPTO, especially in accordance with Article 6/5 of IP Law, takes into account an assessment following the below order when examining oppositions based on well known-status claim:
a) Whether the trademark, which the opposition is based upon and claimed to be well-known, has been registered or applied to be registered in Turkey prior to the opposed application,
b) Whether the opposed application and the trademark which is the ground for the opposition is similar to extent that it causes a likelihood of confusion including the likelihood of association,
c) Whether the trademark which is the ground for the opposition is well-known in Turkey,
d) Whether an unfair advantage will be gained due to the well-known status,
e) Whether it will damage the trademark’s reputation,
f) Whether it damages the distinctive character of the trademark.
If any of the first three conditions listed here are not met, there is no need to make an evaluation for the following steps. On the other hand, if the first three conditions are met, the existence of any of the last three conditions will be considered sufficient.
However, it cannot be concluded that due to the use of each different goods and services, an unfair advantage from the recognition of the mark will be gained, the reputation of the well-known mark will be damaged, or its distinguishing quality will be damaged. According to the qualification of the current event, these conditions must be proven by the claiming party.
The information or documents listed below stand out as the information and documents that are frequently used and can be used in proving well-known status of a trademark.
Information or documents about the usage of the trademark,
Information or documents related to advertising and promotion of the trademark,
Court or TPTO decisions regarding well-known status of the trademark,
Activities carried out by the trademark owner in order to protect its trademark,
Survey studies conducted regarding well-known status of the trademark,
Market share and sales figures of the trademark,
Information regarding trademark owner (number of branches, distribution channels),
Publications in the media outlets such as newspapers, magazines, TV, etc. related to the trademark,
The “Committee of Well-Known Trademarks Experts”, which was formed within the body of WIPO in 1995, explained its studies on determining the well-known status with the “Joint Recommendation Decision” taken at the meeting held on the date of September 20-29, 1999, and they have put forward the criteria to be taken into account in determining the well-known status of a trademark in a form of suggestion. The criteria subject to the matter are frequently taken into account in the Court of Cassation’s case law. The mentioned criteria are as follows;
The degree of well-known status or recognition of the trademark in question in the relevant sector among the public,
The duration, degree, and geographical region of the usage of the trademark,
The duration, degree, and geographical region of the promotions, advertisements, and presentations at fairs or exhibitions, regarding products or services to which the trademark is applied,
The duration and geographical region of other registrations and/or registration applications that affect the well-known status or usage of the trademark,
Documents of material protection of the trademark and in particular the degree of recognition of the trademark as a well-known trademark by the governmental or judicial authorities of the party countries,
The economic value of the trademark.
In addition, TPTO (then called as “Turkish Patent Institute”) published the “Communiqué on the Principles and Practice Regarding Degree of Well-Known Status of the Trademarks” in 2006 and stated that the general well-known status degree reached by the trademark shall be evaluated within the framework of the 18 criteria below;
1. The duration of registration and usage of the trademark (detailed information about the history of the trademark),
2. The geographical area and scope over which the registration and usage of the trademark have spread. (What are domestic and foreign registrations?)
3. What is the prevalence, market share, annual sales amount of the goods and/or services on which the trademark is used?
4. What are the characteristics of promotional activities (especially promotional activities in Turkey) related to the trademark? (The duration and regularity of the promotion, the geographical area in which the promotion has spread, the scope of the promotion, the money spent on the promotion, the qualification of the promotion (TV advertisement, local newspaper advertisement, publicity made only for parents, etc.)
5. Are there any activities that are not in the qualification of advertisement, however, that can be beneficial for the promotion of the trademark? (Publications in media outlets such as newspapers, magazines, TV, etc., display of products bearing the trademark at fairs, etc.)
6. Is there a court decision indicating the well-known status of the trademark or what are the material efforts of the trademark owner in order to protect the brand? (Court decisions, other than the well-known status decision, still ongoing trademark, unfair competition litigations, number of objections, etc.)
7. What is the extent of the trademark’s authenticity and what is the distinguishing qualification of the trademark?
8. Public opinion surveys regarding trademark’s well-known status, and their results, if any.
9. Characteristics regarding trademark owner company (the size of the company, number of employees, paid-up capital, turnover, profit, domestic and foreign distribution channels: branches, dealerships, service network, taxes paid, export amounts, market dominance, etc.),
10. Does the trademark identify with the good or service on which it is used? Does the trademark reflexively evoke a certain product as soon as it is seen in form of a word or a figure? Does the trademark indicate a certain quality or status in relation to the goods or services on which it is used?
11. Are there any certificates and awards (quality certificates such as TSE, TSEK, ISO, etc., quality award, environmental award, blue flag, etc.) regarding the product bearing the trademark or the trademark owner company?
12. What are the distribution channels of the products bearing the trademark (other than the distribution channels of the trademark owner of the company) and what are the import and export opportunities of said products?
13. If the trademark has been subject to a sale and/or appraisal, what is the monetary value of the brand? Is the monetary value of the trademark shown in the annual balance sheet of the trademark owner?
14. What is the extend of the portfolio of goods and/or services covered by trademark registrations? (Example: a registered trademark for “sodas” only or a registration that includes all electronic goods.)
15. If the trademark is a publicly well-known trademark for how long does it maintain this well-known status?
16. Due to the well-known status of the trademark, are there acts of infringement against this qualification? Is the mark being counterfeited by third parties? (Density of applications similar to the trademark, whether the trademark is unfairly used by third parties in the market, etc.). If the trademark is being used by third parties, does this usage damage the well-known trademark owner in terms of its shape and the geographical and commercial area over which it has spread?
17. Is the trademark vulnerable or not regarding infringement in terms of the qualification of the goods or services on which it is used (Example: car trademark and bubble gum trademark) or in terms of qualification of its potential and actual user group (a product trademark for doctors and a product trademark for children)?
18. All kinds of documents are devoted to proving the above or proving that trademark is well-known.
Is Protection of the Trademark in Other Countries Possible? What Is an International Application, How Is It Filed?
A trademark is protected only within the borders of the country in which it is registered, and if it is desired for the trademark to be protected outside the borders of the country, it is necessary to apply for a regional or international trademark. For this, international agreements have been executed among countries that allow the application to be filed before a central office, and the opportunity to make a trademark application in more than one country with a single application and thus to register has been granted by doing so, as it is both more difficult and more expensive to work with local trademark attorneys in each country and to make applications in this way. One of these agreements is the “Madrid Protocol” and our country is a member of this protocol. According to this protocol, a natural or legal person who has a trademark application or registration in one of the member countries of this protocol can apply for an international trademark at WIPO through the trademark and patent institution of the country where the initial application is filed, or the registration is granted. After the trademark application or trademark registration is made in our country, it is possible to apply for an international trademark through TPTO (after preparing the relevant documents and paying the fee to be paid to TPTO in this regard). Although an international trademark application is a more expensive process than a national trademark application filed in Turkey, it is much cheaper than the local applications to be filed individually in each of the selected country offices, and the application fees are requested in Swiss Francs. In order to avoid unnecessary loss of time and expense in the international trademark application, the countries where the trademark is desired to be registered should be determined jointly by the trademark owner and the trademark attorney with a strategic approach, -by taking into account the products and/or services where the trademark will be used-, and accordingly, the possible total fee to be paid should be calculated in advance and a comprehensive preliminary research/a legal risk analysis should definitely be conducted on whether it is possible to register the trademark for the desired products and/or services in the countries where registration is requested. This analysis requires a much more careful and time-consuming examination compared to the preliminary investigation/legal risk analysis to be done at a national application stage. Because separate investigations are being carried out in the national trademark databases of all countries selected by the trademark owner and WIPO’s database. For this reason, it would be more accurate to make an international application through jurist trademark attorneys who have knowledge and experience in this regard, if possible.
The international application is filed to WIPO through TPTO, after conducting an examination on whether there is a formal deficiency in the application, if TPTO does not find any deficiency, they send the international application to the trademark and patent offices of the countries where the registration of the trademark is requested. Applications are evaluated separately on the basis of countries. Country offices can accept and register the application without any problems, or they can reject it ex officio or upon the opposition. In this case, it is necessary to work with a trademark attorney residing in that country in order to oppose the decision, since the Turkish attorney who makes the national application or even the international application in Turkey does not have the right and authority to take action before the trademark and patent offices abroad.
On occasion, the country offices give temporary refusal decisions about the application, by doing so, correction of a deficiency or mistake in the international application according to the legislation of that country by the trademark applicant is aimed, within the period to be given. For example, a country office may issue a temporary refusal decision in order to narrow the scope of a class that they deem too broad, to be clarified by the applicant within the time allowed. It is necessary to respond and take action through a representative residing in that country also against the aforementioned refusal decision.
The international application is subject to the trademark application filed in our country for a period of 5 years, therefore, the refusal of the trademark application in our country also means the refusal of the international application. For this reason, it would be more strategically correct to resort to international applications after the finalization of the trademark application filed in Turkey in order to not waste time and money. If the international registration procedure is applied after the trademark is registered in Turkey, the international application is not dependent on the local application for any period of time, unlike the trademark in the application process, since the trademark is registered in Turkey. In countries where registration of international trademark applications is requested, the registration process can take up to 18 months to complete. The developments in the process are reported to the trademark applicant or if the application is followed by the attorney, to the trademark attorney in intervals by WIPO.
On the other hand, in terms of the European Union countries that are members of the Madrid Protocol, let us state that, as of 2007, the European Union has also joined the Madrid Protocol. Therefore, within the scope of the Madrid Protocol, at the international application process, instead of individually selecting the EU countries -which are also members of this protocol-, protection can be requested in all countries that are members of the community with a single application to be filed as a “Community Trademark”. Or, due to the handicap we have mentioned in the next paragraph, it may be preferable to make an independent and separate selection to be designated by the applicant for each EU country within the scope of the aforementioned protocol.
For the registration of the Community Trademark within the scope of the Madrid Protocol, the trademark in an application must be registerable in all countries included in the Community. Since the applications filed are examined separately in all EU countries, if there is a situation that prevents registration even in a single country included in the Community, it is not possible to obtain a Community Trademark within the scope of the aforementioned protocol. This is an important handicap arising from the selection of the Community Trademark within the scope of the Madrid Protocol. In order to overcome this handicap, our recommendation would be to make a comparison among the cost of the selection of the Community Trademark within the scope of the aforementioned protocol and the application cost of individually designated EU countries and to make a choice that will minimize the cumulative risk that may occur by taking into account the number of EU countries selected and their importance for the applicant.
What is the Duration of the Trademark Owner’s Right to Benefit from the Trademark?
Trademark registration provides 10-year protection to the trademark owner, starting from the date of application, pursuant to the registration of the trademark at the TPTO, and this duration can be extended for another 10 years, provided that it is renewed every 10 years. The renewal process is completed by depositing the renewal fee on time by the trademark owner. The renewal period commences 6 months before the deadline, which corresponds to 10 years after the application date. It is possible to renew the trademarks that are not renewed within this period, by making use of the delayed renewal procedure within 6 months after the completion of the renewal period, but in this case a fee equal to twice the normal renewal fee must be paid.
Does the Trademark Owner Have an Obligation to Use the Trademark After Registration? If the Owner Doesn’t Use the Trademark, Does This Circumstance Constitute a Problem?
The trademark owner must use the trademark in a genuine and continuous manner in the products and/or services that the trademark owner has registered within 5 years after the date of registration. In this sense, if the owner of the trademark has started to use the trademark from the date of registration, but has stopped using the trademark at some point, and has not used his trademark in a genuine and continuous manner for 5 years -without a justified reason- as of this date, the trademark owner shall be deemed to have acted against the obligation to use it. Regarding such circumstance, in case of a third-party application for trademark registration of the identical, indistinguishably similar or similar trademark in the classes that Trademark Owner does not use, within the opposition to be filed against the publication of this application in accordance with Article 6/1 of the IP Law, when the applicant puts forward a “Non-Use Defence” in terms of the trademark(s) subject to the opposition (with an expiration date of 5 years), if the trademark owner cannot prove that the trademark has been used by the owner in a genuine manner or that owner’s non-use is based on a just cause, opposition to such publication shall not be taken into account and trademark owner shall have to consent to the use of another third party’s trademark by registration of the same, indistinguishably similar or similar trademark in terms of the classes in which the trademark is not used. The same situation may occur in an infringement case to be filed by the trademark owner according to Article 6/1 of the IP Law against a third party with the claim that the disputed trademarks are the identical or similar. When such infringement litigation is filed, the defendant party may demand proof that the plaintiff has used the trademark(s) on which the plaintiff has constructed the subject of the infringement claim (in the goods and/or services subject to the dispute) in a genuine manner for 5 years preceding the date of the litigation. If the plaintiff (Trademark owner) cannot prove this usage, the infringement case plaintiff has filed shall be rejected in terms of the trademark/s that the plaintiff cannot prove that plaintiff has used. For this reason, trademark owners are recommended to create a usage file for each trademark by deliberately collecting and filing certain historical documents (Brochures, calendars, catalogues, magazines, fair participation certificates, newspaper reports, invoices, etc.) bearing their trademarks from the date of registration, in order to adequately fend off such oppositions that may arise in the future).
By the way, we should mention that in the oppositions filed within the scope of the fifth paragraph of Article 6 of the IP law with the claim of identity or similarity to a well-known trademark, the applicants cannot claim that the well-known trademarks are not being used as the reason for the opposition. On the other hand, the claim of non-use cannot be asserted as a defense in terms of refusal or partial refusal decisions granted by TPTO within the scope of subparagraph 5/1(ç), on the grounds of a trademark which is the subject of the application is the IDENTICAL OR INDISTINGUISHABLY SIMILAR to the trademark registered in relation to the identical or the same type of goods or services or for which the registration application was filed earlier. In this context, the applicant’s claim regarding the non-use of the trademark or trademarks that justifies the refusal or partial refusal decision within the scope of subparagraph 5/1(ç) is not taken into account in the opposition review. This rule also applies to infringement litigations filed by the trademark owner against third parties.
What Are the Rights of the Trademark Owner?
The trademark owner has the right to use the trademark registered in the form it has been registered in the products and/or services in the classes in which it has been registered. In addition, the trademark owner has the right and authority to take legal actions limiting the rights such as license, pledge, transfer on its trademark, and to show the trademark as collateral. In addition, the trademark owner (if done without permission) has the right to request the prevention of the following acts (Article 7/2 of IP Law):
a) The use of any sign that is identical as the registered trademark in the goods or services covered by the registration.
b) The use of any sign that is identical or similar to the registered trademark and covers the identical or similar goods or services as the goods or services covered by the registered trademark and therefore any sign that is likely to be confused by the public, including the likelihood of confusion with a registered trademark.
c) Regardless of whether they are in the identical, similar, or different goods or services, the use of any sign, without a just cause, which is identical or similar to the registered trademark and which will gain an unfair advantage from the reputation of the trademark due to the well-known status the trademark has reached in Turkey or which is in the qualification of damaging trademark’s reputation or distinctive character.
Again, in addition to the rights mentioned above, the trademark owner has also the right to prohibit the actions listed below based on the basis of the owner’s trademark right, provided that the trademark (sign) is used in the commercial area (Article 7/3 of IP Law);
a) Placing the sign on the goods or packaging.
b) Placing goods bearing the sign on the market, offering that they can be delivered, stocking them for these purposes, or providing or offering to provide services under the sign.
c) Import or export of goods bearing the sign.
ç) The use of the sign and the enterprise in business documents and advertisements.
d) The use of the identical or similar sign in a domain name, router code, keyword, or similar format to create a commercial impact on the Internet, provided that the person using the sign has no right or legitimate connection to the use of the sign.
e) The use of the sign as a trade title or business name.
f) The use of the sign in comparative advertising in a manner that is not in accordance with the law.
Can a Registered Trademark be Cancelled or Invalidated?
It is possible for a trademark to be cancelled (annulled) after it has been registered. If the trademark has been registered in violation of the provisions specified in Articles 5 and 6 of the IP Law, (for example, if it has no distinctive feature or if it has a feature that indicates the type, variety, characteristic, quality, quantity, purpose, value, a geographical source in the commercial area, or if it has the likelihood of confusion with another trademark in the identical or similar classes, etc.) the cancellation of this trademark may be requested through the court. Those who have an interest, Public Prosecutors, or relevant public institutions and organizations can ask the court for the cancellation of the trademark. A trademark invalidity action is filed against the persons registered as the trademark owner or their legal successors on the date of the litigation. TPTO is not referred to as a party in trademark cancellation litigations. If the invalidity cases are related to a part of the goods or services for which the trademark is registered, only partial cancellation in terms of that good or service is decided. An invalidity decision cannot be granted in a way that changes the trademark itself.
If the trademark owner knows or should have known that a later-dated trademark has been used, but has remained silent for five consecutive years, the trademark cannot be claimed as a ground for invalidity unless the trademark registration with the subsequent date is deemed to be in bad faith. During the trademark registration process, the defence of non-use, which may be asserted by the trademark applicant (in accordance with Article 6/1 of the IP Law), within the 1-month period pursuant to the opposition to the publication, may also be asserted against the plaintiff by the defendant of the invalidity action. In this case, the date of the litigation is based on determining the five-year period for use. If the plaintiff’s trademark has been registered for at least five years on the application or priority date of the trademark requested to be cancelled, and if the defendant has also put forward a defence of non-use in terms of certain products and/or services by the plaintiff on the said application or priority date, the plaintiff has to submit the evidence proving that he has used his trademark in a genuine manner in terms of the products and/or services in question within the 5 years before the date of the litigation, within the period granted to the plaintiff by the Court. If the plaintiff fails to do so, the invalidity action of which plaintiff has filed shall be rejected before proceeding to the merits (IP Law art. 25). It is not possible for the defendant to make a defense based on non-use in terms of grounds for invalidity (For example, in an invalidity action that has been substituted for a well-known trademark pursuant to Article 6/5 of the IP Law) other than the likelihood of confusion among the trademarks pursuant to article 6/1 of the IP Law. (IP Law art. 25).
It is also possible to request the cancellation of the trademark after registration. According to this, the grounds for cancellation being that;
a) Pursuant to the conditions in Article 9 of the IP Law, in terms of the products and services for which the trademark is registered, failure of usage of the trademark in a genuine manner by the trademark owner, within a period of 5 years from the date of registration or for 5 years without interruption,
b) The trademark becoming a common name for the goods or services for which it is registered, as a result of the actions of the trademark owner or failure to take the requisite measures.
c) Misleading of the public regarding qualification, quality or geographical origin of the registered goods or services, as a result of the usage carried out by the trademark owner, or the usage carried out with the permission of the trademark owner.
ç) Any usage contrary to the technical specifications of the guarantee mark or the common mark.
Trademark cancellation requests are filed against the persons registered as trademark owners or their legal successors on the date of the request. In accordance with the provision of the law, the persons concerned can request the cancellation of a trademark with the above-mentioned conditions from TPTO, however, the situation in current practice is that the cancellation request can be requested from the competent and authorized courts whereas a 7-year transition period has been projected for TPTO to be eligible for the necessary competence to decide upon cancellation actions, starting from 17.01.2017, which is the effective date of the IP Law. The Institution shall be able to review cancellation requests as of 17.01.2024.
In case the cancellation of the trademark is decided, this decision is effective from the date of the trademark application, and the protection provided to the trademark by law is deemed to have never been arisen. In case of a decision of cancellation of the trademark, this decision is effective from the date the cancellation request is submitted to the Institution. However, upon request, if the cancellation cases arose on an earlier date, it may be decided that the cancellation decision be effective as of this date. Without prejudice to the indemnification claims for damages caused by the gross negligence or bad faith of the trademark owner, the retroactive effects of the invalidity decisions do not affect the following situations:
a) Final and implemented decisions in the litigation proceeding filed for infringement of the rights provided by the trademark before the invalidity decision.
b) Agreements established and implemented before the invalidity decision. (Article 27 of IP Law)
Is It Possible to Register a Trademark in Bad Faith? What Legal Actions Can the Trademark Owner Take Against Registration in Bad Faith?
“According to the generally accepted understanding in trademark law, applications and registrations with the purposes of gaining an unfair advantage from someone else’s trademark by misusing the trademark protection provided by registration contracting to its purpose, backing up the brand and not actually using it, trading trademarks, preventing the genuine right owner from entering the market, causing pecuniary or non-pecuniary damage to the genuine right owner are deemed to be in bad faith.”
Pursuant to Article 6/9 of the IP Law, it is possible to oppose a trademark application filed in bad faith with these purposes, and if the trademark application filed in bad faith is registered, it is also possible to file an action for its cancellation. The existence of bad faith shall be taken into account as of the date of application, and it is also not possible for cancellation actions that will be substituted due to bad faith to be subject to the statute of limitations, or for the defendant to claim non-use defense against the plaintiff. Trademark registration filed in bad faith also constitutes a violation of unfair competition provisions regulated in TCC 55 and its following articles and article 2 of the Turkish Civil Code.
When Does the Trademark Owner’s Rights Over the Trademark Arise?
In terms of unregistered trademarks, the rights on the trademark begin from the date of first use, provided that the trademark is used genuinely over time and that the trademark provides distinctiveness before the consumer mass. In terms of registered trademarks, the rights granted to the owner of the trademark are valid against third parties as of the date of publication of the trademark registration. However, the applicant is authorized to file an action for indemnification due to acts that take place after the trademark application is published in the Official Trademark Bulletin and that may be prohibited if the trademark registration has been published. The court cannot decide on the validity of the claims put forward before the publication of the registration. (Article 7/4 of IP Law)
How Can the Trademark Owner Prove Being the Genuine Right Owner?
In terms of unregistered trademarks, as stated above, since the rights on the trademark shall begin from the moment it is first used, provided that the trademark is used genuinely over time, providing distinctiveness before the consumer mass, as of this first usage date, in order to prove the trademark owner’s right on the trademark, the trademark owner must prove with documents bearing the date, that the usage of the trademark is genuine. Only by this method, the trademark owner can claim the rights arising from the trademark against the people who violate the trademark, which is not always easy to prove. On the contrary, it is sufficient for the registered trademark owner to submit a registration certificate and rely on this certificate in order to prove the ownership of the trademark right.
In Which Ways and How Can the Trademark Owner Benefit from the Rights He/She Has?
Industrial property rights can be transferred, inherited, made subject to license, given lien, shown as collateral, confiscated, or made subject to other legal proceedings. (IP Law Art. 148) The trademark owner may allocate the right of use to another third party, limited to a place, number, and time, on some or all of the classes in which the trademark is registered, briefly, the trademark owner may license the trademark. The trademark owner may license the right of use of the trademark to a third party in an exclusive or non-exclusive manner. If a license is granted exclusively, neither the licensor nor anyone else can use the trademark for the duration of the contract, only the licensee becomes the owner of the right to use the trademark. In the non-exclusive trademark license, other third parties, including the trademark owner, together with the licensee can use the trademark with the permission of the trademark owner. Unless otherwise agreed in the agreement, the license is not exclusive. Unless otherwise agreed in the agreement, licensees cannot transfer their rights arising from the license to third parties or grant sublicenses. (IP Law Art. 24) In order to assert these rights against third parties, a licensee must register their license rights with the trademark registry, otherwise, they cannot claim these rights against bona fide third parties. (IP Law Art.148) For example, if the licensee, who has acquired the right to use the trademark exclusively from the trademark owner, does not register this license right in the registry, cannot claim his trademark rights against third parties who use the trademark unfairly, and cannot prevent trademark infringement. The same situation is applicable for a non-exclusive licensee, their difference from exclusive licensee is that they do not have the right to prevent the trademark owner from giving the right to use the trademark to someone else.
The trademark owner may also transfer the trademark right to another third party. Dispositive transactions on trademark rights are executed in writing, this is a condition for validity. However, in order for the transfer to be valid, it must also be conducted with the approval of the Notary Public, which is a validity condition. (IP Law Art. 148) After the transfer is completed, it is recommended that the transfer is registered in the registry on behalf of the trademark owner, even if it is not deemed as requisite in IP Law, otherwise, the transferee of the trademark cannot claim their rights arising from the transfer against the bona fide third parties. Since the principle of territoriality is valid regarding trademark, it is not possible to make the transfer to cover a certain region in our country.
In Preparation of Trademark License/Transfer Agreements Which Issues Should be Particularly Considered?
a) The agreement must be executed in writing. (As mentioned above, this is a form/validity condition.)
b) It should be clearly stated which trademarks the agreement relates to (by stating the registration number and name).
c) Again, it should be clearly stated which classes the agreement relates to, briefly, whether the license or transfer is complete or partial (whether all or part of the products and/or services, hence the classes in which the trademark is registered).
d) In license contracts, it should be clearly stated whether the right to use the trademark is granted exclusively or non-exclusively.
e) In license contracts, the place and duration for which the agreement shall be valid should be stated one by one.
f) It should be stated that the trademark owner is the sole and genuine right owner on the trademark, there is no restriction such as a confiscation on the trademark, there is no obstacle in the transfer or licensing of the rights of the trademark owner, and that the trademark owner shall be responsible -the scope of responsibility to be detailed- for the violation of the rights of third parties regarding the trademark.
g) In the event that a third-party file a legal action claiming to be the genuine right owner regarding the trademark, against the licensee/transferee, the rights and responsibilities of the author and the transferee/licensee in the agreement must be clearly stated.
h) In case of trademark infringement, the rights and responsibilities of the parties should be clearly regulated, the right to take legal action against the act of infringement and the provisions for the party/s who have this right should be included.
i) The payment method, place, and time of the economic rights arising from the trademark subject to the transfer or license should be clearly stated.
j) In license contracts, it should be stated that if the contract between the parties is terminated for any reason, the rights on the trademark shall return to the trademark owner.
k) Since the validity of transfer agreements depends on them being written and approved by a Notary Public, the transfer process should be carried out before TPTO by doing so.
Is Someone Having the Physical Ownership of a Trademarked Product Considered as the Trademark Owner?
No, they are not considered as such, they are only the owner of the trademarked product or products that they hold. This does not make them a trademark owner, and no matter how many trademarked products they have, they cannot use the trademark on those products as they wish and in fact, they cannot take actions that may damage the trademark, for example, they cannot sell the product by deleting or covering the trademark. They can announce that they sell products bearing the said trademark only in environments where goods are sold together, for example, in their own shop or on e-commerce platforms.
What Does Trademark Infringement Mean? In Such a Case, Which Legal Actions Can the Right Owner Take?
The cases that are considered trademark infringement are stated in Article 29 of the IP Law. Accordingly, the following acts are considered an infringement of the trademark right:
a) To use the trademark in the ways stated in Article 7 without the consent of the trademark owner (As explained above in the answer to the question “What Are the Rights of the Trademark Owner?”)
b) To counterfeit the trademark by using the trademark or its indistinguishably similar form without the permission of the trademark owner.
c) Despite knowing or expected to have known that the trademark is being counterfeited by using the trademark or its indistinguishably similar form, to sell, distribute, trade in another way, import, export, hold for commercial purposes, or offer to make a contract for the products bearing the trademark used by the infringement.
ç) To extend the rights granted by the trademark owner through license or to transfer these rights to third parties without permission.
What Does a Counterfeit Product Mean?
Products obtained by reproduction directly or indirectly from an original trademarked product without obtaining permission from the owner, or by exceeding given permission, are counterfeit products; the production, sale, distribution, put in the market in a different form, importing, exporting, holding for commercial purposes or making an agreement for this product is both an infringement of the trademark rights and a crime. For example, t-shirts and other products with the cartoon character Mickey Mouse, which are registered as trademarks and produced without the permission of the owner, are included in the concept of pirated/counterfeited products. Right owners can take all legal actions to prevent and cease the infringement, including suspension at customs against these products.
Is It Possible to Suspend Counterfeit Products Bearing the Trademark at Customs?
The procedure for suspension of counterfeit products bearing the trademark at customs is regulated in Article 77 of the Customs Law No. 4458 with reference to Article 57 of the same Law. Accordingly, in cases where there is a likelihood of infringement of the trademark rights, the provisions of Article 57 of the Customs Law and the provisions of the Customs Regulation are implemented during the import or export of the counterparts that require sanctions. Regarding the rights within the scope of IP Law, the customs procedures of the goods infringing on the rights of the right owner are suspended by the customs administrations ex-officio; upon the request of the right owner or their representative or if there is clear evidence that the product in question fits the description of a counterfeit trademarked or copyrighted pirate product. The suspension decision is notified to the importer or the right owner or their representative and subsequently, within ten (10) days from the date of issuance of the suspension decision, it is necessary to apply to the competent and responsible court by taking samples or photographs of the suspended products, in order to file an action with a request for an interim injunction/file a complaint before the Prosecutor’s Office, and to obtain an interim injunction/search and seizure decision.
In the case of a Violation of a Trademark Right on the Internet, What are the Legal Responsibilities of Content, Access, and Hosting Providers?
In accordance with the Law On Regulation Of Publications On The Internet And Combating Crimes Committed By Means Of Such Publications No. 5651, Internet actors also have certain responsibilities. Pursuant to Article 4 of the relevant Law, the content provider is responsible for any content made available on the Internet by the content provider. This means that if a product is produced and sold on the Internet without the consent of the trademark owner, the content provider can be held responsible for the violation of the right. The content provider is not responsible for the content belonging to someone else to which it links. However, if it is clear that the content provider adopts the content to which the content provider provides a link and aims to reach the said content, the content provider is responsible according to the general provisions. Although access providers are not obliged to check whether the products sold on the sites accessed through them are unlawful and require liability, pursuant to Article 6/2 of the same Law and pursuant to Article 6/1-a, if they are notified of any illegal action/sales published by a user in accordance with the notice and take-down procedure, they will be held responsible if they do not prevent access. The same obligation applies to hosting providers, and if illegal content is not removed from the publication pursuant to Article 5, it is possible to file a legal action against them.
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 TPMK, Marka İnceleme Kılavuzu 2019, s.195
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 TPMK, Marka İnceleme Kılavuzu 2019, s.190
 TPMK, Marka İnceleme Kılavuzu 2015, s.36
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 Çolak, Uğur, Türk Marka Hukuku – 4. Baskı, İstanbul 2018, Sy. 208
 Çolak, Uğur, Türk Marka Hukuku – 4. Baskı, İstanbul 2018, Sy. 208
 TPMK, Marka İnceleme Kılavuzu 2019, s.23
 Yasaman Hamdi- Tanınmış Marka Kriterleri ve İspatı Sorunu, Prof. Dr. Hüseyin Ülgen’e Armağan, Cilt 1, Sy. 1189.
 Çolak, Uğur, Türk Marka Hukuku – 4. Baskı, İstanbul 2018, Sy. 363
 Marka İnceleme Kılavuzu – 2015 Sy.133
 Marka İnceleme Kılavuzu – 2015 Sy.144
 Türk Patent Enstitüsü Marka İnceleme Kılavuzu, 2011, sh. 142