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In recent years, as around the world, the trend towards branding in Türkiye has been seen to be on the rise. In a modern society in which the pace of life has quickened and people are channelled towards consumption rather than production, the way to obtain ready, easily accessible and at the same time high-quality goods or services lies through trusted trademarks. The way for people to trust a trademark, in turn, lies in that trademark being held in an independent register and being protected against wrongful attacks through judicial and administrative channels. In this article, we will provide you with explanations on the trademark right in Turkish law and its characteristics, and on the registration and protection of this right. You can access our article on our website.
What Is a Trademark?
The trademark right, like many other industrial property rights, is regulated by Industrial Property Law No. 6769 (SMK) and may be defined as “a sign that serves to distinguish the goods that an undertaking produces or trades in, or the services that it provides, from the goods or services produced by other undertakings”. Trademarks are the equivalent, for goods and services, of the trade name, which in commercial life serves to distinguish merchants from one another and performs the same function.
The trademark is regulated in Article 4 of the SMK:
Article 4- (1) A trademark may consist of any kind of signs, including words, personal names, figures,
colours, letters, numbers, sounds and the shape of goods or their packaging, provided that
such signs are capable of distinguishing the goods or services of one undertaking from those
of other undertakings and can be represented in the register in a manner that enables the
subject matter of the protection afforded to the trademark proprietor to be clearly and precisely determined.
As can be seen from the Article, a trademark may consist of various signs that are not limited in number. The limit of this open-endedness is that the sign must satisfy the conditions of being capable of distinguishing the goods and services of other undertakings and of being representable in the register. Provided that these two conditions are met, any kind of sign can be registered as a trademark.
Registration of the Trademark
A trademark is registered in a special register kept at the Turkish Patent and Trademark Office (TÜRKPATENT). However, registration is not a necessary condition for the existence of a trademark in the legal world. In the legal world there are unregistered trademarks as well as registered ones. The practical consequence of this distinction is that, whereas registered trademarks can be protected under the SMK, unregistered trademarks cannot benefit from the protection mechanisms introduced into Turkish law by the SMK and can be protected only under the general provisions, that is, under the unfair competition provisions regulated in the Turkish Commercial Code (TCC).
Absolute and Relative Grounds for Refusal in the Registration of a Trademark
The SMK contains detailed provisions on the registration of trademarks and, in Articles 5 and 6, determines the signs that cannot be trademarks under two headings, namely absolute and relative grounds for refusal. While absolute grounds for refusal are taken into account by the Office ex officio, relative grounds for refusal are examined upon opposition. This distinction arises from the fact that absolute grounds for refusal relate to the public interest, whereas relative grounds for refusal relate to private interests.
The restrictions set out as absolute grounds for refusal relate essentially to the requirements of distinctiveness and of being representable in the register, which the Law specifies as the elements of a trademark; in addition, the Article also contains restrictions that prevent the registration as trademarks of signs that are contrary to public order and to the religious values of the public, and of signs that must remain open to everyone’s use.
According to the absolute grounds for refusal regulated in Article 5 of the Industrial Property Law, the following signs cannot be registered as trademarks:
Signs that cannot be trademarks within the scope of Article 4.
Signs that do not have any distinctive character.
Signs that consist exclusively of, or contain as an essential element, signs or designations that in trade denote the kind, type, characteristic, quality, quantity, purpose, value or geographical origin, or indicate the time at which the goods were produced or the services were provided, or denote other characteristics of the goods or services.
Signs that are identical, or so similar as to be indistinguishable, to a trademark that has been registered, or for which an application for registration was made at an earlier date, in respect of the same or the same type of goods or services.
Signs that consist exclusively of, or contain as an essential element, signs or designations that are used by everyone in trade or that serve to distinguish members of a particular profession, art or trade group.
Signs that consist exclusively of the shape or another characteristic of the goods that results from the nature of the goods themselves, of a shape or other characteristic that is necessary to obtain a technical result, or of a shape or other characteristic that gives the goods their substantial value.
Signs that would mislead the public as to matters such as the nature, quality or geographical origin of the goods or services.
Signs that are to be refused pursuant to Article 6ter of the Paris Convention.
Other signs that fall outside the scope of Article 6ter of the Paris Convention but are of public concern and have become public property in terms of historical and cultural values, and signs containing coats of arms, badges or designations for which the competent authorities have not granted permission for registration.
Signs containing religious values or symbols.
Signs that are contrary to public order or public morality.
Signs that consist of, or contain, a registered geographical indication.
Article 6 of the Law, in turn, relates to the relative grounds for refusal. The value that the relative grounds for refusal seek to protect essentially consists of preventing a sign in which any person holds a right from being registered as a trademark contrary to the consent of the right holder. It is for this very reason that the relative grounds for refusal, which are not taken into account ex officio by the Office, can be assessed only upon opposition by the interested parties.
Article 6 of the Law lists the relative grounds for refusal as follows:
The trademark applied for being both identical or similar in nature to a trademark that has been registered or applied for at an earlier date and relating to identical or similar goods or services, such that there is a likelihood of confusion on the part of the public.
The commercial agent or representative of the trademark proprietor applying, without the proprietor’s consent and without a legitimate reason, for registration in its own name of the trademark or of a sign identical to it or so similar as to be indistinguishable.
A right having been acquired, before the filing date or the priority date, if any, in an unregistered trademark or another sign used in the course of trade.
An application being made for a trademark that is identical or similar in nature to well-known trademarks within the meaning of Article 6bis of the Paris Convention.
An application for registration being made for an identical or similar trademark in cases where, owing to the level of renown achieved in Türkiye by a trademark that has been registered or applied for at an earlier date, an unfair advantage may be obtained, the reputation of the trademark may be harmed or its distinctive character may be impaired.
The trademark applied for containing another person’s personal name, trade name, photograph, copyright or any intellectual property right.
The trademark application having been made in bad faith.
Rights Conferred on the Proprietor by Trademark Registration
The trademark right gives its proprietor an exclusive monopoly right belonging solely to him or her. As a natural consequence of this monopoly right, the proprietor can prevent his or her trademark from being used by others. The proprietor may permit such acts, and may also request the court to prevent them. Article 7 of the Industrial Property Law sets out the situations in which the trademark proprietor may request prevention:
The use of any sign identical to the registered trademark in respect of goods or services covered by the registration.
The use of any sign that is identical or similar to the registered trademark and covers goods or services identical or similar to those covered by the registered trademark, and for which, as a result, there is a likelihood of confusion on the part of the public, including the likelihood of association with the registered trademark.
The use, without due cause, of any sign that, irrespective of whether it concerns identical, similar or different goods or services, is identical or similar to the registered trademark and that, owing to the level of renown the trademark has achieved in Türkiye, would take unfair advantage of the reputation of the trademark, harm its reputation or impair its distinctive character.
Cases of Infringement of the Trademark Right
In the classification of rights in civil law, the trademark right takes its place in the class of absolute rights over intangible assets. Because it has the nature of an absolute right, in addition to being enforceable against everyone, it can also be wrongfully attacked by anyone. Protecting the trademark right against these wrongful attacks, that is, infringements, is one of the obligations of the State. In the same vein, the SMK provides for both civil and criminal sanctions for the purpose of protecting the trademark right. Let us first examine which acts are regarded as infringement of the trademark right, and then which mechanisms the law provides against infringements:
Article 29 of the Industrial Property Law lists the acts regarded as infringement as follows:
Using the trademark, without the consent of the trademark proprietor, in the forms specified in Article 7.
Imitating the trademark, without the consent of the trademark proprietor, by using the trademark or a sign so similar as to be indistinguishable from it.
Selling, distributing, otherwise placing on the market, subjecting to import, exporting, holding for commercial purposes products bearing the trademark used by way of infringement, or making an offer to conclude a contract concerning such products, while knowing or having to know that the trademark has been imitated by using the trademark or a sign so similar as to be indistinguishable from it.
Unauthorisedly extending the rights granted by the trademark proprietor by way of licence, or transferring those rights to third parties.
Claims That the Right Holder Whose Trademark Right Has Been Infringed May Assert
Under the heading above, we examined which acts the SMK regards as infringement. As in the protection of all rights, definitions alone are not sufficient for the protection of the trademark right; functional and effective mechanisms are also needed. At this point the Industrial Property Law has not left the task of protection to the general provisions but has itself regulated it in order to provide more effective methods of protection. Article 149 of the SMK clearly sets out the avenues that a trademark proprietor whose right has been infringed may resort to:
Determination of whether an act constitutes infringement.
Prevention of a potential infringement.
Cessation of acts of infringement.
Elimination of the infringement and compensation of pecuniary and non-pecuniary damages.
Seizure of the products that constitute infringement or require a penalty, and of the devices, machines and similar tools used exclusively in their production, in a manner that does not prevent the production of products other than those that are the subject of the infringement.
Recognition of the right of ownership over the products, devices and machines seized pursuant to subparagraph (d).
Taking measures to prevent the continuation of the infringement, in particular altering the form of the products and of the tools such as devices and machines seized under subparagraph (d), at the infringer’s expense, removing the trademarks on them or, where unavoidable to prevent infringement of industrial property rights, destroying them.
Where there is a justified reason or interest, publication of the final judgment, in whole or in summary, in daily newspapers or similar media, or its notification to the persons concerned, at the expense of the other party.
As can be seen, the solutions concerning the protection of the trademark right against infringement are broader in the SMK system than under the general provisions. For example, whereas the general provisions contain no such severe sanction as the recognition of ownership over seized devices, in the article of the SMK to which I have referred above this solution appears as a protective instrument, which shows the law’s determination to protect the trademark right.
Courts with Territorial and Subject-Matter Jurisdiction
With the Industrial Property Law, a special rule on subject-matter jurisdiction has been laid down as to the court that is to hear the actions provided for in this Law. Accordingly, the courts that will conduct the proceedings are not the civil and criminal courts of first instance (asliye) with general jurisdiction, but the Intellectual and Industrial Property Rights Civil Courts and the Intellectual and Industrial Property Rights Criminal Courts.
The Industrial Property Law has also departed from the general provisions of the Code of Civil Procedure (HMK) with regard to territorial jurisdiction and has laid down a special rule of jurisdiction. According to this special rule, in actions brought against all decisions taken by the Turkish Patent and Trademark Office pursuant to the SMK, the competent court with jurisdiction is the Ankara Intellectual and Industrial Property Rights Civil Court (SMK Article 156). Likewise, in actions brought against the Office by third parties harmed by the Office’s decisions, the competent court with jurisdiction is the Ankara Intellectual and Industrial Property Rights Civil Court.
As regards civil actions to be brought by an industrial property right holder against third parties, the Industrial Property Law has made a provision parallel to the HMK and has provided that the competent court is the court of the plaintiff’s place of residence, or of the place where the unlawful act was committed or where the effects of that act are seen.
Conclusion
The trademark right, the foremost of the industrial property rights that have been developing in Turkish law since the late 1990s, is perhaps one of the rights most prone to being exposed to violations and infringements. The fact that the trademark right exists over intangible assets, that is, that it has no concrete and visible counterpart, causes standard methods of protection to be ineffective. For this reason, as in the rest of the world, in Türkiye too the method of protecting the trademark right departs from the protection of real rights and is secured through harsher measures. Being relatively new, the Industrial Property Law also meets current needs and forms a shield for the trademark right against such infringements.
Trainee Attorney Utku Mehmet YETİŞ
