Ten important points regarding trademark law and practice in Turkey including detailed information on the trademark registration process and available remedies against trademark infringements.
By Fatma Esra Güzeloğlu & Abdülkadir Güzeloğlu
4 August 2016
In this article we will elaborate on ten important points
regarding trademark law and practice in Turkey.
1. General
Overview
2. How
can I register my trademark in Turkey?
3. I
am not a citizen of Turkey; can I register my trademark there?
4. Under
what conditions would my trademark application would be refused?
5. What
rights trademark registration confers on me?
6. How
long does it take to register my trademark and how much it costs?
7. My
trademark is being infringed in Turkey, what can I do?
8. Is
my trademark legally protected in Turkey even if it is not registered there?
9. What
are the conditions for a valid license agreement?
10. What
are the topical issues concerning IP Law in Turkey at the moment?
1.
General Overview
Turkey, with its modern legislation that it is in
parallel with the EU acquis, knowledgeable administrative body within the
Turkish Patent Institution (“TPI”), specialized courts to settle intellectual
property (“IP”) related disputes in a speedy and efficient fashion has a
well-operating IP system.
Although the said system provides a solid legal
infrastructure whereby parties may efficiently register their trademarks and
may duly resort to legal channels as necessary, there is still much to do in
terms of educating public on the legal consequences of trademark infringements.
According to the report published by the Organisation for Economic Co-operation
and Development (“OECD”)[2],
Turkey comes third in terms of “where most fake goods originate” in the world,
following China and Hong Kong. Hence in order to protect one’s trademark in
Turkey, latter should be aware of how to register its trademark as well as
respective rights and recourses available to them.
Turkey is a signatory to the following trademark
related international agreements:
· Convention Establishing the World Intellectual
Property Organization (“WIPO”), 1967
· Agreement establishing the World Trade Organization (“WTO”), 1995
· Paris
Agreement, 1883
· Trademark
Law Treaty, 1994
· Singapore
Treaty on the Law of Trademarks, 2006
(signed, yet to be ratified)
· Madrid
Protocol, 1989
· Nice
Agreement Concerning the International
Classification of Goods and Services for the Purposes of the Registration of
Marks, 1957
· Vienna
Agreement Establishing an International
Classification of the Figurative Elements of Marks, 1973
2.
How can I register
my trademark in Turkey?
Trademarks are registered and protected according to
the provisions of the Executive Order No.556 on the Protection of Trademarks (“Executive
Order”).
Registration process is initiated through an
application to the TPI. Before applying for registration of your trademark, a
thorough research should be conducted in order to see if there are any
potential grounds for refusal for that specific mark in absolute or relative
nature. It is a very important step in order to save time and cost. Pursuant to
the outcome of the research, applicant may choose to seek registration keeping
the mark as it is or make certain changes on the mark, if possible, depending
on the ground for refusal that may potentially jeopardize registration.
Once the research is completed, the application file
should be submitted to TPI encompassing all the required documents. TPI
notifies the applicant in case of an incomplete application and gives 2 months
period to submit any missing documents, should there be any.
If the application is not refused entirely or
partially by the TPI, i.e. the file is found to be complete; the trademark is
found to be in compliance with absolute grounds for refusal and the applicant is
found to be eligible for application (as in Question 3); the application is
published in the Trademark Bulletin which is published by the TPI periodically.
Upon its publication in the Trademark Bulletin,
application is open for objections for 3 months period. When TPI examines the
objections, it may request arguments and counter-arguments from both parties as
many times as it deems necessary. TPI may refuse or accept the objection
entirely or partially.
If an application is found to be complete and on which
there were no objections or any such objections were eventually denied, then it
will be registered as a trademark. The applicant will receive a “Trademark
Registration Certificate”.
3.
I am not a citizen
of Turkey; can I register my trademark there?
All natural and legal persons who are domiciled or who
have industrial or commercial establishments within Turkey, or the persons who
have application rights resulting from the terms of the Paris Convention, Bern
Convention or the Agreement Establishing World Trade Organization as well as
natural or legal persons who are nationals of states which provide legal or de
facto protection to the nationals of the Turkish Republic (reciprocity
principle) may register their trademark in Turkey.
Also it should be noted that since Turkey is a
signatory to Paris Convention, it is possible to claim priority on the basis of
a first application filed in one of the Contracting States.
4.
Under what
conditions would my trademark application would be refused?
A thorough research should be conducted before making
an application in order to see whether or not the respective trademark falls
into one of the grounds for refusal for registry. There are grounds for refusal
of “absolute” and “relative” nature.
Absolute
grounds for refusal[3] are sua sponte taken
in to consideration by the TPI, these are:
1. A trademark must consist of a sign that is graphically
representable such as words, personal names, designs, letters, numerals, shape
of the goods or their packaging as well as any descriptive means;
2. A trademark must be capable of being published and
reproduced by printing;
3. A trademark must be capable of distinguishing the
goods and services of one undertaking from the ones of other undertakings;
4. A trademarks must not be identical or confusingly
similar with an earlier trademark[4] in
respect of an identical or same type of product or services;
5. A trademark must not exclusively or primarily consist of signs or indications which serve
in trade to indicate the kind, characteristics, quality, intended purpose,
value or geographical origin or specify the time of production or other
characteristics of the goods or services;
6. A trademark must not exclusively or primarily consist of signs or names
widely used by all parties in trade practice or used in order to distinguish
specific groups of craftsmen, tradesmen or professionals;
7. A trademark must not be composed of signs containing
the shape of a good or the shape that gives the substantial value to a good
which results from the nature of such good or which is necessary to obtain a
technical result;
8. A trademark must not deceive the public as to the
nature, quality, place of production or geographical origin of the goods or
services;
9. A trademark must not be used without the authorization
by the competent authorities and hence are to be refused pursuant to Article
6ter of the Paris Convention;
10. A trademark must not contain badges, emblems or
escutcheons other than those covered by Article 6ter of the Paris Convention
and which are of particular public interest, unless the consent of the
appropriate authorities to their registration has been given;
11. A well-known trademark pursuant to Article 6bis of the
Paris Convention must not be used without the authorization by their owners;
12. A trademark must not contain religious values or
symbols; or
13. A trademark must not be contrary to the public policy
and moral values.
An exception is provided for trademarks which were
being used before the date of their registration and have acquired a
distinctive character through their usage in relation to the respective goods
or services for which the registration is requested. In such case, grounds
listed in (1),(2),(3), (5) and (6) shall not constitute a ground for refusal.
As per the relative
grounds for refusal[5] ; they are taken
into consideration once an objection is filed within 3 months from the date of
publication of the application in the Trademark Bulletin of the TPI. Any person
may file an objection.[6]
1. Where a trademark in question is identical to an earlier trademark for the identical
goods or services;
2. Where there is a likelihood of confusion for the
public in terms of associating the trademark in question with an earlier
trademark because they are identical or
similar and the protection is sought for the identical or similar goods or
services; or
3. Where the trademark in question is identical or
similar to an earlier trademark but relates to different goods or services, it
may still be refused upon the objection of the owner of an earlier trademark provided that registration may result
in an unfair advantage to the applicant in question due to the reputation the
earlier trademark enjoys amongst the public, harm the prestige of the earlier
trademark or damage its distinctive characteristic.
4. Where an agent or a representative of an owner of a
trademark has applied for registration under his own name without the owner’s
consent and without a valid reason;
5. Where the rights to the respective sign have been
acquired prior to the date of application in question or the date of priority
claimed in the application;
6. Where the sign confers on its owner the right to
prohibit the use of a subsequent trademark;
7. Where the trademark contains the name, photo,
copyright or any other intellectual property right of another person than the
applicant;
8. Where the trademark is identical or similar to a
collective or a guarantee mark and the application in question is made within
less than three years from the date of expiry of such collective or of the
guarantee mark;
9. Where the trademark is identical or similar with an
earlier trademark for identical or similar goods or services that is expired
due to non-renewal and the application in question is made within less than two
years of the expiry date.
5.
What rights trademark
registration confers on me?
The owner of a trademark is entitled to prevent all
third parties from using the trademark without his/her consent. Only exception
to this is where a third party uses its own name, address or specifications as to the characteristics,
quality, quantity, intended purpose, value, geographical origin, time of
production or other characteristics of the goods or services; provided that it
is used in good faith and in relation to their relevant commercial or
industrial area of practice.
The protection is provided for 10 years and the rights conferred are perpetual as long as renewed periodically.
6.
How long does it
take to register my trademark and how much it costs?
Fees charged by the TPI may be accessed at the link. In addition, should you decide to work with a
trademark attorney, there will be additional fees for the services procured.
Please keep in mind that if you are domiciled outside of Turkey, you can only
be represented by a trademark attorney and may not apply for registration
personally.
The trademark registration process may usually be
completed within a year if the application file is submitted in complete and
there be no objections. The process may take longer in case of objections as to
why the trademark in question should be refused.
7.
My trademark is
being infringed in Turkey, what can I do?
Depending on the nature of the infringement, both
civil and/or criminal lawsuits may be initiated concerning a trademark
infringement in Turkey. A party may resort to competent specialized national
courts to bring a civil lawsuit and/or file a criminal complaint to give rise
to a criminal case.
Also, an interim
measure is an important tool to minimize the damage before a judgement is
rendered in a trademark infringement case. If a person proves that his/her
trademark is being infringed in Turkey or there are actual and effective endeavors
currently being made for such result, he/she may request an interim measure to
secure the effectiveness of an already initiated lawsuit or one to be initiated.
8.
Is my trademark
legally protected in Turkey even if it is not registered there?
Unregistered trademarks of foreign origin may also be
protected in Turkey provided that they are well-known in Turkey. A well-known
trademark pursuant to Article 6bis of the Paris Convention cannot be used
without the authorization by their owners. Also, unfair competition provisions
found in the Commercial Code No: 6102 may be invoked by the owner of an
unregistered mark.
9.
What are the
conditions for a valid license agreement?
In order for a trademark license agreement to be valid
in Turkey, it must be concluded in writing. However, the license agreement must
also be registered at the TPI in order to be asserted against third parties in
good faith. It should also be noted that a license agreement concerning a
trademark is not exclusive unless otherwise agreed by the parties.
10.
What are the topical
issues concerning IP Law in Turkey at the moment?
Long-awaited law on industrial property rights was
recently approved by the appointed commission and the approved text is
currently on the agenda of the Grand National Assembly of Turkey (“TBMM”) since
May 2016 expected to be open for parliamentary discussions in the upcoming
months.
Currently, industrial property rights are regulated
under several laws and executive orders. The purpose of the law is to gather
all different regulations under one roof in order to provide a uniform,
effective and up to date legal structure.
Should you have any questions on
trademark law in Turkey or
IP law in general, you may contact us at
info@guzeloglu.legal
[1]* Fatma Esra Güzeloğlu is a lawyer
registered at Istanbul Bar Association and a licensed trademark attorney
registered at the Turkish Patent Institution.
[2] OECD/EUIPO (2016), Trade in Counterfeit and Pirated Goods:
Mapping the Economic Impact, OECD Publishing, Paris. DOI: http://dx.doi.org/10.1787/9789264252653-en
[3] Article 7 of the Executive Order
No.556
[4] Earlier
trademark is used to
describe an already registered trademark or a trademark with an earlier
application date than the one sought to be registered.
[5] Article 8 of the Executive Order
No.556
[6] If such person has an earlier
application or registration at the TPI; considers its mark to be a well-known
mark for different goods or services, has been using the mark in question
without any registration or application; believes that the subject matter
application will lead to confusion with its earlier IP rights (i.e. copyright,
trade name...) or thinks the application is made in bad faith.