First published at turkishlawblog.com/home
The more a trademark becomes well-known or reputable, the more its functions, such as the functions of origin, quality, investment, and advertising strengthen. Therefore, specific provisions are usually applied for the protection of such trademarks with the respective functions at a higher level than those of regular trademarks.
The Industrial Property Code (“Code”) also provides broader protection to the respective trademarks under two provisions, i.e. under Article 6 (4) and Article 6 (5), which relate to well-known trademarks in the sense of Article 6bis of the Paris Convention and trademarks that have acquired a reputation in Turkey, respectively.
In this short article, how the respective provisions are implemented in Turkey will be examined.
2. Regulated as Relative Grounds for Refusal
In line with Article 8 of the EU Trademark Regulation (2017/1001), both Article 6 (4) and Article 6 (5) of the Code are regulated as relative grounds for refusal. In this regard, the respective grounds can be raised both in opposition proceedings during the trademark application proceedings and in invalidity lawsuits against the registered trademarks. A general explanation of the respective procedures is provided below.
a. Opposition Against a Trademark Application
The owners of well-known trademarks according to either Article 6 (4) or Article 6 (5) are entitled to file an opposition against trademark applications filed in Turkey and to request the Turkish Patent and Trademark Office (the “Office”) to reject the respective application.
The main characteristic of the relative grounds for refusal is that they are based on an earlier right held on the trademark application against which the opposition is filed for its rejection. Unlike absolute grounds for refusal which are listed under Article 5 of the Code, they are not related to the public interest. Therefore, the relative grounds for refusal are not ex-officio examined by the Office in trademark application procedures. Instead, in the opposition proceedings, the relative grounds for refusal must be raised within two months from the bulletin date of the trademark application of which refusal is requested. The decision of the Office on the opposition can be appealed within two months before the Re-examination and Evaluation Board (“Board”) of the Office. A cancellation action against the respective decision of the Board may be initiated before the Ankara Civil Court of Intellectual and Industrial Property Rights, again in two months from the date of notification. Here, it is noteworthy that any relative ground for refusal which has not been filed in the two-month opposition period cannot be raised at the appeal stage before the Board or at the annulment lawsuit before the court.
b. Invalidity Lawsuit Against Registered Trademarks
In the event that a trademark is registered in Turkey despite the existence of one of the relative grounds for refusal listed in Article 6, such trademark may be invalidated through a lawsuit. Filing an opposition against a trademark application, of which the invalidity is requested from the court, is not an obligation. Therefore, regardless of whether they have filed an opposition before the registration, the owners of well-known trademarks may file an invalidity lawsuit against the registered trademarks which violate Article 6 (4) and/or Article 6 (5) of the Code. Upon acceptance of the lawsuit, the trademark violating the respective provisions are invalidated retroactively, starting from the application date of the respective trademark.
The invalidity lawsuit must be filed before the competent court where the defendant resides. The owners of earlier trademarks, e.g., well-known trademarks, must file the invalidity lawsuit within five years starting from the date they learned or should have learned the use of the subsequent trademark (to be invalidated). Otherwise, they would not be able to raise their trademarks as grounds for invalidation. The respective rule as to this loss of right due to silence is not applied to the trademarks registered in bad faith.
3. Article 6 (4): Well-Known Trademarks in the sense of Article 6bis of the Paris Convention
Article 6 (4) of the Code reads as follows: “Trademark applications, which are identical or similar to the well-known trademarks in the sense of Article 6bis of the Paris Convention, shall be refused upon opposition in respect of identical and similar goods or services”. In this respect, it can be concluded that for a trademark owner to benefit from this provision two conditions must be met concurrently:
i. The trademarks subject to comparison must be identical or similar.
ii. The trademark causing the refusal of the other must be “well-known” in the sense of Article 6bis of the Paris Convention.
As per the territoriality principle, normally, only the trademarks, which have been registered or at least used in Turkey, are protected and can prevent the registration of subsequent trademark applications. However, since being registered or used in Turkey is not a must for being regarded as well-known in the sense of Article 6bis of the Paris Convention, Article 6 (4) of the Code constitutes an exception to the territoriality principle. As long as the trademark, which would be the basis of the opposition, is deemed well known in one of the member states of the Paris Convention, the respective trademark may prevent or invalidate the registration of a trademark application filed by a third party in Turkey.
Although the preamble of the Code indicates that Article 6 (4) has been drafted in line with EU regulations and foreign practices, contrary to the EU Trademark Regulation (2017/1001) and the TRIPS, the protection provided by Article 6 (4) of the Code is limited with identical or similar goods or services. In other words, based solely on this ground for opposition, it is not possible to ensure the refusal of a trademark application or the invalidation of a registered trademark with respect to the goods or services, which are not similar to those of the well-known trademark. However, by claiming bad faith in the trademark application, the owner of the well-known trademark may also prevent or invalidate the registration of the respective trademark in different goods or services. The bad faith claim, which is another relative ground for refusal regulated under Article 6 (9) of the Code, ensures the refusal or invalidation of a trademark in all goods and services. Such a claim is accepted when proven that the trademark application in Turkey is filed by a third party without the consent of the genuine owner of the trademark and with the intention of gaining an unfair advantage of the reputation of the respective well-known trademark.
4. Article 6 (5): Trademarks Applied/Registered and Well-Known (Reputable) in Turkey
Article 6 (5) of the Code, which is enacted in line with article 8(5) of the EU Trademark Regulation (2017/1001) states the following: “Upon opposition by the owner of an earlier trademark, the trademark applied for shall not be registered where it is identical with, or similar to, an earlier trademark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trademark is registered or applied for registration, where, without a due cause, trademark applied for would take unfair advantage of, or be detrimental to, the reputation or the distinctive character of the earlier trademark due to the degree of reputation the earlier trademark has reached in Turkey.” In this respect, it can be concluded that for a trademark owner to benefit from this provision the following conditions must be met concurrently:
i. The trademarks subject to comparison must be identical or similar.
ii. The trademark, which will be used as evidence in the opposition by the opponent, must have been registered in Turkey or applied for registration in Turkey.
iii. The date of such registration or application must be earlier than the trademark to be opposed.
iv. The earlier trademark must have a degree reputation in Turkey, or in other words, must be well-known in Turkey.
v. There must be a possibility that the subsequent trademark may take unfair advantage of, or be detrimental to the reputation or the distinctive character of the well-known trademark.
vi. There must not be a due cause in the use of the subsequent trademark.
Contrary to Article 6 (4) of the Code relating to well-known trademarks in the sense of Article 6bis of the Paris Convention, an earlier trademark application or registration is regulated as a prerequisite in Article 6 (5).
Another distinction from Article 6 (4) is that Article 6 (5) provides protection not only in identical or similar classes of goods and services but also in the different classes. However, this should not be interpreted as the protection automatically expanding to different classes of goods and services. The well-known trademark owner should be in a position to illustrate that the use of the subsequent trademark is capable of taking unfair advantage of or being detrimental to the reputation or the distinctive character of its well-known trademark even in those different classes. This situation should be examined on a case by case basis by also taking into consideration the similarity between the trademarks, the originality and the degree of recognition of the well-known trademark, and the degree of difference between the goods and services of the trademarks.
Nevertheless, it can be said that unfair advantage generally occurs when the customers establish a link between the well-known trademark and the other trademark, and because of the good image created by the well-known trademark, their purchase preferences are directed to the trademark identical or similar to the well-known trademark. However, confusion as to the commercial source of the goods and services is not required for being capable of taking unfair advantage in the sense of Article 6 (5) of the Code.
Damage to the reputation or the distinctive character of the well-known trademark is usually referred to as “dilution” in doctrine and precedents. The General Assembly of Civil Chambers of the Court of Cassation explains that dilution occurs when the functions of quality, guarantee and advertising are damaged due to the use of an identical or similar trademark in different goods and services. When a third party offers goods and services with the well-known trademark but of lower quality than the goods and services of the genuine owner of the well-known trademark, the association between quality and the well-known trademark in the eyes of the customers loosens and thus the reputation of the well-known trademark is damaged. Again, in such a scenario, the distinctive character of the well-known trademark achieved through years of advertising and use would become obscured, because if someone else is also allowed to use the trademark identical or similar to the original well-known trademark even for different goods and services, customers will also recall the later and non-original trademark when they see the goods and services of the genuine well-known trademark.
As listed above in the conditions of Article 6(5), if there is a due cause for the use of the later trademark, the owner of the well-known trademark cannot prevent the registration of the respective later, identical or similar trademark. This negative condition of this article is introduced into Turkish law with the enactment of the Code in 2017 in line with EU regulations. The subjective interests of a third party in using the trademark are usually what constitute “due cause”. For instance, the Intellectual Property Office of the United Kingdom decided that the owner of the well-known trademark cannot prevent the use of later identical or similar trademark if such later trademark is composed of the name or surname of its owner.
5. How to Determine the Well-Known Status
In determining whether a trademark mark is well-known, the courts and the Office should consider any circumstances which may be associated with the well-known status of the respective trademark. The Code does not provide any criteria for such examination.
In its judgments on well-known status, the Court of Cassation usually refers to the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks which was published by WIPO in 2000 (“the Recommendation of WIPO”). According to Article 2 of the Recommendation of WIPO, the following should be taken into consideration when examining the well-known status of a trademark:
i. “the degree of knowledge or recognition of the mark in the relevant sector of the public.
ii. the duration, extent and geographical area of any use of the mark.
iii. the duration, extent and geographical area of any promotion of the mark, including advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or services to which the mark applies.
iv. the duration and geographical area of any registrations, and/or any applications for registration, of the mark, to the extent that they reflect use or recognition of the mark.
v. the record of successful enforcement of rights in the mark, in particular, the extent to which the mark was recognized as well known by competent authorities.
vi. the value associated with the mark.”
The Office also published its own criteria (18 in total) for the determination of the well-known status in 2006. In line with the criteria listed by Article 2 of the Recommendation of WIPO, the Office also requires the submission of the documents and information as to the registrations, the advertising and promotion activities, the scope of the use, and the previous decisions of the courts and the Office in relation to the trademark of which the well-known status is claimed.
According to the well-established precedents of the Court of Cassation, in lawsuit proceedings, the court experts should report their findings on the well-known status of the trademark in question. The court experts’ reports are usually prepared according to the criteria of WIPO and the Office. However, the criteria set out by WIPO and the Office should not be interpreted as an exhaustive and binding list but rather as a guideline which may and should be taken into consideration when examining whether a trademark is well-known or not.
Lastly, it should be noted that although the terms “well-known trademark” and “trademark with a reputation” are often used interchangeably in practice and even in this article, it may be argued that a lower level of recognition is sufficient for a trademark being considered as reputable with the meaning of Article 6 (5) than for being considered as well-known within the meaning of Article 6 (4).
6. Well-Known Trademark Registry in Turkey and the Recent Precedent of the Court of Cassation
The Office has a registry for well-known trademarks in the sense of Article 6 (4) and Article 6 (5) of the Code. The respective trademarks listed in the well-known trademark registry can be found here on the online trademark search engine of the Office by selecting the type of mark.
Any trademark owner can apply to the Office for the registration of its trademark with the well-known trademark registry by submitting all the relevant documents which may evidence that its trademark is well-known. If the Office decides that the trademark is well-known or has reached a degree of reputation in Turkey, the respective trademark is recorded with the well-known trademark registry.
Nevertheless, the Court of Cassation has recently taken a controversial decision on the respective authority of the Office. The 11th Civil Chamber of the Court of Cassation in its decision ruled that the Office is not authorized by law to keep a well-known trademark registry.  As of the publication date of this article, the Office continues to keep a well-known trademark registry, although there is no explicit provision granting such authority to the Office. However, even if the respective decision of the 11th Civil Chamber as to the authority of the Office is correct, this situation should not be construed as being recorded with the well-known trademark registry of the Office being entirely useless. The recording of a trademark with the well-known trademark registry can provide convenience to its owner when it comes to evidencing the well-known status before the Office and the courts. The owner of such trademark may submit the earlier decision of the Office on the well-known status of the trademark along with documents which had ensured obtaining such a favorable decision. As also indicated in the respective decision of the 11th Civil Chamber of the Court of Cassation, the well-known status should be examined on a case by case basis. Therefore, the documents proving the well-known status of the trademark should be updated each time when such an examination is necessary. Although the earlier decision of the Office approving the well-known status cannot be considered as legally binding to the Office’s subsequent actions and to the courts’ decisions, when the respective earlier decision of the Office is supported and updated with additional evidence, it may be a strong indicator for the well-known status.
The Turkish trademark law, which is mostly in line with the international legislation, grants well-known trademark owners the right to prevent the registration of trademark registrations filed by third parties through trademark opposition proceedings and invalidity lawsuits. Thus, the functions of well-known trademarks and the investments put into them are protected against unauthorized use, unfair advantage and dilution. If certain conditions are met, such protection also expands to the dissimilar goods and services of the trademarks.
The lists of criteria set out by WIPO and the Office are taken into consideration when determining the well-known status. Although the Office has a well-known trademark registry, a case by case examination is always necessary.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Attorney at Law | Trademark Attorney
 The Industrial Property Code numbered 6769 and published in the Official Gazette dated 10 January 2017 is the main piece of legislation regulating trademark law in Turkey.  The respective application may be either a national application or an international registration designating Turkey under the Madrid Protocol.  Court of Cassation General Assembly of Civil Chambers, decision numbered 2015/3127 E. and 2016/114 K. dated 29 January 2016.  Upon the successful examination of the Office on formal deficiencies and on the absolute grounds for refusal, trademark applications are published in the Official Trademark Bulletin for the two-month opposition period. The Official Trademark Bulletin is published every two weeks. The monitoring of the bulletin is important in order to identify identical and similar trademark applications and to file an opposition against them in due course.  The respective court’s jurisdiction is exclusive in lawsuits requesting the annulment of the final decision of the Office.  This also applies to the absolute grounds for refusal listed in Article 5 of the Code.  Cahit Suluk, Rauf Karasu, Temel Nal, Fikri Mülkiyet Hukuku, 1 Baskı, Ankara 2017, p.172.  Preamble of the Industrial Property Code numbered 6769 (available in Turkish) <https://www.turkpatent.gov.tr/TURKPATENT/resources/temp/D386475F-DF3B-4446-86EB-14B783211D78.pdf;jsessionid=D3C1B1A98CE8ADDF5474227DD561F5F4> accessed 18 November 2020  Agreement on Trade-Related Aspects of Intellectual Property Rights Trade Related Intellectual Property Rights <https://www.wto.org/english/docs_e/legal_e/27-trips.pdf > accessed 18 November 2020.  Suluk, Karasu, Nal, p.199.  Court of Cassation General Assembly of Civil Chambers, decision numbered 2013/656 E. and 2014/427 K. dated 2 April 2014.  Court of Cassation General Assembly of Civil Chambers, decision numbered 2013/11-1885 E. and 2015/1161 K. dated 8 April 2015.  Intellectual Property Office of the United Kingdom, Paco/Paco life in colour, decision numbered O/359/99 and dated 13 October 1999, <https://www.ipo.gov.uk/t-challenge-decision-results/o35999.pdf> accessed 23 November 2020.  WIPO, Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, <https://www.wipo.int/edocs/pubdocs/en/wipo_pub_833-accessible1.pdf> accessed 21 November 2020.  In accordance with Article 370 of the Presential Decree No. 4 published in the Official Gazette dated 15 July 2018, the Trademarks Department of the Office is responsible for the determination and implementation of the criteria in determining the well-known status of the trademarks.  Turkish Patent and Trademark Office, Rules Related to the Reputation Degree of the Trademarks and their Implementation (available in Turkish) <https://www.turkpatent.gov.tr/TURKPATENT/resources/temp/14FB57CE-E638-4606-A282-3CF89431CE1D.pdf> accessed 21 November 2020.  Ünal Tekinalp, Fikri Mülkiyet Hukuku, 5. Baskı, İstanbul 2012, p. 426 (as cited in Şule Dilmaç, Uluslararası Metinlerde Tanınmış Marka ve Markanın Sulandırılması, 1 Baskı, Ankara 2014, p.44).  11th Civil Chamber of the Court of Cassation, decision numbered 2019/2980 E. and 2020/991 K. dated 5 February 2020  To our knowledge, the respective decision has not been finalised as of the publication date of this article.