Introduction

Trademark owners often permit third parties to use their trademarks in order to expand into new markets or strengthen their commercial presence in existing ones. Such arrangements allow trademark owners to benefit from broader distribution and marketing opportunities with reduced investment and operational burden.

In practice, however, individuals who are authorized to use a trademark on behalf of the rightful owner may occasionally exceed the scope of their authority and seek trademark protection in their own name. This issue most commonly arises where foreign trademark owners authorize local distributors, agents, or business partners to use their marks in Turkey, only to discover that the local party has filed or registered the trademark in its own name.

The Turkish legal framework provides specific remedies against such conduct. Articles 6(2) and 10 of the Industrial Property Code No. 6769 (IP Code) establish legal mechanisms that trademark owners may rely upon when a commercial agent or representative files or registers a trademark without authorization.

Who Qualifies as a Commercial Agent or Representative?

Under Article 547 of the Turkish Code of Obligations No. 6098, a commercial representative is a person authorized, expressly or implicitly, to manage a commercial enterprise and represent the business owner in transactions conducted under the trade name.

Article 551 of the same law defines a commercial agent as a person authorized to manage a commercial enterprise or conduct certain business activities without being granted the broader authority of a commercial representative.

For the purposes of IP Code Arts. 6(2) and 10, however, the concepts of commercial agent and representative should not be interpreted narrowly. Turkish legal scholarship generally accepts that these provisions may also apply to parties acting under distributorship, franchise, agency, service, or similar commercial arrangements where a relationship of trust exists between the trademark owner and the party using the mark (1).

Legal Remedies Against Unauthorized Trademark Applications and Registrations

IP Code Art. 6(2) establishes a relative ground for refusal where a commercial agent or representative applies for the registration of a trademark that is identical or indistinguishably similar to the trademark owner’s mark without authorization.

Accordingly, if the unauthorized application has not yet matured into registration and is still within the two-month opposition period following publication in the Official Trademark Bulletin, the trademark owner may file an opposition based on IP Code Art. 6(2). This mechanism provides an efficient administrative remedy that may prevent registration without the need for court proceedings.

It should also be noted that IP Code Art. 6(2) does not establish an absolute prohibition. The commercial agent or representative may seek to demonstrate a legitimate justification for filing the application. Whether such justification exists must be assessed on the specific facts of each case.

Where a commercial agent or representative seeks registration of the trademark without any legitimate justification, trademark owners should also consider whether additional grounds may be available. Depending on the circumstances, prior use rights under IP Code Art. 6(3), protection afforded to well-known marks under IP Code Art. 6(4), bad faith under IP Code Art. 6(9), or other applicable grounds may provide additional grounds for protection.

If the unauthorized application has already proceeded to registration before the Turkish Patent and Trademark Office (TPTO), the trademark owner may initiate an invalidation action before the court under IP Code Art. 25 based on IP Code Art. 6(2), along with any other applicable grounds for invalidation.

Transfer of the Trademark Registration

Separately, IP Code Art. 10 grants a more specific remedy. Where a trademark has been registered by a commercial agent or representative without the owner’s consent, the trademark owner may request either:

• prohibition of the trademark’s use; and/or

• transfer of the trademark registration to the rightful owner.

Opposition proceedings under IP Code Art. 6(2) are administrative proceedings conducted before the TPTO, whereas transfer and prohibition claims under IP Code Art. 10 may only be pursued before the courts.

Judicial Perspective on Trademark Transfer Claims

Turkish courts have repeatedly recognised that trademark owners may seek either invalidation based on IP Code Art. 6(2) and related provisions or transfer of the registration under IP Code Art. 10, depending on the circumstances of the case.

As stated by the Court of Cassation (2):

“For a transfer order to be granted under Article 10 of the IP Code, the trademark registered by the commercial agent or representative must be identical or virtually identical to the trademark belonging to the trademark owner.”

This distinction is important in practice. A transfer claim under IP Code Art. 10 generally requires the disputed trademark to be identical or nearly identical to the owner’s mark. Where such a degree of similarity is absent, a transfer claim may not succeed. Nevertheless, if the later mark remains confusingly similar, an invalidation action based on other grounds, including bad faith, may still be available.

In another decision, the Ankara Civil IP Court held that an exclusive distributorship agreement established a sufficient commercial relationship between the parties and that the distributor acted as a commercial agent or representative for the purposes of the IP Code (3).

By contrast, the Regional Court of Appeal of Istanbul concluded that a contract manufacturing relationship did not constitute a commercial agency or representative relationship and therefore rejected the transfer claim (4).

These decisions demonstrate that the existence and nature of the underlying commercial relationship play a decisive role in determining whether IP Code Art. 10 can be successfully invoked.

Practical Implications

Trademark owners should carefully monitor trademark filings in jurisdictions where their marks are used by distributors, agents, franchisees, or other commercial partners.

Where an unauthorized application is detected during the opposition period, opposition proceedings will generally constitute the most efficient and cost-effective remedy.

If registration has already occurred, trademark owners should assess whether the circumstances support a transfer claim under IP Code Art. 10 or whether an invalidation action based on relative grounds and bad faith would be more appropriate.

From a strategic perspective, transfer actions may offer significant advantages because they enable the rightful owner to obtain ownership of the existing registration rather than merely eliminating the infringing registration and filing a new application.

As a preventive measure, trademark owners should ensure that distributorship, agency, franchise, and similar agreements clearly provide that the relevant party is not authorised to file, register, claim ownership of, or otherwise seek protection for the trademark in its own name. Such provisions may serve as important evidence of the parties’ intentions and help reduce the risk of future disputes.

Our Assessment

In our view, IP Code Art. 10 represents one of the most powerful yet underutilized remedies available to trademark owners facing unauthorized registrations by business partners, distributors, or agents.

While invalidation actions remain an important enforcement tool, transfer claims may often provide a more commercially efficient outcome by preserving the registration and avoiding the need to refile the trademark.

Nevertheless, the success of a transfer claim will depend heavily on whether the defendant can be characterized as a commercial agent or representative within the meaning of the legislation and whether the trademarks are sufficiently similar to satisfy the requirements of IP Code Art. 10.

From a strategic perspective, a transfer claim under IP Code Art. 10 should not necessarily be viewed as a substitute for invalidation claims. In cases where the existence of a commercial agency or representative relationship may be disputed, or where additional grounds are available, trademark owners may wish to pursue transfer and invalidation claims concurrently. Grounds such as IP Code Art. 6(2), bad faith, prior rights, or other applicable causes of action may provide an additional layer of protection should the requirements for transfer not be satisfied.

Strategic Takeaway

• Monitor trademark filings involving distributors, agents, and local business partners.

• File an opposition immediately if the unauthorized application is still within the publication period.

• Consider bad faith claims alongside IP Code Art. 6(2) arguments.

• Assess whether transfer under IP Code Art. 10, invalidation claims, or a combination of both may offer the most effective remedy.

• Assess the underlying commercial relationship carefully, as it may determine the availability of the transfer remedy.