Trademark applications filed in bad faith are regulated in Article 6/9 of the Industrial Property Code (“Code”) numbered 6769 as one of the relative grounds for refusal. Accordingly, such applications are rejected by the Turkish Patent and Trademark Office upon the opposition of third parties. Detailed information on the relative grounds for refusal and opposition procedure against a trademark application may be accessed here, in another one of our articles.
Moreover, according to Article 25 of the Code, invalidation of a registered trademark made in bad faith may be requested from the competent court due to being a ground for invalidation. Detailed information on invalidation actions may be accessed here, in another one of our articles.
However, the bad faith term remains hypothetical as the Code does not explicitly explain what actions constitute bad faith. Therefore, in this article, we will explain how the Court of Cassation interprets bad faith in trademark applications.
An Interpretation of the Court of Cassation
Trademark applications made in bad faith are defined in the settled Court of Cassation decisions as follows:
“According to the general acceptance in Trademark Law, applications and registrations for the purpose of unfairly benefiting from someone else’s trademark by misusing the trademark protection provided by registration, or for the purpose of backing up, trademark trade or blackmail without actually using it are considered bad faith.”
Although the respective explanation of the Court of Cassation provides some insight into how we can identify bad faith, the existence of bad faith should be determined by considering the characteristics of each case.
Some Cases That Cause Bad Faith in Trademark Applications
By the Court of Cassation’s practices, some examples of trademark applications filed in bad faith are provided below. However, the examples provided are not an exhaustive list, and any trademark applications which fall into the scope of the interpretation of the Court of Cassation may constitute bad faith.
Copying unique trademarks: According to the Court of Cassation’s decisions, unique trademark applications that have highly distinctive quality, cannot be selected or created randomly as a combination of words or shapes, and that contain phrases or forms registered or used within the country or abroad are filed in bad faith. In the decision of the Court of Cassation, it is stated that the plaintiff’s trademark named “LEXUS” is an original phrase that could not have been chosen by chance. Therefore, it is concluded that the defendant’s trademark named “ANL CHOCO LEXUS” was made to gain an unfair advantage from the plaintiff's trademark and constitutes bad faith.
Copying well-known trademarks: In order to benefit from the trust and reputation of the trademarks that have reached high recognition in the market, the same or very similar trademarks being the subject of a trademark application or registration is considered absolute grounds for refusal and bad faith according to the Court of Cassation decisions.
Repeating Trademarks: For overcoming the genuine use requirements regulated in Turkish trademark law, the trademark applicant files identical trademark applications to the trademark applicant’s previous trademark without usage intentions.
Ambush Trademarks: The trademark applicant aims to ambush others with trademark applications that provide unfair profits by demanding high prices from those who want to apply for the trademark. In addition to filing trademark applications, the trademark applicants may file lawsuits without legal benefit to obtain compensation from the other parties.
Defensive Trademarks: The trademark owner defends trademark rights by filing trademark applications that are similar to the main trademark for those goods and services which the trademark owner has no intention to use. If the sole aim of the trademark owner is to prevent the registration of a third party’s trademarks, it may constitute bad faith.
Other Known Cases: Applying for a new trademark by copying an earlier trademark application, trademark registration, or trademark without registration but being used by a third person may constitute bad faith even if the earlier trademark does not fall into the scope of “unique” or “well-known” trademarks. Another example is applying or registering a trademark in the name of the commercial representative without good cause or the consent of the trademark owner.
What is always important in bad faith claims is to determine the intention of the applicant, which can only be achieved through a case-by-case analysis by laying out all facts related to the trademark at hand and the parties involved.
11th Civil Chamber of the Court of Cassation, decision numbered 2011/11371 E, 2013/12306 K. dated 12 June 2013; Court of Cassation General Assembly of Civil Chambers, decision numbered 2008/507 K. dated 16 July 2008.  11th Civil Chamber of the Court of Cassation, decision numbered 2019/359 E., 2019/7279 K., dated 18 November 2019.  11th Civil Chamber of the Court of Cassation, decision numbered 2010/15280 E., 2012/6156 K., dated 16 April 2012.  Ankara 1st Civil Court of Intellectual and Industrial Property Rights, decision numbered 2015/47 E., 2016/320 K., dated 29 December 2016.
For further queries, please contact:
Dogukan Berk Aksoy, LL.M.
Attorney at Law | Trademark Attorney | Patent Attorney
T: +90 312 969 09 63
Evren Firat Goklu
Attorney at Law | Trademark Attorney