Well-Known Trademark in Turkish Legislation
Current legislation regulating the protection of trademarks is the Decree-Law No.556 Pertaining to the Protection of Trademarks which has entered into force with the Official Gazette numbered 22326 on 27.06.1995 (“Decree Law No.556”). In order to benefit from the special protection provided by Decree Law No.556, trademarks must enter in the trademark registry before Turkish Patent Institute (“TPI”). A trademark, which is registered in this manner, shall grant a limited protection to its owner in respect of the (identical or similar) goods and services for which it is to be registered.
On the other hand, a well-known trademark enjoys enhanced protection under Turkish trademark law. The most important characteristic of a well-known trademark is to provide its owner not only a protection against (identical or similar) goods or services for which it is registered but also the protection against different goods and services. Other important characteristic of well-known trademarks is that they constitute an exception to the principle of registration. Namely, it is not conditional for a well-known trademark, which is in the scope of 1967 Paris Convention for the Protection of Industrial Property (“Paris Convention”), to be registered in Turkey in order to benefit from the protection concerning absolute and relative grounds for refusal for registration of a trademark.
As per the Article 6bis of the Paris Convention (of which Turkey is a party), it has been regulated as follows: “The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods.” As per the said article, party states have committed to protect a well-known trademark. However, it must be stated that “well-known trademark” has been identified neither in Turkish trademark legislation nor in foreign legislations including Paris Convention and Decree-Law No: 556.
Therefore, certain criteria are being used in order to determine a well-known trademark.
First of all, according to the various Supreme Court decisions, a well-known trademark has been identified as “… an association which (i) is strongly engaged to a person or an entity, (ii) has guarantee, quality, advertisement and wide distribution system and (iii) is given shape reflexively by the people in the same environment without making a distinction between customers, relatives, friends, enemies and without considering the difference between geographical borders, cultures, age gaps…” (Supreme Court 11th Civil Chamber’s decision dated 11.03.1998 and numbered 1997/6547 E. and 1998/1704 K.). Supreme Court does not use solely the identification provided herein above when deciding whether a trademark is well-know. There are other criteria used by the Supreme Court in addition to its own identification.
First of all, doctrine suggests that a well-known trademark is a trademark which is known in the related environment (not necessarily in all around the world) and belongs to a citizen of a state which is party to the Paris Convention or to an entity residing in or having commercial or industrial undertaking in party states and a well-known mark is not a mark which is popular only in one or more than one area of a state (Prof. Dr. Ünal Tekinalp, Intellectual Property, p.351). Also this view is frequently-cited by the Supreme Court. According to the another view cited by the Supreme Court, in order to be identified as a well-known trademark across the state or in international context, the trademark must symbolize an undertaking or its products or it must be accepted by the large mass of people that the trademark has a super quality. Therefore, a well-known trademark has two functions; (i) distinguishing the goods and services of one undertaking from the goods and services of other undertakings, (ii) providing very high quality apart from the competition concerns (Prof. Dr. Hamdi Yasaman, In Memory
of Halil Aslanlı 1978, p.691). To sum up, doctrine’s generally accepted criteria are as follows:
(i) strong advertising network, (ii) guarantee, (iii) strong engagement to a real or legal entity, (iv) not only the recognition in the environment related to the goods and services bearing that brand but also the recognition of the entities which are not related to that good and service and (v) successful marketing system.
In addition, other source used by the Supreme Court in order to determine a well-known brand is The Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”). As per the Art. 16/2 of TRIPS, in order to be qualified as a well-known trademark it is required to have (i) a wide distribution network in the state and (ii) recognition in the related sector and acquiring this recognition through promotion.
As per the World Intellectual Property Organization’s (“WIPO”) advisory decision numbered A/34/13, the following criteria must be considered in order to determine whether a trademark is a well-known trademark: (including but not limited to these) (i) trademark’s operating time, (ii) prevalence, (iii) scope and geographical extent, (iv) economical value, (v) advertisement, (vi) promotion, (vii) certain activities such as attending to the fairs, organizing them or preparing
catalogues and scope, duration and budget of these activities, (viii) size and turnover of the undertaking, (ix) how efficiently and effectively trade mark right is protected, (x) the decisions which determine a well-known characteristic of a brand and which have rendered by the courts or other authorized offices. Even if this advisory decision is not binding for member states, these are considered by the Supreme Court together with the facts of concrete case in order to determine the well-known character of a trademark.
To register a trademark with the Well-Known Trademark Registry before TPI, the owner must provide:
- international trademark registration certificates showing the extent of the trademark
- documents showing the duration of the trademark use and the trademark's historical
- consumer surveys and opinion polls (if there is any); use in different geographical areas;background;
- documents, reports or surveys showing the trademark value;
- previous court or official authorities’ decisions acknowledging the well-known
- advertisement, promotion materials and sponsorships in Turkey (brochures,
- the average visitor number to the website on which the trademark is presented (if
- documents showing the historical background, size, employees, capital, interest,
- rewards granted to the trademark holder by independent authorities for the goods
- articles on the trademark in the press or in specialized publications;
- documents demonstrating the market share enjoyed by the products sold under the
character of the trademark; catalogues, copies of television, radio and printed advertisement of the goods and services performed under the trademark);
there is any); branches, offices and licensors of the applicant company that owns the trademark;and/or services performed under trademark;trademark, including the sales volume and the turnover attributable to the products' sales.
The Well-Known Trademarks Registry facilitates determination of a trademark's well-known status. Even if the well-known trademark registration is not indisputable in a future court or TPI claim, it is still substantial evidence of a trademark's reputation, and it significantly reduces the burden of proving the well-known status of a trademark. as per the Art.7/1-I of Decree Law No.556, being a well-known trademark is an absolute ground for refusal for registration of a trademark with respect to identical or similar goods and services and also with respect to different goods and services. TPI takes absolute grounds for refusal into consideration ex officio and refuses the application in case one of the circumstances provided in the Art.7 exists unless the owner of the well-known trademark accepts the registry of the well-known trademark in behalf of the third party. However, registry by acceptance is only applicable for different goods and services, it is not possible for identical or similar goods and services. If it is somehow registered without facing any objection then the owner of well-known trademark has the right to claim the invalidity of the trademark as per the Art.42. Even if the well-known trademark has not been registered in Turkey, it cannot be obtained as a trademark by a third party for identical goods and services and this instance is
considered by the courts ex officio (Also for the different goods and services, owner of the well-known trademark shall have the tight to object as a result of unfair benefit). Statute of limitations for this lawsuit is 5 years and it shall start to run as from the date of registry. In case there is bad faith, then the lawsuit concerning invalidity shall not be subject to any statute of limitations (Art.42(1)-a,I of Decree Law No.556). To sum up, as per the 6bis of the Paris Convention, party states committed to refuse or invalidate the trademark of the entity who violates a well-known trademark directly pursuant to the regulations and indirectly upon the request of related entity.