Entitlement to rights derived from extensive use broadened

The Turkish Patent Institute (TPI) has issued a decision which indicates that rights to a trademark may be derived, in some circumstances, from extensive use in member countries of the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

Under Decree-Law 556 on Trademarks, trademark protection begins with the registration of the trademark with the TPI and is effective retroactively to the application date. Trademark registration provides ownership. However, the rights of the holder of genuine rights in a trademark obtained through prior extensive use in the market are also protected pursuant to Article 8/3 of the decree-law, which states that:

"Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade, the trademark applied for shall not be registered provided that (i) the rights to the sign were acquired prior to the date of filing for registration of the trademark or the date of priority claimed for the application for registration, [and] (ii) the sign confers on its proprietor the right to prohibit the use of a subsequent trademark."

The right to prohibit use of a subsequent trademark is a hotly debated issue. In practice, the TPI had limited the definition of 'extensive use' to use in Turkey and such practice was validated by the Court of Appeal. However, in a recent opposition action (Case 2007-O-121346, April 16 2007), the TPI rejected a national trademark application filed for the mark MAROQUINIER NATHAN-BAUME-N, which was highly similar to the opponent's trademark N NATHAN BAUME registered and used in some convention and TRIPs member countries. The prior mark was neither registered nor used nor known in Turkey.

In a similar decision issued last year (Case 2006-O-37206 , February 10 2006), the TPI rejected an application to register the mark OVIESSE in Turkey on the grounds that it was identical to the opponent's trademark OVIESSE, which had been extensively used in other convention and TRIPs member countries. The TPI reached the decision even though the prior mark was neither registered nor used nor known in Turkey.

In light of these recent changes in the TPI's practice, it appears that extensively used and registered trademarks in convention and TRIPs countries that are not registered and/or used in Turkey enjoy protection in opposition actions.

Bilge Saltan, Mehmet Gün & Partners, Istanbul