Significant changes to trademark legislation to be introduced

A bill amending Decree Law 556 on the Protection of Trademarks is due to be codified in the near future. The bill introduces significant changes - some of them quite controversial - and will affect companies with a trademark portfolio in Turkey.

Under the current decree law, “any sign capable of being represented graphically or by similarly descriptive means” may be registered as a trademark. However, under the bill, it will be possible to register only "signs capable of being represented graphically". Therefore, the registration of non-traditional trademarks, such as sound or olfactory marks, will become more difficult - or even impossible.

Moreover, the grounds for refusal set forth in the current legislation will be maintained: the bill prohibits the registration of a trademark that is identical or confusingly similar to an earlier trademark registered for identical or similar goods and/or services. The bill thus follows the 'interventionist' approach of the Turkish Patent Institute, which is based on the protection of the public interest. However, some commentators claim that the institute should not apply this provision too strictly and should take letters of consent into account.

Under the bill, a 'well-known trademark' will be defined - due to a mistranslation of Article 16(2) of the Agreement on Trade-Related Aspects of Intellectual Property Rights - as a mark that is “known by everyone in Turkey”. The bill places emphasis on the “level of recognition of the mark within Turkey”, rather than focusing on the “level of recognition among the relevant public”. Well-known trademarks will be protected against the use of a similar trademark for dissimilar goods and/or services.

 

Nevertheless, the bill clarifies some important issues. For example, under the current legislation, the starting date of the five-year period for filing a cancellation action on the grounds of non-use is unclear. The bill expressly provides that the starting date is the date of publication of the registration. Moreover, the bill states that the filing of an application in bad faith may constitute a ground for cancellation of a mark. The bill also puts an end to the uncertainty as to a trademark owner's right to prevent the registration of its mark by an unauthorized agent: the bill clearly states that the trademark owner may prevent such registration or request the transfer of the mark to itself. Finally, the bill provides that the courts - rather than the Patent Institute - have the authority to determine whether a mark is well known.

 

However, the bill fails to address certain problematic issues. For example, the time extensions available for proceedings before the Patent Institute are inadequate, as they do not apply to oppositions and appeals.