Trademarks may become well known quickly thanks to Internet

According to Article 8 of the Turkish Trademark Decree-Law No 556, if a trademark application might take unfair advantage of, or be detrimental to, the reputation or distinctiveness of a well-known trademark, the application may be rejected even though it covers different classes of goods and/or services. When examining oppositions based on this ground, the first issue to consider is whether the trademark on which the opposition is based is well known in Turkey.

The Turkish Patent Institute (TPI) applies particular criteria in order to determine the well-known status of a trademark. These criteria can be summarised as follows:

• awareness of the trademark among the community;

• the promotional activities concerning the trademark; and

• the period of time during which the trademark has been used.

The last criterion (period of use) is generally an important factor to determine the level of reputation of a trademark. However, following a recent decision of the TPI, it seems that, when considering this criterion, the TPI will also take into consideration the impact of today’s technologies. Further, it appears that the TPI will consider the use of technology as an important factor affecting the period of use of a trademark, as well as removing the territorial boundaries of such use.

A Danish mobile game developer, creator of an application which is one of the most downloaded games in the world, opposed a trademark application which was very similar, if not identical, to its trademark, even though the application covered different classes of goods. 

Opponent’s registered trademark in Turkey                   Opposed trademark

The Danish company’s trademark can be considered as a ‘young’ trademark, since it is used for a mobile game application developed just two years ago. Regardless of this fact, the opponent claimed that:

• the mark applied for could damage the distinctiveness of its trademark and take unfair advantage of its reputation, since the mark had become well known rapidly all over the world, including Turkey, due to technological factors such as the Internet and tablet/smartphones; and

• the bad faith of the applicant was obvious, since he was a lawyer active in the field of intellectual property in Turkey.

The TPI upheld all of the opponent’s claims and decided to reject the application. It is understood that the TPI took into account the impact of today’s technologies when assessing the well-known status of the opponent’s trademark, and found that the mark was well known even though it was only two-years-old. Additionally, it appears that the main reason for the TPI accepting that the application was malicious was the fact that the applicant was an IP lawyer who must have been aware of the opponent’s IP rights, due to his line of profession, before filing the application. It seems that the TPI considered this fact as sufficient proof of the applicant’s bad faith, without looking for further concrete proof.

Following this decision, it seems that, when determining the well-known status of a trademark, the TPI will examine the link between the trademark’s life and its well-known status in accordance with present-day conditions, and take into consideration the impact of the Internet when making a decision. Thanks to the Internet, trademarks are now becoming well known faster and without territorial boundaries.   

Ceylin Beyli and Elfiye Kudaki, CBL Law Office, Istanbul