Unregistered trademark rights include stylised use of word mark

Turkey

The principle that trademark protection can be achieved through registration is recognised by the Turkish Trademark Decree-Law No 556, but it is not the only way to acquire protection.

Trademark rights can be gained in two ways:

  1. by registering a trademark before the Turkish Patent Institute (TPI); and
  2. by being the first to use a trademark and by the mark becoming known in the market.

The second way, known as ‘genuine rights ownership’ in the doctrine, gives the trademark owner the right to oppose unfair registrations before the TPI even if its trademark is unregistered. A recent decision of the TPI shows that ‘genuine rights ownership’ may also cover the use of the trademark in a stylised form, as well as any prior use of the mark.

The opponent, a worldwide-known European street-fashion clothing company, became aware of a trademark application by a Turkish textile company for clothing and clothing retail sales services. The application was a combination of both the word and device trademarks of the opponent; in addition, the word element of the mark applied for copied the opponent’s stylised use of the word mark.    

    

Opponent’s device and word trademarks (registered elsewhere in the world, but not in Turkey)

Opponent’s word mark as used

Opposed trademark

As the opponent’s word trademark is not registered in Turkey, it claimed in its opposition that:

  • it had prior rights in, and was the first to use, its word mark;
  • it had registered rights in its device mark for Class 25 goods;
  • there was a likelihood of confusion between the parties’ trademarks, since the application was a combination of the opponent’s word and device marks; and
  • the application had been filed in bad faith since, as well as combining the opponent’s trademarks, it also copied the stylised use of the latter’s word mark.

In its examination of the opposition, the TPI stated that not only the genuine rights over the word mark, but also its stylised use, should be considered as prior use of that trademark. Accordingly, it found that the bad-faith claim was justified. The TPI thus upheld the opposition and rejected the application in its entirety.

Reviewing past TPI’s decisions, it is not surprising that genuine rights over a trademark also cover prior use. However, in this case, the TPI also considered that the stylised use of a trademark amounted to genuine rights and protected both the opponent’s device and word trademarks under the principle  of ‘genuine rights ownership’ introduced by the Trademark Decree-Law.

Ceylin Beyli and Elfiye Kudaki, CBL Law Office, Istanbul

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