Turkey: Trademark procedures and strategies
At the national level, trademarks are governed by Industrial Property Code No. 6769 (the IP Code), which entered into force on 10 January 2017.
Turkey is a signatory to several key treaties and conventions including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Madrid Protocol. As a member of WIPO since 1976, Turkey follows the Nice Classification system. Turkey is also a party to the Vienna Convention, the Convention Establishing the World Trade Organization and the Trademark Law Treaty.
Unregistered trademarks can be protected in accordance with the provisions of Articles 6/3 and 6/4 of the IP Code as well as the provisions on unfair competition in Turkish Commercial Code No. 6102.
Article 6/3 of the IP Code regulates relative grounds for rejection of a trademark application upon opposition from a trademark owner based on an unregistered trademark or another sign used in the course of trade before the application or priority date. This provision can also be invoked as grounds to invalidate a registration.
In terms of enforcement, unregistered trademarks may be enforced within the context of unfair competition.
In establishing unregistered rights, evidence that proves continuous and extensive use of an unregistered trademark within the territory of Turkey is needed together with evidence indicating that the unregistered trademark acquired some level of distinctiveness or recognition, or both, in the relevant industry.
According to Article 3 of the IP Code, the following can apply for and own a trademark before the Turkish Patent and Trademark Office (TÜRKPATENT):
- citizens of Turkey;
- natural or legal entities domiciled or engaged in industrial or commercial activities within Turkish borders;
- persons who have the right of application according to the provisions of the Paris Convention or the WTO; and
- persons who are the citizens of the states that provide protection of industrial property rights to the citizens of Turkey, according to the principle of reciprocity.
Natural or legal entities domiciled abroad must be represented by a chartered trademark agent to file a trademark application before TÜRKPATENT.
A power of attorney (POA) is not required to be submitted to TÜRKPATENT during the filing of a trademark application. However, a trademark agent should hold a POA in the name of their clients, and TÜRKPATENT has the discretion to request the submission of the original or a certified copy of the POA.
Registrable and non-registrable signs
According to Article 4 of the IP Code:
Trademarks may consist of any signs like words, including personal names, devices, colours, letters, numbers, sounds and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings and being represented on the register in a manner to determine the clear and precise subject matter of the protection afforded to its owner.
According to Article 5 of the IP Code, some marks cannot be registered as trademarks. This includes marks that:
- do not comply with the terms of Article 4;
- are non-distinctive;
- are descriptive;
- are identical or indistinguishably similar to a prior-dated trademark application or registration covering identical – or the same kind of – goods or services;
- are commonly used in trade, or used to distinguish members of a particular occupational, art or trade group;
- consist exclusively of the shape or another characteristic resulting from the nature of the goods themselves, or the shape or another characteristic of goods that is necessary to obtain a technical result or gives substantial value to the goods;
- are deceptive;
- are to be refused pursuant to Article 6ter(2) of the Paris Convention;
- are of public interest in terms of historical and cultural values, and include badges, emblems or escutcheons unless approved by the competent authority;
- contain religious values or symbols;
- are contrary to public policy or accepted principles of morality; and
- consist of or contain registered geographic indications.
A trademark that is found to be non-distinctive, descriptive and commonly used in trade may still be registered if the trademark was used before the application date and acquired distinctiveness for the claimed goods or services. Acquired distinctiveness of a trademark is examined by TÜRKPATENT only in cases of appeals filed by a trademark applicant against a decision of rejection on absolute grounds.
A trademark that is found to be indistinguishably similar to an earlier trademark may still be registered if the owner of the earlier mark provides a letter of consent (LOC). If the LOC is signed in a foreign country, it must be notarised and legalised. A LOC may be submitted either simultaneously with the filing of a trademark application or along with a response to a possible decision of rejection.
Once a trademark application is filed – either directly with TÜRKPATENT or via WIPO under the Madrid Protocol – the application undergoes an examination on formal and absolute grounds.
TÜRKPATENT initially examines the application formally to check the accuracy and completeness of the information, documents and classification, and the official fees required for filing.
If no inaccuracy or deficiency is detected, TÜRKPATENT goes ahead with the examination on absolute grounds in accordance with Article 5 of the IP Code.
In the case of any office actions issued against the application, the applicant may respond or appeal within a non-extendable period of two months.
If the trademark application passes its examination on formal and absolute grounds, or if an applicant overturns a decision of rejection through an appeal, the application is published in the Official Trademarks Bulletin for an opposition period of two months.
In the case of a decision of partial acceptance, the application is published for the goods or services that are not subject to rejection. If the applicant manages to overturn the decision of partial rejection, the application is republished in the Official Trademarks Bulletin for another period of two months for the goods or services, upon which the decision of partial rejection is withdrawn.
The timeframe from the date of filing of a national application to registration is approximately eight to 10 months when there are no office actions or oppositions. The timeframe may be longer for international applications filed through WIPO.
Interested third parties may oppose an application on absolute or relative grounds within two months of the publication date of the application.
During the examination of the opposition, TÜRKPATENT requests the applicant’s response, which must be filed within one month. If the applicant does not file a response, TÜRKPATENT still examines the opposition on the merits and issues a decision.
If the trademark, which is the ground for opposition, has been registered for at least five years as at the filing (or priority) date of the opposed application, TÜRKPATENT asks the opponent to submit evidence of genuine use of their trademark during the five-year period before the filing (or priority) date of opposed application upon the request of the applicant.
If the opponent fails to prove use or submits a justified reason for lack of use, and in the absence of other grounds that may result in acceptance of the opposition, the opposition is rejected. If it is proven that the trademark, which is the ground for opposition, has been used only for some of the goods or services covered by registration, then the opposition is examined considering those goods or services.
TÜRKPATENT may reject the application partially or entirely if it determines that the opposition has been justified.
Any party unsatisfied with the decision may file an administrative appeal within two months.
The Board of Re-examination and Re-evaluation (the Board) reviews the appeal and grants the parties a period of one month to submit their counterviews. In the absence of counterviews, the examination is conducted considering the existing documents and information.
Any party unsatisfied with the decision of the Board may file a civil lawsuit before the IP Court of Ankara within two months. The plaintiff must name TÜRKPATENT and the other party or parties to the opposition or appeal as co-defendants.
An opposition is usually decided within three to six months of filing, whereas an appeal filed before the Board is usually decided within four to eight months of filing.
If a trademark application faces no opposition or an opposition results in favour of the applicant, TÜRKPATENT sends the applicant or their trademark agent a notice of acceptance for payment of the official fees for registration.
If payment is made within two months, the application proceeds to registration and TÜRKPATENT sends the applicant or their trademark agent a trademark registration certificate.
A trademark is registered for a protection period of 10 years as of the application date.
A registration may be renewed for further periods of 10 years. A renewal application can be filed up to six months prior to the expiration of the 10-year period or with payment of a fine within the grace period (i.e., within six months of the expiration of the 10-year period).
A declaration concerning use or intention of use of a trademark is not required by the IP Code either for registration or renewal.
Invalidation and cancellation actions
Trademark registrations may be subject to invalidation claims based on absolute and relative grounds for rejection under Articles 5 and 6 of the IP Code.
According to Article 9, a trademark owner is required to use its registered trademark. If a trademark has not been put to genuine use within a period of five years of the registration date by the trademark owner or if such use has been suspended during an uninterrupted period of five years, a trademark can be cancelled due to non-use unless there are justifiable reasons for non-use.
Non-use cancellation actions are currently being heard by IP civil courts, but TÜRKPATENT will be the authority to examine cancellation requests for non-use after 10 January 2024.
Other causes for cancellation of a trademark are if:
- a trademark has become generic for the goods or services for which it is registered;
- a trademark misleads the public regarding the nature, quality or geographic origin of the goods or services for which it is registered as a result of the use by the trademark owner itself or with the trademark owner’s consent; and
- the continuous use of the collective mark or the guarantee mark is contrary to the technical specification and is not corrected within the prescribed period as regulated by Article 32 of the IP Code.
Merger and change of name
Structural changes in trading companies, such as mergers or changes of names, can be recorded against the trademark applications or registrations of the subject companies, or both, before TÜRKPATENT.
The recordal of change of name takes up to one month as of the filing of the application with complete documents, whereas the recordal process takes up to two months for a recordal of merger.
Official clearance searches
Official TÜRKPATENT searches are available for device marks or logos and word marks – including slogans – in addition to non-traditional marks.
These searches are carried out by TÜRKSMD, an affiliate of TÜRKPATENT. They reveal identical and similar marks in either all classes or selected classes as requested.
According to Article 29 of the IP Code, unauthorised use of a sign that is identical or similar to a registered trademark for identical or similar goods or services and is, therefore, liable to create a likelihood of confusion including association on the part of the public constitutes trademark infringement. Use of a sign – without due cause – that is identical with or similar to and would take unfair advantage of or damage the distinctive character or repute of a registered trademark due to its reputation in Turkey – irrespective of whether the goods or services are identical, similar or different – is also considered to be trademark infringement.
Second, the IP Code prohibits the use of an infringing trademark by a third party that is aware or should be aware that the trademark is counterfeited. The sale, distribution, putting on the market, possession for commercial purpose, importation and exportation of the products carrying that infringing trademark or offering to make a contract related to the infringing product is also prohibited by law.
Finally, the unauthorised broadening of the transfer of the rights given by the trademark owner through licensing to third parties also constitutes infringement.
On the other hand, the provisions of Turkish Commercial Code No. 6102 regarding the exercise of unfair competition prohibits:
- activities that cause confusion with the products, business or activities of another;
- use of any sign that is confusingly similar to a third party’s product, trade or company name, or trademark; and
- the sale or the possession, or both, of goods likely to cause confusion for commercial purposes.
A trademark owner can file a lawsuit before an IP court against an infringer for trademark infringement or unfair competition, or both. A trademark owner can also file a penal complaint or civil action against the infringer.
The remedies based on trademark infringement and unfair competition in civil actions include:
- preliminary and permanent injunctions for prevention of use;
- seizure of infringing goods;
- removal of infringing trademark from infringing goods and, if necessary, destruction thereof;
- removal of infringing use from the internet;
- publication of the court decision in a newspaper; and
- material or moral damages, or both.
There is no minimum or maximum amount set by the law for either material or moral damages that can be claimed in a civil action. Material damages would be calculated by court experts and moral damages would be decided by the judge according to the specifications of the case. Material damages are actual damages caused by infringement as well as loss of profits.
An obligatory mediation process is required to claim damages in an infringement action.
Trademark infringement is a criminal offence under the IP Code. A complaint can be filed before the relevant public prosecutor by the registered trademark owner and, through an indictment from the public prosecutor, the Criminal Courts of Peace may issue a search and seizure order that would result in a police raid. If infringement is confirmed through search and seizure proceedings, a penal suit may be introduced by the relevant public prosecutor before the criminal court. Quick destruction is possible at the request of a public prosecutor if the goods are at risk of damage, if there is a risk of fundamental decrease in value or if the storage will cause high expenses, provided that the court’s expert examination confirms that the goods are counterfeit.
Before a penal action is initiated, the parties are invited to a compulsory conciliation process. An infringer may be sentenced to a judicial fine or imprisonment, or both, at the end of the criminal proceedings. The term of imprisonment depends on the committed action and the maximum term is four years. Seized goods may be destroyed at the end of a penal action, but the complainant will not be granted damages.
It is possible to obtain a preliminary injunction order from a civil court as a method of interim relief, which includes stopping the sale, manufacturing and distribution of counterfeit goods both before and after filing a lawsuit or during one. However, it is mandatory to file the main action as to the merits within two weeks of the request for the preliminary injunction. Otherwise, the preliminary injunction will ex officio be deemed to have been revoked.
For a preliminary injunction order to be enforced, the payment of an indemnity may be required.
Non-use as a defence
In an invalidation action based on a trademark registration that has been registered for at least five years, defendants may raise a non-use defence requesting the plaintiff to prove genuine use of the earlier trademark registration in the prior five years in Turkey.
In the case of an infringement action, if the plaintiff’s trademark that is the basis of an infringement action has been registered for at least five years as at the filing date of the action, the defendant may raise a non-use defence and request the plaintiff to prove genuine use of its registered trademark in Turkey at the filing date of the action.
An invalidation action can be filed within five years of the registration date of the disputed trademark. If a bad-faith claim is raised, no time limit is applied.
In terms of infringement, there are two time limits. First is the statute of limitations, which is two years as of becoming aware of a specific infringing act. In any case, such a civil action must be filed within 10 years of the date on which the infringing act occurred. If an action is also defined as a crime, the time limit applicable for that crime would be applied. If the infringement is ongoing, no time limit is applied.
The second time limit is loss of rights through remaining silent against continuing use. Although it is evaluated case by case, the average time applied by Turkish courts is five years in practice.
Specialised IP courts are available in Turkey. As at 2022, there are eight IP civil courts and six IP criminal courts in Istanbul; five IP civil courts and one IP criminal court in Ankara; and one IP civil court and one IP criminal court in İzmir.
Ownership changes and right transfers
An industrial property right may be transferred, inherited, subject to licensing, pledged, shown as collateral, seized or made the subject of other legal transactions.
It is possible for an assignment to be affected either for all or some of the goods or services covered by a trademark application or registration.
A trademark may also be subject to licensing for all or some of the covered goods or services. A licence may be granted as exclusive or non-exclusive. Unless otherwise specified in the agreement, the licence shall be non-exclusive.
For recordal of assignment and licence before TÜRKPATENT, an assignment deed and licence agreement executed between the parties should be submitted. Each of the signatures on the assignment deed must be separately notarised for recordal of assignment, whereas no notarisation is required for recordal of licence. If the assignment deed or licence agreement is in a foreign language, a Turkish translation certified by a sworn translator is required.
It is not mandatory to record a trademark licence or assignment in Turkey. However, rights arising from these legal transactions cannot be asserted against bona fide third parties unless they are recorded before TÜRKPATENT.
In accordance with Article 9/3 of the IP Code, use of a trademark with the consent of its owner is considered to be genuine use. Accordingly, use of a trademark by a licensee inures to the benefit of the owner.
There are regulations in Turkey enabling the overlap of IP rights. The IP Code regulates, in Article 58/3, that a design protected under the IP Code is also protected under the Law of Literary and Artistic Works if it meets the conditions in that law.
According to Article 6/6 of the IP Code, a trademark application shall be refused upon the opposition of the right holder if it consists of a person’s name, trade name, photography, copyright or any other intellectual property right of another. In this regard, there are precedents that the IP courts and TÜRKPATENT invalidate or reject trademark applications that include copyrighted works, such as book names, movie names, comics or cartoon characters, TV series, or logos.
Additionally, if a work of intellectual property meets the requirements for both copyright protection under the Law of Literary and Artistic Works and protection as a trademark or design under the IP Code, it benefits from cumulative protection.
In addition to the above, a product design may be protected by copyright law as a two- or three-dimensional mark, trade dress, design, unregistered design or work of applied art. Regardless of whether it is covered by copyright laws, a creative work can be registered as a trademark. Moreover, under trademark and unfair competition law, a geographical indication may be registered as such or may be protected as a collective or certification mark.
The IP Code grants a trademark registration owner with the right to prevent use of a sign, which is identical or similar to a registered trademark as a domain name, router code, keyword or metatag, among other things, in such a manner that would create a commercial impression on the internet, provided that the user of the sign has no right or legal affiliation for the use. The law does not provide an exhaustive list of infringing use on the internet or on social media but provides examples.
Nic.tr, an authority affiliated with the Middle East Technical University (METU), used to manage .tr ccTLDs. Following amendments made to the legislation and regulations, METU transferred the management thereof to the Institute of Information Technologies and Communication. A new platform introduced by METU, called TRABIS, became fully operational on 14 September 2022 and started to provide uninterrupted service as an accredited registrar of the Institute of Information Technologies and Communication.
Much like the UDRP, .tr ccTLDs might be the subject of a dispute before the registrar in the new system.It is also possible to file an action for cancellation of a domain name before civil courts based on trademark infringement. A court may also rule for prevention of access to a website or removal of infringing content.
|Representative requires a power of attorney when filing? Legalised/notarised?||Examination for relative grounds for refusal based on earlier rights?||Registrable unconventional marks|
|No: however, TÜRKPATENT may request submission of the original or a certified copy of a power of attorney.||Yes||Yes: 3D shapes; colours; sounds; motions; multimedia marks; positions; and patterns.|
|Protection for unregistered rights?||Specific/increased protection for well-known marks?||Opposition procedure available? Term from publication?|
|Yes||Yes||Yes: two months from the publication of the application.|
|Removal from register|
|Can a registration be removed for non-use? Term and start date?||Are proceedings available to remove a mark that has become generic?||Are proceedings available to remove a mark that was incorrectly registered?|
|Yes: cancellation after either a five-year term, which starts from the registration date, or any uninterrupted period of five years..||Yes||Yes|
|Specialist IP/trademark court?||Punitive damages available?||Interim injunctions available? Time limit?|
|Yes||Yes||Yes: there is two-week time limit following the request for enforcement of the injunction order to file the main action.|
|Ownership changes||Online issues|
|Is registration mandatory for assignment/licensing documents?||National anti-cybersquatting provisions?||National alternative dispute resolution policy (DRP) for local ccTLD available?|