17 Mar
2020

Trademark procedures and strategies: Turkey

OFO Ventura

Legal framework

At national level, the Industrial Property Code 6769 (10 January 2017) governs the principles, rules and conditions relating to the protection of trademarks, patents, utility models, designs and geographical indications.

Turkey is a member of the World Trade Organisation (WTO) and a party to several international treaties relating to intellectual property, including the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Paris Convention for the Protection of Industrial Property.

Unregistered marks

Turkish Law provides limited protection for unregistered trademarks.

Pursuant to Article 6/3 of the IP Code, the owner of an unregistered mark can claim protection against an application by filing:

  • an opposition before the Turkish Patent and Trademark Office (TURKPATENT) during the registration process; or
  • a nullification action before the courts after the date of registration if the unregistered mark has been used in the Turkish market before the priority or filing date of the subject application or registration.

The rightful owner must prove that it has an unregistered prior right to the mark through comprehensive use and may claim protection for identical or similar goods or services for which use of the mark has been proven.

According to Article 6/4, owners of marks that are not yet registered in Turkey but are well-known in any Paris Convention member state are authorised to claim:

  • refusal before TURKPATENT; or
  • nullification of a trademark registration before the courts.

Under this scenario, the unregistered mark does not need to be well-known or used in Turkey. Protection may be granted for the identical or similar goods or services for which the unregistered mark is well-known in any Paris Convention member State before the priority or filing date of the conflicting mark.

Registered marks

According to Article 3, the following Turkish citizens can own a trademark:

  • real and legal persons who are domiciled or who have industrial or commercial establishments in Turkey; and
  • persons who have application rights resulting from the terms of the Paris Convention or the Agreement Establishing the WTO.

As per the reciprocity principle, real and legal persons who are entitled to trademark protection by law or de facto within Turkey can also own a trademark.

Foreign applicants need a local agent to file a trademark application before TURKPATENT. A power of attorney is not required to file a trademark application through an agent, but TURKPATENT has the right to request one at its own discretion.

A power of attorney is, however, obligatory for:

  • partial renewal of a registration;
  • partial or complete withdrawal of a trademark application or registration; and
  • withdrawal of the opposition and appeal filed against a third-party application.

Procedures (for registered marks)

Registrable signs

According to Article 4: “Trademarks may consist of any signs like words, including personal names, figures, 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 proprietor.”

Ex officio examination

A trademark application can be filed directly before TURKPATENT (national filing). As a Madrid Protocol country Turkey can also be designated before WIPO for international trademark applications.

The processing time from initial filing to registration of national applications is approximately six to eight months in case of no office actions or oppositions. It can be longer for international filings.

TURKPATENT first conducts a procedural review on the accuracy and completeness of the application documents and then conducts a classification examination. If no deficiency or inaccuracy is identified, it conducts an ex officio examination on absolute grounds listed under Article 5 as follows:

  • incapability of being a trademark according to Article 4;
  • indistinctiveness of a mark;
  • a mark consisting of signs or indications which serve in trade to designate the kind, type, characteristics, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of goods or services;
  • a mark that is identical or indistinguishably similar to a senior trademark covering identical or similar goods and services;
  • a mark consisting of signs or indications used widely in the trade or which serves to distinguish members of a particular professional, vocational or commercial group from others;
  • a mark consisting of the shape or another characteristic which results from the nature of the goods themselves or the shape or other characteristics which is mandatory to obtain a technical result or gives substantial value to the goods;
  • a mark capable of deceiving the public (eg, regarding the nature, quality or geographical origin of the goods or services);
  • a mark consisting of signs refused pursuant to Article 6ter of the Paris Convention;
  • a mark which is of public interest and contains historical, cultural values and emblems, badges or escutcheons for which the consent of the competent authority has not been given;
  • a mark which contains religious values or symbols;
  • a mark which is contrary to public policy or accepted principles of morality; and
  • a mark which consists of or contains a registered geographical sign.

In case of any office actions against the application, the applicant is entitled to respond or appeal within two months (non-extendible) of the notification date of the office action. Applicants may successfully overcome refusal decisions based on senior marks through an appeal.

Opposition procedure

Where an application passes TURKPATENT’s reviews and examinations, it is published in TURKPATENT’s Official Bulletin for two months for possible third-party oppositions. Oppositions may be based on the following relative grounds according to Article 6, as well as the absolute refusal grounds of Article 5:

  • confusing similarity;
  • unauthorised application by a trade agent;
  • prior and genuine rights obtained via prior and extensive use of the sign;
  • copyrights or other industrial rights (eg, trade or domain names);
  • personal rights (eg, unauthorised use of a personal name or photograph);
  • well-known status of trademarks (eg, dilution by blurring, tarnishment or free riding); and
  • bad faith.

Oppositions against national applications are notified to the applicants. Applicants are granted one month to respond to oppositions and invite opponents to prove use of their registered marks. Where opponents fail to prove genuine use for all or some of their goods or services, their likelihood of confusion claims based on earlier registered marks will be refused for the related goods or services without examination.

In the past, TURKPATENT did not notify oppositions filed against trademark applications made through WIPO. International applicants had to monitor their filings for any oppositions and respond and invite opponents to prove use of their marks where possible. Unlike national application owners, international application owners had no time limit within which to submit their responses. However, since international filers were, in most cases, unaware of third-party oppositions, they mostly missed the opportunity to invite opponents to prove their use in Turkey and could therefore not enjoy non-use as a defence

In 2020 TURKPATENT changed its practice and started notifying oppositions filed against international applications and granting the filer one month in which to respond to oppositions and invite the opponent to prove use of its marks. It is advisable for international trademark owners to keep monitoring their filings until opposition is finalised. The usual timeframe for proceedings is six to eight months, depending on examiner workload.

Parties may appeal opposition decisions before the Re-examination and Evaluation Board within two months (non-extendible) of the notification date. Once an appeal is filed by any party, the other party is notified that it has one month to respond. The usual timeframe for appeal proceedings is eight to 12 months.

Appeal decisions can be challenged by filing a court action before the Ankara IP courts within two months of notification of the decisions.

Maintenance

The term of protection is 10 years as of the application date. Registration can be renewed for an unlimited number of successive 10-year periods. A registration can be renewed from six months before the expiry date and late renewal is possible until six months following expiration by payment of a penalty.

The IP Code does not require use of a trademark for its registration or renewal.

Nullification and revocation actions

Trademark registrations may be subject to nullification claims based on absolute and relative grounds for refusal under Articles 5 and 6. Nullification actions can be filed within five years as of the registration date of the mark in dispute before the IP courts. Bad-faith filings can be subject to invalidation claims with no time limit.

According to Article 9, if there is no justifiable reason why a trademark has not been put into use in Turkey since its registration or if the use has been suspended for an uninterrupted period of five years, the trademark will be revoked.

Other causes for revocation include:

  • where the trademark has become generic;
  • where the trademark misleads the public concerning the nature, quality or geographic origin of the goods or services for which it is registered, as a result of use by the trademark owner or with the owner’s consent; and
  • use of a trademark contrary to Article 32:“[I]n case of application of relevant persons, public prosecutors or the relevant public institutions on the grounds that the owner does not take necessary measures in order to prevent the continuous use of the collective mark or the guarantee mark contrary to the technical specification, the mark shall be revoked unless the said contrary use is corrected within the prescribed period.”

Enforcement

According to Article 29, the following acts constitute trademark infringement:

  • unauthorised use of a sign that is identical or confusingly similar to a registered trademark for identical or similar goods or services;
  • unauthorised use of a sign that is identical or confusingly similar to a well-known trademark for different goods or services (eg, dilution by blurring, tarnishment or free riding – that is, taking unfair advantage of the mark’s well-known reputation);
  • sale, distribution, commercial use, import, export, holding for commercial purposes or offering goods bearing a trademark that is known or should be known to be an unlawful imitation; and
  • unauthorised broadening or transfer of licence rights by a licensee.

Unregistered trademarks are protected under the general provisions relating to unfair competition regulated by Articles 54 to 56 of the Commercial Code. ‘Unfair competition’ is defined as: “behaviour or commercial practices that are deceptive or infringe in other ways on the honesty rule and that affect relations between competitors or between suppliers and their customers are unfair and illegal”. Among examples of unfair competition, Article 55(a)(4) mentions “taking measures to create confusion with the products, business products, operations or business of another party”.

Civil actions

The IP Code regulates civil remedies aiming to prevent infringement of IP rights even before infringement occurs.

A registered rights holder may demand determination or cessation of the infringement, as well as compensation for damages by filing a civil court action.

Ex parte or inter parte preliminary injunctions are also applicable, entitling the courts to issue preliminary injunctions in a way that secures final judgments. Where the claimants prove the likelihood of infringement or ongoing infringement, the courts tend to grant a preliminary injunction.

Claimants are usually required to deposit a guarantee amount determined by the courts according to the merits of the case. This guarantee is kept by the court until finalisation of the verdict and is refunded to the claimant unless the defendant claims and proves any losses or harm.

The defendants may request the courts to lift preliminary injunctions in return for guarantees; however, the courts mostly refuse such requests in practice.

Compensation is determined by the courts by calculating any losses incurred by the rights holder and any profits made by the infringer as a result of the infringing acts.

Criminal actions

Criminal proceedings against infringers start with a criminal complaint by a registered brand owner before the prosecution office. Where the rights holder claims a criminal raid order, this request is examined by the prosecutor with priority and on approval the file is sent to the Criminal Courts of Peace, which have the final say on raid-order requests. On issuance of a raid order, the police conduct the raid with the participation of a representative of the rights holder.

Claimants are required to submit solid evidence for acceptance of raid-order claims, which is why pre-investigations are crucial.

The prosecutor prepares and sends its indictment to the criminal court and an action is brought on its acceptance. According to the ‘fast destruction’ process established under Article 163 of the IP Code, the prosecutor may also request a destruction order if there is a risk of damage, serious loss of value or if the storage incurs considerable expense, where the counterfeit nature of the goods is confirmed by an expert report.

Criminal court actions mostly result in fines or imprisonment. If the indictee has no criminal record, the declaration of the verdict may be suspended under Article 231 of the Code of Criminal Procedure at the indictee’s request. In such a case, the indictee will be under supervisory control for five years and the verdict will be declared if they commit another crime within that period.

The court can also decide on destruction of the counterfeit goods during the trial or at the end of the proceedings.

The courts also need to apply the reconciliation process and invite the parties to seek reconciliation before deciding on the complaint according to Articles 253 and 254 of the Code of Criminal Procedure.

Non-use as a defence

Defendants of nullification actions may invite the plaintiff to prove genuine use in Turkey of its base mark for the past five years, if the five-year use term has passed at the time of the lawsuit. The plaintiff must prove the fulfilment of the use conditions at the date of application or priority right. If use cannot be proven, the plaintiff’s likelihood of confusion claim will be rejected without examination.

Defendants in trademark infringement actions may invite the plaintiff to prove genuine use in Turkey of its base mark for the past five years, if the five-year use term has passed on the filing date of the court action. If the plaintiff cannot prove use, the case will be dismissed.

Time limit

Nullification actions can be filed before the courts within five years of the registration date of the disputed mark. Bad-faith filings are subject to invalidation claims with no time limit.

Trademark infringement actions must be filed within a two-year period from the day that the infringing act is known of. In any case, such civil action must be filed within 10 years of the date that the infringing act occurred. If an action is also defined as a crime, the time limit applicable for that crime would be applied (ie, eight years for trademark infringement). However, if the infringement is ongoing, there is no time limit.

Component courts

Specialised IP courts exist in Istanbul, Ankara and İzmir. In other cities, the third chamber of the first-instance civil courts (or, if there are fewer than three chambers, the first chamber) handles IP litigation cases.

In legal proceedings initiated by third parties against the owner of an IP right (eg, nullification and revocation actions), the competent court is the court where the defendant is domiciled. Where the rights holder (defendant) is not domiciled in Turkey, the competent court is the court where, at the instituting date of the legal proceedings, the business place of the registered attorney is located. If the record of the attorney has been deleted, the competent court is in Ankara, where TURKPATENT’s headquarters are located.

Revocation actions will be heard by TURKPATENT as of 2024, as ordered in the IP Code.

In the legal proceedings to be initiated against third parties by a rights holder, the competent court is located where the plaintiff is domiciled, or where the illegal action has taken place or where its effects can be observed.

Ownership changes and right transfers

According to Article 148/1 of the IP Code, trademark rights may be transferred, inherited, licensed, pledged, shown as collateral, seized or become the subject of other legal transactions.

Assignment is possible, both partial and entirely, and trademarks may be licensed exclusively or non-exclusively.

Both assignment and licence agreements must be in writing and signed by both parties before a Turkish notary or before a foreign notary, as well as apostilled and translated into Turkish. The agreement and its translation must be submitted to TURKPATENT for recordal. There is no time limit for recording the assignment or licence and it is not a statutory requirement. However, it should be kept in mind that the rights that arise from the assignment or licence cannot be held against genuine third parties unless they are recorded in the register.

According to Article 158, exclusive licensees can sue for infringement unless otherwise stated in the agreement. Non-exclusive licensees can also sue for infringement with a notification to the trademark owner (licensor) unless otherwise stated in the agreement.

Related rights

A trademark that is an individual and sufficiently original creative work (eg, product packaging) may also be protected by copyright. Likewise, a trademark that meets the criteria for obtaining design protection (eg, three-dimensional trademarks) can also be protected as a design.

Trademark infringement may also constitute unfair competition under the Commercial Code. Trademark owners pursue trademark infringement and unfair competition claims simultaneously in the same court action to strengthen their hands. Enforcement of trademark rights based on unfair competition regulation resembles trademark infringement matters to a certain extent, but claims may differ.

Online issues

According to the Article 7/3-d of the IP Code, use of an identical or similar sign as a domain name, router code, keyword, online ad or in a similar manner with a commercial impression is prohibited in Turkey.

Turkey’s ccTLD is ‘.tr’, and ‘.tr’ extension domains can be registered before the Nic.tr Administration affiliated to the Middle East Technical University. These ccTLDs are not subject to UDRP proceedings. The DNS Working Group, which works under the umbrella of Nic.tr, has the administrative authority to grant decisions on disputes regarding ccTLDs and has its own procedures for dispute resolution. It is also possible to apply to the courts directly or after the opposition process before Nic.tr for cancellation of the contradictory ccTLDs or for blocking access from Turkey.

For the domains which are subject to UDRP proceedings, the Turkish authorities cannot grant decisions regarding ownership of the domain. However, it is possible to block access to these domains from Turkey through court decisions.

OFO Ventura

Levent Mah Çilekli Cd 2

İstanbul Besiktas 34330

Turkey

Tel +90 212 219 67 33

Fax +90 212 234 17 09

Web http://www.ofoventura.com.tr/

Yasemin Aktas

Partner

[email protected]

Yasemin Aktas is an IP litigator and Turkish trademark and patent attorney, with 10 years’ experience in IP law in Turkey.

She advises foreign and multinational clients from various industries on a wide range of IP issues and transactions regarding trademarks, designs, domain names, trade names and copyrights. She implements IP protection, litigation and enforcement strategies and portfolio management.

Ms Aktas is experienced in building anticounterfeiting strategies, including customs monitoring, raids, seizures and settlement negotiations. She is a member of the INTA Anti-counterfeiting Committee and has been selected by the IP Experts Group to assist the International Anti-counterfeiting Coalition IP Advisory Board.

Özlem Futman

Founding partner

[email protected]

Özlem Futman is an IP litigator, Turkish trademark and patent attorney and European patent attorney, with more than 20 years’ experience.

Ms Futman effectively manages IP portfolios for national and international companies operating in Turkey. She applies her considerable experience, tenacity and creativity to handling complex matters such as oppositions, dilution claims, domain name issues, copyright matters, licences, customs seizures and anti-counterfeiting matters, as well as non-use and nullification matters.

Ms Futman is an officially appointed expert for the Istanbul IP Courts and an active member of the MARQUES GI Committee, the International Association for the Protection of Intellectual Property Regulatory Committee and the European Communities Trademark Association Copyright Committee.