What are benefits of registering a trademark?

Trademark registration aims to distinguish the goods and/or services of one undertaking from those other undertakings. For a sign to be registered as a trademark, distinctiveness is the essential condition. Therefore, trademark registration is important in order to create a unique identity in the sector in which you are willing to operate. Competitive power of a registered trademark is high and the value of trademark increases as a result of the investments made. Thus, by using your trademark exclusively, you can gain economic benefits, assign your trademark for a fee, or earn income by providing license to third parties to use your trademark in trade area. In addition, the trademark right is an absolute right giving its owner the authority to prevent the aggressor use of his/her trademark by third parties. 

My trademark is not registered, will it still be protected? 

As per 6769 numbered Industrial Property Code, Article 7, trademark protection provided by mentioned Code shall be acquired by registration. In other words, in order to benefit from protection provided under 6769 numbered Industrial Property Code, your trademark shall be registered before Turkish Patent and Trademark Office. If your trademark is not registered, it can only be protected within the scope of Article 6/3 regulated under 6769 numbered Industrial Property Code and unfair competition articles of the 6102 numbered Turkish Commercial Code. According to 6/3 of 6769 numbered Turkish Industrial Property Code, if a sign that has not yet been registered has been used seriously and intensively in the relevant market before the trademark application made by a third party, it is accepted in Turkish law that a right to a non-registered trademark was acquired prior to the date of application and owner of the nonregistered trademark is the real right owner. In case your nonregistered trademark is exposed to acts constituting infringement, based on the relevant provisions of the Turkish Commercial Code, determination of unfair competition, prohibition of acts constituting unfair competition, elimination of the material situation resulting from unfair competition, compensation of material damage and loss if fault is detected and compensation of moral damage if conditions stipulated in the Article 58 of the Turkish Obligations Code are met, can be demanded from the Commercial Courts. In such a case you also have the right to file a criminal complaint before the Chief Public Prosecutors Office regarding the acts constituting unfair competition since they are also considered as criminal acts.

Products bearing my trademark is being used in an e-commerce platform without my will, what can I do to prevent this aggressor act?

Although the policies of e-commerce companies on this subject change, seller profiles that commit acts constituting infringement are generally being closed by e-commerce web page owners immediately if the trademark registration document is presented. If your trademark is not a registered trademark, seller profiles can be closed immediately if a preliminary injuction decision obtained from relevant court is presented. In order to obtain a preliminary injunction decision, you shall file an unfair competition lawsuit before the Commercial Courts of Turkey.

My registered trademark is being used by third parties in internet environment without my will, what can I do to prevent these malicious acts?

As per Article 149 of 6769 numbered Industrial Property Code, you can file a trademark infringement lawsuit before relevant Civil Courts for Intellectual and Industrial Property Rights and demand from the court to determine the existence of infringement, to prevent the possible infringement, to stop the infringing actions, to remedy infringement and compensate material and moral damages through your lawsuit petition and ask for issuance of an immediate preliminary injunction decision. Through preliminary injunction, blcokage of access to the site or removal of aggressor images/information can be kindly demanded from the court.

My brand is registered before Turkish Patent and Trademark Office by a third party without my consent, shall I file a trademark invalidation lawsuit or a trademark infringement lawsuit?

If a trademark same as or indistinguishably similar to your registered brand was registered before Turkish Patent and Trademark Office, you can demand invalidation of mentioned trademark from relevant court by citing one or more of the conditions listed under Article 5 and 6 of 6769 numbered Industrial Property Code and through the same lawsuit you also have the right to demand from the court to determine the existence of infringement, to prevent the possible infringement, to stop the infringing actions, to remedy infringement and compensate material and moral damages. In other words, through the same lawsuit you can file invalidation lawsuit and infringement lawsuit through the same dossier. If the aggressor trademark is not yet registered before the Patent Office and only an application was made, you can present your objections within 2 months following publishing of the aggressor trademark in the Bulletin and prevent registration as per Article 18 of 6769 numbered Industrial Property Code. If mentioned 2 months period is already over, your only choice is to proceed by filing an invalidation lawsuit before the Civil Courts For Intellectual and Industrial Property Rights.

How long does trademark registration take?

Your trademark will be registered within 8-9 months following the date of filing if there is no objections raised by third parties upon publishing of your trademark in the Bulletin. Your trademark will be protected within the borders of Turkey for 10 years following the date of filing, upon registration.

How can I understand that my trademark can be registered?

In order for your trademark to be registered before the Patent Office, the sign you are willing Turkish Patent and Trademark Office to register must have a high distinctiveness along with all the element it contains and must not fall within the scope of one of the conditions specified under Article 5 and 6 of 6769 numbered Industrial Property Code. Before making a trademark application we highly recommed you to consult an attorney and make an availability and similarity research through mentioned attorney. If there are trademarks registered or filed before the Patent Office that are same as or similar to the sign you are willing to use, upon filing of your trademark Turkish Patent and Trademark Office can reject the application directly or third parties can present their objections upon publishing of your trademark in the Bulletin.

Before my trademark is registered before Turkish Patent and Trademark Office, an entry of the same trademark was made before the Office, how can we proceed?

From such a question we understand that two applications were made regarding same trademark under same or similar nice classes. Turkish IP Law is based on the first come, first served principle. In this respect, a trademark registration certificate will be issued for the first trademark filed. If your application was made posteriorly however you are able to prove your real right ownership and/or bad faith of the first applicant, you can file your objections and present evidences within 2 months following publishing of the aggressor trademark.

My trademark is not registered in Turkey, will it still be protected within the borders of Turkey?

As per 6769 numbered Industrial Property Code, Article 7, trademark protection provided by mentioned Code shall be acquired by registration. As with other intellectual property rights, in Turkish IP Law practice, registration principle is adopted regarding protection of trademarks as a rule and trademark rights are territorial. Meaning that, if you register your trademark only in Turkey, your trademark will only be protected within the geographical boundaries of Turkey. Although the main rule in the protection of industrial property rights is territoriality, there are some exceptions to this rule, such as the protection provided to well-known brands and the priority right.

 My trademark is not registered in Turkey and an aggressor trademark application was made before Turkish Patent and Trademark Office. How can I protect my trademark in Turkey?

• Although the main rule in the protection of industrial property rights is territoriality, there are some exceptions to this rule, such as the protection provided to well-known brands and the priority right. On the other hand, unregistered trademarks are protected within the framework of unfair competition provisions of the 6102 numbered Turkish Commercial Code. The difference is that the protection provided by the Industrial Property Law No. 6769 is much more comprehensive. We strongly recommend our foreigner clients to register before the Turkish Patent and Trademark Office their trademarks that they are using in Turkish trade area, because trademark registration will be providing to them many advantages along with extensive manner of protection.
• If your trademark is not registered in Turkey but being used seriously and continuously in Turkey, you can claim that you are the right owner of the trademark as per Article 6/3 of 6769 numbered Industrial Property Code and present your objections against publishing of the aggressor trademark in the Bulletin. If your trademark is not being used in Turkish trade area, as per Supreme Court decisions it is not possible for you to claim that you are the right owner of the trademark.
• Even if a trademark same or similar to your trademark was filed before Turkish Patent and Trademark Office, you can file your trademark application within 6 months following the first – foreign- application with priority claim. If an application is filed on the basis of a priority right, applications filed by third parties after the priority date and which cover identical or indistinguishably similar trademarks with identical or similar goods or services shall be refused.
• One of the exceptions of registration principle is well-known brands that are within the context of Paris Convention. As per Article 6/4 of 6769 numbered Industrial Property Code, trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services shall be refused upon objection. Therefore, if the trademark you haven’t filed in Turkey yet is a well-known brand in accordance with the Paris Convention, you can present your objections within 2 months following publishing of the aggressor trademark.
• As per Article 6/9 of 6769 numbered Industrial Property Code, trademark applications filed in bad faith shall be refused upon opposition. If a real person or legal entity has filed a trademark application which is the same as or similar to a trademark being used or registered by a third party in a foreign country, knowingly and without justification, just to prevent his competitor, the application is considered as a blocking mark. If the purpose of the aggressor trademark registration is to prevent rightful entry of goods or services into Turkish market, mentioned action will be considered as misuse of registration principality. In this case, as a result of the objection to be made by the foreign trademark owner, registration of the infringing application may be prevented based on her unregistered trademark and principle of territoriality can be overcome.

 For how long a trademark is being protected in Turkey?

The term of protection for registered trademark is ten years from the date of application. This term shall be renewed for periods of ten years. Request for renewal needs to be made by the trademark proprietor within six months before the expiry of the protection date and the information regarding the payment of the fee needs to be submitted to the Office within the same period. In case no request is made or the information regarding payment of the renewal fee is not submitted to the Office within this period, renewal request may be made within six months after the expiry of the protection date, provided that an additional fee is paid.

Is it possible for multiple -same or indistinguishably similar- brands to coexist?

As a rule, signs which are identical to or indistinguishably similar to a trademark, which has been registered or which has been applied for registration, relating to identical goods and services or to goods and services of the identical type shall not be registered as trademark (Article 5/1-ç). This rule has an exception regulated under Article 5/3 of the Code. As per 5/3 of 6769 numbered Industrial Property Code, a trademark application may not be refused according to subparagraph (ç) of the first paragraph if a notarial document indicating the clear consent of the prior trademark proprietor for the registration of the application is submitted to the Office.

Is it possible for my trademark to be invalidated after registration?

In case of existence of one of the conditions listed under Article 5 or 6 of the 6769 numbered Industrial Property Code, the court may decide to invalidate the trademark. If, within a period of five years following the date of registration of the trademark has not been put to genuine use in Turkey by the trademark owner in connection with the goods or services registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be revoked. Trademark can also be revoked if conditions specified under Article 26 of the 6769 numbered Industrial Property Code exists. Revocation of the trademark and invalidation of trademark are subject to different Articles and procedures. While revocation of the trademark can be decided by Turkish Patent and Trademark Office, invalidation of the trademark can be ruled by the Civil Courts for Intellectual and Industrial Property Rights. Revocation of a trademark will be able to be performed by Turkish Patent and Trademark Office after 10.01.2024 since Article 192/1-a of the Industrial Property Code indicates that Article 26 will enter into force seven years after the publication of the Code. It is regulated by Temporary Article 4 of the Industrial Property Code that, until Article 26 comes into force, authority to decide on revocation of a trademark rests with the Courts. 

Please don’t hesitate to contact our IP law firm in Turkey specialized in trademark and patent law for trademark protection strategy development. Feel free to ask our IP law firm in Turkey any complex problems related to IP law including trademarks, patents, utility models and industrial designs and get your risk analysis.