In the dynamic world of business and intellectual and industrial property, trademarks play a pivotal role in defining a companies’ identity and reputation. Like in other countries, trademark owners in Turkey too face numerous challenges, including unauthorized use, counterfeiting, and infringement.
To protect their valuable assets, they require competent legal representation with in-depth knowledge of trademark litigation in the country. Our intellectual property law firm stands out as a reliable and esteemed law firm, dedicated to empowering trademark owners through exemplary litigation services in Turkey.
Within this article we tried to provide our clients general information related to trademark litigation in Turkey and scope of our services related to it for client informative purposes.
Trademark Cancellation Lawsuits in Turkey
In Turkish intellectual and industrial property law system, it is observed that the invalidation of a trademark right is often confused with cancellation of the trademark right. If the reasons specified in 6769 numbered Industrial Property Code Article 26 arise regarding the trademark right in a period of time after registration, the cancellation of the trademark may be requested from Turkish Patent and Trademark Office; while invalidation of the trademark may be requested from the Court if there are invalidation reasons stated in 6769 numbered Industrial Property Code Article 25 that have existed since the beginning of the trademark right.
Lawsuits that are referred by clients as trademark cancellation lawsuits in Turkey are generally trademark invalidation lawsuits in Turkey. But we will be providing you herewith key information related to Trademark Cancellation Lawsuits in Turkey and Trademark Cancellation Applications in Turkey.
A trademark invalidation lawsuit can be defined as a special type of lawsuit where the invalidation of a trademark is requested from the relevant court. The legal grounds for invalidation of trademarks are regulated under Article 25 of the 6769 numbered Industrial Property Code.
According to the mentioned Article, the existence of absolute grounds for refusal specified in Article 5 and relative grounds for refusal regulated in Article 6 of the 6769 numbered Industrial Property Code constitutes legal grounds for invalidity. Furthermore, if a decision is made regarding the invalidation of the trademark, the decision on invalidation will take effect from the date of the trademark application, and the protection provided by the Intellectual Property Code will be deemed never to have existed for the trademark, whereas if a decision is made for the cancellation of the trademark, this decision will take effect from the date the cancellation request was submitted to the Patent Office. If you would like to learn more about trademark invalidation lawsuits in Turkey, you can kindly visit our Article, Trademark Invalidation Lawsuits in Turkey.
As mentioned earlier, invalidation of a trademark can be requested from the court, while cancellation of the trademark may be requested directly from Turkish Patent and Trademark Office as of December 22, 2023, in accordance with Article 192 of the Industrial Property Code.
The provisions regarding the cancellation of the trademark are stated in Article 26 of the Industrial Property Law. In this article, it is clearly stated that upon request, the Turkish Patent and Trademark Office can cancel the trademark if the conditions specified in Article 26 are present. Furthermore, in Article 192 of the Law No. 6769 on Industrial Property, it is explicitly stated that Article 26 will enter into force 7 years after the publication of the law, and thus it can be understood that the implementation of Article 26 will begin on January 10, 2024. After the mentioned date, Article 26 of the law will be applicable, and individuals can apply to the Turkish Patent and Trademark Office with a request for the cancellation of the trademark.
Therefore, we can say that the authority to cancel the trademark can be used by the courts only until January 10, 2024, and after that date, it can be used by the Turkish Patent and Trademark Office. Until January 10, 2024, the competent court for trademark cancellation lawsuits is the Intellectual and Industrial Property Rights Courts, and in judicial jurisdictions where such specialized courts do not exist, the Civil Courts of First Instance are competent to handle the case under the title of Intellectual and Industrial Property Rights Court.
The reasons for the cancellation of the trademark are explicitly stated in Article 26 of the Law on Industrial Property No. 6769. These can be listed as follows:
• A decision for the cancellation of the trademark can be issued if, as a result of use by the trademark owner or with their permission, the trademark misleads the public, especially regarding the nature, quality, or geographical origin of the goods or services for which it is registered. (Article 26/1-c)
• A decision for the cancellation of the trademark can be issued if the trademark has become a common name in the category of goods or services for which it is registered due to the actions of the trademark owner. (Article 26/1-a) In fact, some trademarks may lose their distinctiveness in certain categories of goods and services due to becoming generic, particularly if the trademark owner fails to take sufficient measures. The trademark should not be used as the name of the product or service. For example, Teflon is originally the non-stick type of pan trademark of the Dupont company and is currently used by consumers as the product name. Similarly, other trademarks used by consumers as product names, such as jellybean, nescafe, selpak, and oralet, can also be cited as examples.
• If a registered trademark is not seriously used in Turkey by the trademark owner or with their permission for a period of five years from the registration date, the trademark can be cancelled. Similarly, if there is a five-year uninterrupted period of non-use of the trademark, a decision for the cancellation of the trademark can be issued. (Article 26/1-b)
• Article 26 of the Law on Industrial Property states that the trademark can be cancelled in case of non-compliance with Article 32 of the same law. Article 32 of the Law on Industrial Property specifies the mandatory elements that the technical specifications for collective and guarantee marks must meet. A guarantee mark is a sign used by multiple enterprises under the control of the trademark owner to guarantee their common characteristics, production methods, geographical origins, and quality. A collective mark on the other hand is a sign used by a group of production, trade, or service enterprises. If it is determined that a mark is used in a manner that does not comply with the technical specifications of collective and guarantee marks, the mentioned mark can be cancelled. (Article 26/1-ç)
Trademark Infringement Lawsuits in Turkey
Turkish industrial property law indicates that marks consisting of any signs like words, including personal names, figures, colors, letters, numbers, sounds and the shape of goods or their packaging, provide that such signs are capable of distinguishing the goods or services of one business from those of other businesses and that are capable of being registered on the trademark registry in a manner to determine the clear and precise subject matter of the protection afforded to its proprietor, can be considered as trademarks. Like other intellectual property rights, trademark applications are subject to registration system of each country thus are territorial.
And as per the principle of territoriality, in order for a trademark to be protected in Turkey, it needs to be registered in Turkey. Of course there are some exceptions to this rule such as priority claims and well-known brands however principle of territoriality is accepted as one of the main rules of Turkish trademark law. Therefore, protection under 6769 numbered Turkish Industrial Property Code cannot be claimed in Turkey based on a trademark registered, for example, in Russia.
On the other hand we can say that registering a trademark before Turkish Patent and Trademark Office is not a legal requirement for real persons and legal entities. These persons can still use a trademark that is not registered before the Turkish Patent and Trademark Office in the relevant Turkish market and yet their non-registered trademark will still be protected under Turkish law, as per unfair competition articles of 6102 numbered Turkish Commercial Code (TCC).
One of the prominent functions of a brand is its distinctive function. The distinctive function of a brand is the ability of the brand to differentiate the goods and services of one business from those of others. Through its distinctive function, a brand provides information about the origin and supplier of the goods and services and prevents the mark from becoming anonymous.
Undoubtedly, each brand owner enhances the value of their brand by promoting and increasing its brand recognition through various advertising investments. Therefore in practice, it is seen that once a brand starts to become visible and valuable before the eyes of consumers they become vulnerable to infringement attempts of third parties.
We have come face to face with many infringement actions of third parties upon the trademark rights of the rightful owner by imitating the brand exactly or in a way that is indistinguishably similar, taking advantage of the value and recognition of the brand, and attempting to confuse and bear away the established consumer base of the main brand. In such cases it becomes inevitable for the victims to proceed by filing trademark infringement lawsuits in Turkey.
Using the trademark or its indistinguishably similar form without the permission of the rightful owner, selling products containing an imitation of the registered trademark, and engaging into similar actions stated within the Law, constitute infringement of the trademark right.
According to Article 149 of the Industrial Property Code, the right holder whose intellectual property right has been infringed may request the court to determine whether the act constitutes infringement, prevent the likely infringement from occur, cease the infringing actions, remove the infringement, and claim compensation for material and moral damages.
As a result of the infringement of trademark rights, the rights holder who has suffered damage and violation may file a compensation lawsuits before the Intellectual and Industrial Property Rights Court. Additionally, they can also make a criminal complaint before the Chief Public Prosecutor’s Office for initiation of a criminal investigation phase against the person who committed the trademark infringement, since as per Article 30, such actions also constitute crime.
Article 29 of the 6769 numbered Turkish Industrial Property Code specifies the cases that constitute infringement of the trademark rights. According to the mentioned article, the following cases are directly considered as trademark infringement:
1) To use the trademark as set out in Article 7 of 6769 numbered Industrial Property Code, without the consent of the trademark proprietor. The cases specified in Article 7 of the 6769 numbered Industrial Property Code that constituted trademark infringement are as follows:
- Using of any sign identical to a registered trademark for goods or services within the scope of the registration.
- Using any sign identical or similar to a registered trademark and covering goods or services identical or similar to those covered by the registered trademark, thereby creating a likelihood of confusion or association with the registered trademark in the minds of the public.
- Using any sign identical or similar to a registered trademark, regardless of whether the goods or services are the same, similar, or different, in a matter that would unjustly benefit from or harm the reputation of the trademark, or un-determine its distinctive character, without justifiable reason.
2) Imitating the trademark by using the trademark or a sufficiently similar one without the permission of the trademark owner constitutes infringement of trademark rights.
3) Selling, distributing, placing on the market in any other way, importing, exporting, possessing for commercial purposes, or making offers to enter into contracts concerning products bearing a mark that is knowingly or should have been known to be an imitation of the trademark or sufficiently similar to it, by using the infringing mark, constitutes infringement on trademark rights.
4) Unauthorized expansion of rights granted through licensing by the trademark owner or transferring these rights to third parties constitutes infringement of trademark rights.
We have prepared an essay related to trademark infringement lawsuits in Turkey including definition of trademark infringement lawsuits in Turkey, regulations related to trademark law in Turkey, actions constituting violation of trademark rights in Turkey, claims that can be brought forward in a trademark infringement lawsuit in Turkey, secondary claims that can be alleged in trademark infringement lawsuits in Turkey, preliminary injunction for protection of the trademark rights during judgement, competent and authorized courts on trademark infringement lawsuits in Turkey, time bar in trademark infringement lawsuits in Turkey and other types of lawsuits that can be filed in case of trademark infringement in Turkey where you can find detailed information which will enable you to understand the legal procedures in Turkey related to trademark infringement and strategic points you can lean on. In order to obtain detailed information on trademark infringement lawsuits in Turkey please kindly visit our article, Intellectual Property Law Firm in Turkey.
Civil trademark infringement lawsuits are the most common type of legal actions taken by trademark owners in Turkey. In cases constituting trademark infringement, the plaintiff seeks remedies for unauthorized use or imitation of their registered trademark by a third party. The basis for a civil litigation is the violation of exclusive rights granted to the trademark owner under the 6769 numbered Turkish Industrial Property Code. Generally speaking, a trademark owner can seek for the below remedies through a trademark infringement lawsuit:
- Injunctions: One of the primary remedies sought in civil infringement cases in Turkey is an injunction. Trademark owners can request a preliminary or permanent injunction to immediately stop the infringing party from using the trademark without legal authorization. This remedy prevents further damage to the trademark owners’ brand and reputation.
- Claiming Damages: The plaintiff may claim monetary compensation for financial losses incurred due to the infringement. Damages can include lost profits, loss of market share, and other economic damages resulting from the unauthorized use of the trademark.
- Recovery of the Profits: In certain cases specified within Law, the plaintiff may also be entitled to the profits gained by the infringer through the unauthorized use of the trademark. This remedy serves as a deterrent against potential infringers seeking to profit from brand identity confusion.
- Seizure and Destruction of Goods: Turkish courts of intellectual and industrial property rights can order the seizure and destruction of the infringing products to prevent their further circulation in the relevant market.
Our Trademark Litigation Services in Turkey
- Following up monthly, the trademark Bulletin and detecting actions constituting infringement against the trademark rights of our client.
- Initiating anti-counterfeiting legal actions against aggressor brand or products.
- Obtaining ex-parte and inter-parte preliminary injunction decisions from the competent courts in Turkey related to trademark infringement.
- Filing and following up collection of evidences lawsuit if client has no evidence but a notice regarding IP infringement.
- Filing and following up trademark infringement lawsuits in Turkey.
- Filing and following up trademark invalidation lawsuits in Turkey.
- Filing and following up trademark cancellation lawsuits in Turkey.
- Filing and following up trademark cancellation applications to be filed before TPTO.
- Filing and following up lawsuits regarding cancellation of Turkish Patent and Trademark Office final decisions regarding industrial property rights.
- Filing and following up civil unfair competition lawsuits for protection of non-registered trademark rights.
- Conducting settlement negotiations applying to mediation and attending to mediation meetings on behalf of our client.
- Drafting and sending cease and desist letters through Notary Public.
- Providing protection for your IP rights before the Customs Authority, requesting extension of protection before the Customs, requesting detain of aggressor goods in Customs, following up with simple destruction procedure if required.
- Filing criminal complaints and taking part actively in criminal court cases regarding unfair competition and IP infringement, attending to trials.
- Providing legal consultancy regarding all IP assets and disputes.
Reach us for Trademark Litigation in Turkey
Our law firm in Turkey, stands as a beacon of legal expertise and dedication in the realm of trademark litigation in Turkey. Our firms commitment to protecting the rights of trademark owners and our in-depth knowledge of Turkish trademark laws make us a go-to choice for businesses seeking robust legal representation.
Through skillful advocacy in civil and criminal lawsuits, as well as administrative complaints, our law firm in Turkey empowers trademark owners to safeguard their intellectual property rights effectively. With a client-centered approach and a passion for justice, our law firm continuous to leave an indelible mark in the realm of trademark litigation in Turkey. If you are willing to obtain strategic legal consultation related to your case, reach us for trademark litigation in Turkey and contact our trademark litigation attorneys in Turkey.