I OVERVIEW

Turkish trademark law is closely aligned with EU law and international norms. Therefore, Turkey is well positioned for protection of trademark rights in terms of both modern and EU-aligned legislation and trademark litigation.

Furthermore, trademark cases are handled by specific intellectual property (IP) courts (the Intellectual Property Civil Court and the Intellectual Property Criminal Court) in Turkey, with judges in these courts handling IP cases only, including trademark cases. Therefore, this creates a more predictable litigation and enforcement environment in Turkey.

As Turkey is a transportation hub between Europe and Asia, and many global companies have manufacturing facilities in Turkey, protection of trademark rights in Turkey is very important, and foreign companies, in particular, should ensure their trademarks remain secure in Turkey.

II LEGAL FRAMEWORK

i Legislation

In Turkey, the Industrial Property Code (Law No. 6769) governs the principles, rules and conditions relating to the protection of trademarks, as well as patents, industrial designs and geographical indications.

The Industrial Property Code entered into force on 10 January 2017, replacing Decree Law No. 556 for the Protection of Trademarks.

Turkey is a party to most major international treaties relating to trademarks, including the following agreements:

  1. the Paris Convention for the Protection of Industrial Property 1883;
  2. the Treaty of Sèvres 1920;
  3. the Trade-Related Aspects of IP Rights Agreement;
  4. the Madrid Agreement concerning the International Registration of Marks;
  5. the Protocol relating to the Madrid Agreement concerning the International Registration of Marks;
  6. the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  7. the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks; and
  8. the Trademark Law Treaty.

ii Authorities

The Turkish Patent and Trademark Office is the body responsible for managing national trademark applications. The decisions made by the Turkish Patent and Trademark Office can be challenged before specialised civil IP courts.

Domain names with the ‘.tr’ top-level domains are handled by Nic.tr Administration within the body of the Middle East Technical University. Nic.tr Administration performs the administrative, financial and technical services needed or required for .tr domain names.

Company names are not required to be registered as trademarks in Turkey; they come into effect by commencement of their use in commerce. However, trademarks, company names, domain names and any other sign that may be the subject of a dispute, are all enforced before the Turkish civil courts in civil litigation proceedings.

iii Substantive law

In Turkey, as a rule, to obtain protection under the Industrial Property Code, a trademark must be registered with the Turkish Patent and Trademark Office. The exclusive right on a trademark is acquired through its registration with the Office. The registration of a trademark grants the holder of the trademark the right of its sole use and protects unauthorised use of the trademark.

The Industrial Property Code provides an exception to the registration requirement for prior and ‘genuine’ ownership of unregistered trademarks and for unregistered well-known marks within the meaning of Article 6 bis of the Paris Convention. However, the genuine ownership and well-known status exceptions mainly apply in cancellation or opposition proceedings, and do not extend to trademark infringement claims.

The protection for registered and unregistered trademarks is not limited to the Industrial Property Code. Unregistered trademarks, company names, trade names and domain names are generally protected by unfair competition provisions in the Turkish Commercial Code.

III REGISTRATION OF MARKS

i Inherent registrability

In Turkey, trademark applications are filed with the Turkish Patent and Trademark Office. The application may be filed by one or more legal or natural persons. The application can be made by the applicant him or herself, or by a qualified trademark attorney. However, the applicants whose domiciles are situated abroad must be represented by a trademark attorney who is registered before the Turkish Patent and Trademark Office.

Trademarks can consist of any symbols, such as words, shapes, sounds, colours or letters. In order to be registered as a trademark, a sign must have a distinctive character that makes it possible to distinguish the goods and services it represents from others, and must represent the subject matter of the trademark in a clear and precise manner.

In priority claims under the Paris Convention, it is necessary to state the priority right on the application form. The certified copy of the first application should be submitted to the Turkish Patent and Trademark Office within three months of the date of application.

Once an application is filed, the Turkish Patent and Trademark Office examines whether the classification is correct and accurate, and whether the formal requirements are satisfied. The Office then examines whether there are any absolute grounds for refusing the application. The absolute grounds for refusal are:

  1. non-compliance with the legal requirements of the Industrial Property Code;
  2. existence of an identical, or indistinguishably similar, earlier trademark or trademark application, covering the same, or same type of, goods or services;
  3. descriptiveness;
  4. if the mark has become customary in current and established trade practices;
  5. if the mark consists of a shape resulting from the nature of the goods, or that is necessary to obtain a technical result or that gives substantial value to the goods;
  6. deceptiveness;
  7. no authorisation from the relevant authorities for the use of the mark;
  8. the mark includes armorial bearings, emblems or hallmarks with historical and cultural value that are of concern to the public, and the registration of which is not authorised by the relevant authorities;
  9. the mark involves religious values or symbols;
  10. the mark is contrary to public policy and public morals; and
  11. the mark is composed of, or contains, a registered geographical indication.

If there is any absolute ground for refusing the application, the Turkish Patent and Trademark Office issues a provisional refusal of protection. If no absolute grounds are identified, the Office publishes the application in the Official Trademark Bulletin, and the term for filing third-party oppositions begins.

The application fee to be paid to the Turkish Patent and Trademark Office is 205 Turkish lira for one application with one class. For each additional class, the amount will increase by 205 Turkish lira. Once the Turkish Patent and Trademark Office has decided on the registration of the trademark, the applicant must a pay registration fee of 550 Turkish lira to complete the registration process.

ii Prior rights

A trademark application may be refused if the trademark is considered substantially identical or deceptively similar to an earlier registered or pending trademark that covers identical or similar goods or services. However, the Industrial Property Code allows later trademark applicants to overcome a provisional refusal decision from the Turkish Patent and Trademark Office by submitting a notarised consent letter from the earlier right holder.

iii Inter partes proceedings

Any interested party may submit an opposition to an application on the basis of absolute or relative grounds, or both, for refusal. The absolute grounds are discussed in Section III.i, and the relative grounds for refusal are as follows:

  1. the application is identical or similar to an earlier trademark registration or application and covers identical or similar goods or services, and there is a likelihood of confusion between them;
  2. unauthorised application for an identical or indistinguishably similar trademark by the agent or representative of the trademark owner in its own name, without valid justification;
  3. prior and genuine ownership of the mark applied for by a third party;
  4. the application is identical or similar to:
    • a well-known mark under Article 6 bis of the Paris Convention; or
    • an earlier trademark registration or application that is well-known in Turkey;
  5. the application contains the name, trade name, photograph, copyright or industrial property right of a third party;
  6. the application is identical or similar to a trade mark registration, the protection period of which has ended due to non-renewal, and covers identical or similar goods or services, if the application is filed within two years of the end of the protection period of the earlier registration and the earlier registration is put to use within this two-year period; and
  7. the application is filed in bad faith.

The opposition should be filed within two months of the publication of the application in the Official Trademark Bulletin. The two-month period is not extendable. The opposition fee of 130 Turkish lira should be paid by the opponent party. The applicants are entitled to submit a response within one month of the notification of the opposition.

In Turkey, the invalidation or revocation of a registered trademark may only result from a judicial decision. Any interested party may file a lawsuit before the Turkish IP courts by requesting invalidation or revocation of a registered trademark.

With respect to invalidation actions, there is a time limit for the filing of an action. The owner of the prior trademark (registered or unregistered) cannot claim invalidity of the later trademark if he or she knew of the use of the later trademark and had stayed silent on this for five years. However, if the later trademark use is in bad faith, this time limit is not applicable.

With respect to revocation actions based on non-use, if the trademark has not been used without a justifiable reason in Turkey, or if the use has been suspended during an uninterrupted period of five years, the trademark will be revoked. Article 9 of the Industrial Property Code considers use as follows:

  1. use of the trademark with different elements that do not alter the distinctive character of the trademark;
  2. use of the trademark on goods or on packaging solely for export purposes; and
  3. use of the trademark by third parties with the consent of the proprietor.

iv Appeals

If there is any absolute ground for refusing the application, the Turkish Patent and Trademark Office issues a provisional refusal of protection and the applicant is granted a two-month period in which to file an appeal to the Re-examination and Evaluation Board of the Office against such a refusal. This period is not extendable.

If an opposition is filed, the Turkish Patent and Trademark Office can accept or refuse the opposition and its decision can be appealed in writing within two months to the Re-examination and Evaluation Board of the Office.

Any decisions rendered by the Re-examination and Evaluation Board of the Turkish Patent and Trademark Office may be appealed before the Turkish IP Courts within two months of notification of the decision.

Furthermore, the final decisions of the Turkish IP courts, which are the courts of first instance, can be appealed before the district courts, and the decisions of the district courts can be appealed before the courts of appeal. An appeal does not automatically stop the execution of the decision, and the suspension of the execution should be requested together with the appeal.

IV CIVIL LITIGATION

i Forums

Under Turkish law, it is possible to enforce trademark rights before the criminal law courts and civil law courts.

In terms of civil law protection, trademark infringement actions are filed before the specialised Civil Courts of Industrial and Intellectual Property Rights in Istanbul, Ankara and Izmir. In other cities, one of the regular civil courts (if there are more than two courts, the third civil court, otherwise the first civil court) is assigned as a specialised IP court.

Turkish courts have jurisdiction in trademark infringement cases if the trademark right is registered in Turkey, if the defendant resides in Turkey or if the tortious act is committed in Turkey. According to Turkish law, if the place in which the tortious act is committed is not the place where the damage has occurred, the law of the state where the damage has occurred shall govern.

Turkey is the applicable jurisdiction if the country is:

  1. the regular domicile of the trademark right holder;
  2. the place where the infringement was committed; or
  3. the place where the act of infringement produced consequences.

ii Pre-action conduct

As of 1 January 2019, mediation is mandatory for trademark disputes brought by legal entities or natural persons regarding receivables and compensation claims. However, there is no restriction on applying mediation for other disputes as well.

Trademark-related disputes can also be resolved by arbitration. Under the Turkish Civil Procedure Law, arbitral decisions are executable without the need for any judicial approval or decision.

Alternative dispute resolution methods have significant advantages, such as the arbitrator’s expertise, confidentiality of proceedings and the flexibility to adapt the proceedings to different situations.

In Turkey, although not required by law, a cease-and-desist letter is usually sent to the counterparty prior to the filing of a lawsuit, with the exception of lawsuits requesting injunction or seizure. The aim of sending a letter is to find an immediate solution without the need for a court process, which would take a significant amount of time.

iii Causes of action

Trademark infringement is the most common cause of action, and the following situations are considered as infringement:

  1. use of the trademark without the permission of the owner;
  2. use of an identical or confusingly similar trademark without the consent of the trademark owner;
  3. intention to form a contract for, or sale, distribution, commercial use, import, export or possession for commercial purposes of, goods bearing an identical or confusingly similar trademark that is known or should be known to be an unlawful imitation; and
  4. transfer to third parties or extension of rights acquired under a licensing contract.

In these cases, the similarities must be sufficient to create confusion or at least the likelihood of confusion to the average consumer.

Further, the invalidation and revocation of a registered trademark may only result from a judicial decision. Therefore, invalidation and revocation lawsuits are also commonly filed in Turkey. These actions are mainly based on relative or absolute grounds for invalidation of a registered trademark, and based on non-use of a registered trademark for revocation of a registered trademark.

Additionally, unfair competition, which is regulated by civil liability provisions, is often used as an additional claim in action related to trademarks. Unfair competition provisions prohibit generating confusion between companies or their products. The actions related to domain names or company names are mostly based on unfair competition provisions.

iv Conduct of proceedings

The procedure of civil cases in Turkey is mainly based on writing. Therefore, the briefs of the parties and the written expert report are the most significant documents. The language of proceedings is Turkish. Documents in another language must be translated by the parties, and it is open to the judge to order a retranslation.

Before the trial, the claimant provides his or her claim petition to the court and the defendant responds to such with a response petition. Afterwards, secondary petitions are provided to the court by the claimant and defendant in that order. All evidence, claims and defences of parties must be submitted to the court at this stage with their respective petitions. In principle, admission of additional evidence or bringing new claims or defences is not allowed in line with the procedural law after the completion of this stage.

During the hearings, the judge will listen to the parties; however, the trial is based on the written documents submitted to the court. Therefore, the hearing may be used as a tool to point out some of the critical issues for the judge to concentrate on.

Trademark litigation relies on documentary evidence, which is evidence provided by the parties or the expert report obtained by the court. While it is possible to take witness statements, it is not the usual practice in trademark litigation, and the witness statements rarely preclude documentary evidence.

There are certain minimum requirements for a document to be accepted as proof before the court (e.g., all agreements related to transfer of copyright must be made in writing).

In most cases, it is possible to obtain a first-level decision in a trademark infringement case or other trademark dispute within 12 to 18 months. This term also includes expert examination.

v Remedies

In civil proceedings, the remedies available in Turkey include:

  1. cessation of the infringing acts;
  2. confiscation or destruction, or both, of the infringing products or the equipment and machinery used to produce the products;
  3. compensation for material and moral damages; and
  4. publication of the court’s decision.

Preliminary injunction is also possible in Turkey before or during the substantive proceedings. The claimant must prove that:

  1. it is the rights holder;
  2. its rights are being infringed or there is a high likelihood of infringement; and
  3. it may suffer irreparable harm or damages.

Rights owners may apply for a preliminary injunction for cessation or prevention of the infringing activities, as well as for seizure of the infringing goods.

V OTHER ENFORCEMENT PROCEEDINGS

In Turkey, it is also possible to enforce trademark rights before specific criminal courts. Before initiating a criminal action, the plaintiff first files a criminal complaint before the Prosecution Office. The criminal action then starts before the Criminal Courts of Industrial and Intellectual Property Rights in Istanbul, Ankara and Izmir for cases where the legislation stipulates imprisonment or judicial monetary penalty for infringement of a trademark right. In other cities, one of the regular criminal courts (if there are more than two courts, the third criminal court, otherwise the first criminal court) is assigned as a specialised IP court. In criminal proceedings, penalties including imprisonment and fines are available for trademark infringement cases.

Additionally, it is possible that any goods or products infringing trademark rights may be confiscated by the Customs Authority during import, export or transit. The Customs Authority, without the need for a court or public prosecutor order, may confiscate any goods that breach trademark rights. They must then notify the trademark right owner, who will follow the subsequent standard procedure, such as initiation of a civil case or obtaining an injunction.

VI RECENT AND PENDING CASES

The Industrial Property Code entered into force on 10 January 2017, replacing Decree Law No. 556 for the Protection of Trademarks. However, on 6 January 2017, the Turkish Constitutional Court ruled the annulment of Article 14 of Decree Law No. 556 on grounds that the provision was unconstitutional since it had to be regulated through a parliamentary act rather than a decree law. Article 14 of Decree Law No. 556 related to revocation of a trademark registration due to non-use.

There is a four-day gap between the effective dates of the Turkish Constitutional Court’s decision and the Industrial Property Code. In certain cases, the IP courts stated that the Turkish Constitutional Court’s decision is retroactive; therefore, the use requirement did not exist before the effective date of the Industrial Property Code.

However, the Supreme Court recently declared its decision on this matter. The 11th Civil Chamber of the Supreme Court’s decision of 14 June 20192 was as follows: the Industrial Property Code entered into force on 10 January 2017; however, the date of ratification of the Code was 22 December 2016. The ratification date is before the Turkish Constitutional Court’s decision on the annulment of Article 14 of Decree Law No. 556. It is clear that the legislator aims to enforce the trademark use requirement retroactively.

In light of the Supreme Court’s decision, the courts will now implement Article 9 of the Industrial Property Code against non-use of trademarks.

VII OUTLOOK

On 1 January 2019, the mandatory mediation system was introduced into Turkish law, making mediation mandatory for commercial disputes, including trademark disputes, where monetary debt and compensation are claimed. The Turkish government strongly promotes the mediation system, and, in the near future, mediation is expected to be a mandatory pre-condition to formal litigation related to all IP disputes. In this regard, alternative dispute resolution methods will be more important and effective in practice.

According to the Industrial Property Code, the Turkish Patent and Trademark Office will deal with revocation actions due to non-use. However, the effect of this provision has been suspended for seven years; therefore, revocation actions based on non-use will continue to be filed before IP courts until 2023, after which, the Patent and Trademark Office will be entitled to decide on the revocation of a registered trademark based on non-use.


Footnotes

1 Hatice Ekici Tağa and Burak Özdağistanli are managing partners at Özdağistanli Ekici Attorney Partnership.

2 No. E 2019/1765 K 2019/442.