Ercüment Erdem Att. Yeşim Tokgöz

Protection Of Local And Globally Well-Known Trademarks

March 2015


Trademarks are symbols that indicate capability to distinguish goods and services of one undertaking from the goods and services of other undertakings. Trademarks also allocate goods or services to an enterprise, and remove the risk of confusion with other goods. Some trademarks increase their economical value with their popularity created for various reasons, such as their marketing politics, product range etc. Turkish legislation and international regulations cover various precautions against unfair advantages sought by third persons who wish to benefit from the reputation of the trademarks. In this article, the notion of well-known trademarks, their protection methods and monopoly rights of globally well-known trademarks without registration under Decree-Law on the Protection of Trademarks numbered 556 (“Decree-Law”) will be emphasized.

The Notion of Well-known Trademarks

Popularity appears differently within the scope of each case. Therefore, the notion of well-known trademarks is not specifically defined under Turkish trademarks legislation as it is not identified through the international organizations. This mission is granted to jurisdiction and doctrine. The World Intellectual Property Organization (“WIPO”) prepared an advisory jurisdiction numbered A/34/13 to clarify this notion, and determined various qualifications with respect to the methods to identify a well-known trademark. These qualifications are adopted by the Turkish Court of Cassation, as well. Within this scope, the Court of Cassation, in its judgments, defined a well-known trademark as “the symbol that appears automatically in the minds of people who are from same environment, and which closely depends on a person or an enterprise, that is irrelevant in relation to geographical areas, culture or age, and which includes quality, assurance, and promotion value among everybody without making distinction.”[1].

Within the scope of relevant advisory jurisdictions, and jurisdictions of the Court of Cassation, the Turkish Patent Institute (“TPI”) developed 17 measures to allow the identification of well-known trademarks that can be found on the web-site of TPI[2]. In accordance with all of these identifications, to determine the reputation of a trademark, the geographical area, the duration, and the capacity of usage, the degree of knowledge or recognition of the trademark in the relevant public sector, the target area of the trademark’s promotions, the duration and capacity of promotions, the third-party recognition or awards of the formal authorities proving the popularity of the trademark that expires through time, and the economic value of the trademarks are essential. As stated, above, each case must be examined separately.

The Protection of Well-Known Trademarks at Registration

Well-known trademarks are under the protection of general rules. Within this scope, applications are examined by the TPI to the extent of absolute grounds for refusal under Art. 7 of the Decree-Law, and relative grounds for refusal under Art. 8 of the Decree-Law, to determine whether new applications abuse the rights of registered trademarks. This examination is made by commissions that are formed by brand experts of the TPI. In the event that the TPI determines absolute grounds for refusal, such as trademarks that are identical, or which are confusingly similar to a registered trademark, or those which were previously filed for registration in respect of an identical or confusingly similar type of product or service, it will directly reject the application.

If the TPI does not ascertain absolute grounds for refusal, it publishes the application. The right holders of registered trademarks, or those who filed for registration earlier, may object to the registration of the published application within 3 months after the publication, claiming that their rights have been infringed according to the relevant grounds for refusal as regulated under Art. 8 of the Decree-Law. The process of objection is regulated under Art(s). 35, 36 and Art(s). 47 to 53 of the Decree-Law. In the event that the objections are accepted, the application of the later trademark is rejected. Thus, the rights of registered trademarks are protected.

According to the Decree-Law, a trademark may be used for different goods and services even though it is identical or similar to a registered trademark, or to a trademark with an earlier application date. However, an exception is regulated under Art. 8/4 of the Decree-Law. In addition to the above-mentioned rules, the well-known trademark owners may object to new applications even if they are for use in connection with goods or services that are not similar to those for which the earlier trademark is registered. The well-known trademarks’ proprietor may use this opportunity only if i) the use without due cause of a trademark filed for registration would take unfair advantage of, ii) or be detrimental to the distinctive character, iii) or reputation of the registered trademark. The similarity between well-known trademarks are insufficient for the use of this objection right. The existence of at least one of the above-mentioned conditions is required to prevent the registration[3].

Rights Conferred to Well-Known Trademarks

The infringement of rights is regulated under Art. 61 ff. of the Decree-Law. According to these provisions, proprietors of the trademarks may prevent only the infringements caused by other trademarks that belong to the same classification, and which are registered in Turkey[4]. Aside from these regulations, Art. 9/1/c of the Decree-Law grants an exception for well-known trademarks. According to this provision, the proprietors of well-known trademarks that are registered in Turkey shall be entitled to prevent third parties from using any symbol that is identical or similar to the registered trademark in relation to goods or services that are not similar to those for which the trademark is registered, if one of the above-mentioned conditions, i, ii, iii exists. In this case, a well-known trademark proprietor may require the prohibition of facilities that are considered under Art. 9/2.

In addition, all of the trademark proprietors, without distinction between well-known or normal trademarks that are registered in Turkey, and the below-mentioned globally well-known trademarks not registered in Turkey, shall initiate an invalidity case according to Art. 42 ff. of the Decree-Law. A registered trademark shall be declared invalid by the court in cases that are considered under Art. 42, including grounds for refusal regulated under Art(s). 7 or 8.

The protection of Globally Well- Known Trademarks under the Decree-Law

Although the protection of the Decree-Law is provided by registration, Art. 7/ı grants an exception to this regulation. According to this Article, well-known trademarks within the meaning of Art. 6bis under the Paris Convention (6bis) that have not been authorized by their proprietors shall not be registered as trademarks. This grants to relevant well-known trademarks a monopoly right without any local registration. Within this scope, the TPI examines applications before the examination commissions through its own data base. If the application is similar to globally well-known trademarks, the TPI rejects the application with regard to the absolute grounds for refusal, even though the globally well-known trademark is not registered in Turkey. The fact that the globally well-known trademark has a reputation in Turkey is sufficient to benefit from this protection.

Art. 6bis is regulated such that the countries of the Union undertake to refuse or to cancel the registration of a trademark which constitutes an imitation liable to create confusion of a trademark considered to be well-known in that country and that is used for identical or similar goods. Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”) Art. 16/3 amended 6bis. In accordance with the amendment, 6bis shall apply, mutatis mutandis, to goods or services that are not similar to those in respect of which a trademark is registered, only if those goods or services would indicate a connection with the proprietor of the registered trademark and the interests of the proprietor of the registered trademark are likely to be damaged by such use.

These provisions appear in two different regulations in Turkish legislation. 6bis is regulated as absolute grounds for refusal, TRIPS 16/3 is regulated as relative grounds for refusal. Therefore, there are different aspects and applications regarding the application of Art. 7/ı. Pursuant to one aspect, since TRIPS 16/3 amended 6bis, the TPI shall examine absolute grounds for refusal within the scope of different classifications, as well regarding globally well-known trademarks. Pursuant to the other aspect, the TPI shall limit the absolute grounds for refusal with the first version of 6bis, and the examination, within the scope of TRIPS16/3, shall occur in the event of an objection. In practice, the TPI does not consider different classes of goods and services while examining applications.

Conclusion

Creating a trademark provides the stability of quality standards of the goods and services in addition to consumers’ trust. As a result, the reputation – and, directly in line with this – the income, increase. The intention to benefit from this popularity without providing any contribution cannot be accepted. The above-mentioned regulations aim to create a system that protects intellectual property rights, locally and globally, by intervening unfair advantages and reputation losses of the well-known trademarks. To realize this purpose, the TPI must work prudently, and the proprietors of well-known trademarks must be aware of their rights, and react immediately in the event of an abuse.



[1] Decisions of the Assembly of Civil Chambers of the Court of Cassation, dated 21.9.2005 and numbered 2005/11-476 E. 2005/483K. may be given as example in the relevant matter.

[3] Decisions of the 11th Chambersof the Court of Cassation, dated 18.06.2008 and numbered 2007/5927 E., 2007/9302 may be given as example in the relevant matter.

[4] For more information: http://www.erdem-erdem.com/en/articles/infringement-of-trademark-rights// (accessed on 27.03.2015).