Ercüment Erdem Att. Yesim Tokgoz

Malicious Registration within the Scope of Trademark Law

August 2018

Trademarks are essential vehicles for business life. These instruments created and improved with much effort and capital, are easy targets for abuse. Trademark laws, basically, aim to take trademarks under protection through registration, and to prevent or remove the unjust benefit of third persons who are not right holders. Pursuant to Turkish law and, likewise, many other countries, the protection of the trademarks is based on registration and is territorial. However, there are several exceptions. In this article, we will shed light on rights that have arisen from unregistered symbols and foreign trademarks that are not registered in Turkey, within the scope of malicious registration.

Malicious Registration

Pursuant to the established decisions of the Court of Cassation, malice in trademark registration is defined as “to obtain unjust benefit from others’ trademarks through the misuse of the purpose of the protection provided by registration.” In other words, it means that the registration application by a person is made, despite the fact that she/he knows, or it is possible that she/he may know, that the symbol is used and/or registered by another person, at home or abroad.

Pursuant to the doctrine, malicious registration is an abuse of rights. On the other hand, it aims to cause confusion with others’ trademarks or symbols, or to prevent the registration of others’ trademarks in Turkey, and to take an advantage through this means[1]. The person who applies for registration maliciously aims to take advantage of the quality that the trademark represents in his/her own goods and services. This leads to an abuse of the trademark’s reputation and constitutes a contradiction to prudent merchant rules.

It should be emphasized that malicious registration requires a prudent evaluation in every case bearing the risk of trademark confusion[2], the collocutor that the trademark addresses, and the good or service classes that the trademark is to be registered under.

Unregistered Symbols

Pertaining to the doctrine and the Court of Cassation decisions, the privilege belongs to the real right holder who creates, markets, and introduces the trademark to the public[3].

The registration of symbols with the Turkish Patent and Trademark Institution (“Turkish Patent”) that people use in their business lives is at their sole discretion. Unregistered symbols are protected under the provisions of unjust competition of the Turkish Commercial Law in any event.

Moreover, Article 6.3 of Turkish Intellectual Property Law numbered 6769 (“IPL”), grants an opposition right, under Turkish Patent, to the proprietor of an unregistered trademark, or another symbol used in the course of trade, if a registry application that is same as, or similar to, their symbol, in the same or similar good or service classes. In order that the proprietor may use this right, the symbol is supposed to have marked distinctiveness[4]. In such cases, it may be accepted that the applicant has acted in bad faith in order to profit from famousness of the symbol.

Likewise, upon the request of the real right holder, a trademark that has been registered maliciously shall be removed from the trademark registry through an invalidity case. If the abovementioned conditions are fulfilled, the Court of Cassation determines the real right holder, and removes the trademark that was registered maliciously with the purpose of obtaining unjust benefit due to the trademark’s reputation[5].

Foreign Trademarks Not Registered in Turkey

Trade does not have any national boundaries; however, the trademark laws’ protection is territorial. Therefore, this principle lends itself to the abuse of trademarks that are not registered in Turkey. It may be the case that persons who would like to profit from the reputation or commercial success of foreign trademarks that have not yet been registered with the Turkish Patent directly, and/or through the Madrid Protocol, apply for registration in order to be the right holder within the territory of Turkey.

As per the established decisions of the Court of Cassation, the protection granted for unregistered symbols, is granted to the trademarks that are registered abroad, but not yet in Turkey, by the citizen of the countries that are parties to the international conventions, which Turkey executed[6]. Within this scope, the Court of Cassations states that the fundamental principle regarding the fight against bad faith shall be applicable under the trademark law, despite the territory and privilege in the application and registration principles.

In addition, the Court of Cassation cites in its many decisions that due to current technological means, it is unacceptable to say that trademarks registered abroad are not known by persons who work in the same sector[7]. Moreover, bearing in mind the spreading speed of the information through the internet, it is now impossible to defend that people are unaware of trademarks in their sector that are launched to the market from elsewhere in the world. In light of the foregoing, the Court of Cassation accepts the existence of bad faith stating that persons who apply for registration of trademarks that are the same as, or similar to foreign trademarks, in the same good and service classes, aim to benefit from the reputation of those trademarks. Therefore, the high court sees the right holder of the foreign trademark as the real right holder, and decides to remove the malicious registration in Turkey[8], as to allow otherwise would prevent the registration of the real right holder in Turkey, and this would erroneously award persons who did not act as prudent merchants.

Well-Known Trademarks

Article 6.4 of the IPL regulates that the application of trademarks that are the same, or have a similar nature, as well-known trademarks[9] within the context of Article 6 of the 1st bis of the Paris Convention, in the same or similar good and service classes, shall be rejected upon objection by the real right holders.

As mentioned above, in current technical climate, to have no awareness of well-known trademarks is considered contrary to the ordinary course of life. In this regard, the Turkish Patent and Court of Cassation consider the registration of a trademark that is the same, or has a similar nature, as the well-known trademark to be a malicious attempt, even though the well-known trademark is not registered in Turkey.

Removal of Unjustness

Pursuant to Article 6.9 of the IPL, malicious registration has been clearly counted as relative grounds for refusal. Within this context, the real right holder may apply to the Turkish Patent within 2 (two) months after the publication of the trademark application in the Trademark Bulletin, and request that the application be rejected. If the real right holder does not reside in Turkey, the application shall be carried out through a trademark attorney. If the trademark is registered despite the malicious intent, the real right holder may file a law suit for the invalidity of the trademark to ensure the cancellation of the registration.

It should be noted that pursuant to Article 25.6 of the IPL, as a general rule, if a trademark owner remains silent for 5 (five) consecutive years towards the use of a trademark that is the same or similar to his/her trademark, even if s/he is aware or should be aware, the owner shall not put forward his/her trademark as grounds for invalidity. However, if the next dated trademark is registered maliciously, the trademark owner shall not suffer from the loss of rights resulting his/her silence.

Conclusion

Third persons’ intent to profit from the reputation of trademarks that have been created, used and presented by real right holders where ever they may be in the world, is unacceptable. The territorial principle of trademark laws are interpreted widely within this scope, as the protection of bad faith intent is contrary to fundamental law rules and good faith. Thus, the IPL and established jurisprudence protect symbols and foreign trademarks, as well as well-known trademarks, that are not registered in Turkey within the scope of the Turkish Patent and/or the Madrid Protocol; whereas, the malicious registration requests of the same or similar versions of the symbols and trademarks, in the same or similar good and service classes is regulated as relative grounds for refusal of trademark registration. Upon the objection of the real right holder, the registration applications shall be rejected. In addition, maliciously registered trademarks shall be cancelled and removed from the trademark registry through invalidity cases.

[1] Tekinalp, Ünal, Fikri Mülkiyet Hukuku, İstanbul 2012 pg. 428.

[2] For more information: http://www.erdem-erdem.av.tr/publications/newsletter/possibilities-and-the-results-of-trademark-confusion/ (accessed on 04.09.2018).

[3] Decision of the 11th Chamber of Court of Cassation dated 19.04.2002, numbered 2001/9903E., 2002/3699 K. may be given as an example in the relevant matter.

[4] Decision of the 11th Chamber of Court of Cassation dated 13.10.2003, numbered 2003/2883 E., 2003/9171 K. may be given as an example in the relevant matter.

[5] Decision of the 11th Chamber of Court of Cassation dated 18.01.2018, numbered 2016/5961 E., 2018/455 K. may be given as an example in the relevant matter.

[6] Karahan, Sami, Tescilsiz Markanın Korunmasına Marufiyet Şartı pg. 19.

[7] Decision of the 11th Chamber of Court of Cassation dated 05.05.2014, numbered 2013/11926 E., 2014/8450 K. may be given as an example in the relevant matter.

[8] Decision of the Assembly of Civil Chambers of Court of Cassation dated 16.07.2008, numbered 2008/11-501 E, 2008/507 K. may be given as an example in the relevant matter.

[9] For more information: http://www.erdem-erdem.av.tr/publications/law-post/protection-of-local-and-globally-wellknown-trademarks/ (accessed on 04.09.2018).