Key Amendments on Turkish Trademark Law

The Industrial Property Law numbered 6769 (“Law”), which had been on the agenda of the Turkish Parliament for a long time, was finally enacted and published in the Official Gazette dated 10 January 2017. The Law came into force as of the publication date, along with some exceptional provisions which will come into force later, and replaces the previous pieces of legislation on intellectual and industrial property principles.

The Law brings the principles of trademarks, geographical indications, industrial designs, patents and utility models under one roof. These were previously regulated by different decree laws. These were legislative instruments authorising the Council of Ministers to act on behalf of the Parliament for a temporary period of time and were thus criticised by the Constitutional Court, which led to the provisions of the respective decree laws being cancelled, as the property rights and penal/criminal sanctions should not have been regulated by the decree laws, but by the laws to be enacted by the Parliament.

The Law restructures the Turkish Patent Institute under the name of the Turkish Patent and Trademark Institute (“Institute”) and introduces very significant amendments to the legislative environment surrounding each type of industrial property.

In this short article, our aim is to set out some of the changes pertaining to trademarks, which are mainly as follows:

Consent Letter for Same or Similar Trademarks

The existence of the same or distinguishable trademarks registered or applied for in the same or similar classes still constitutes absolute grounds for rejecting subsequent applications. The Institute will, in principle, reject ex-officio new applications if the trademarks contained therein are the same as or indistinguishable from previous trademarks. However, unlike the Trademark Decree Law no. 556 (the “Decree Law”), which is abolished by the Law, the Law provides that if the applicant submits a consent letter notarised and obtained from the previous applicant or trademark owner for the subsequent application in question, then the Institute shall not reject the respective subsequent trademark application solely because a prior trademark exists.

The respective provision respects the will of trademark owners and applicants and also enables a subsidiary within the same group of companies to apply the same trademarks in the same or similar classes.

Right to a Claim of Non-Use against the Opposition

Under the Turkish trademark registration system, the Institute which receives the application firstly examines whether any absolute grounds for refusal exist and then publishes the application in the trademark bulletin for the classes which have not been rejected on the basis of such absolute grounds for refusal. Once the application has been published, related persons whose rights might be damaged because of the confusion created between the trademarks if the latter trademark is registered can file an opposition against registration of the application. The period for such opposition is shortened by the Law from three (3) months to two (2) months, as from the publication date.

The Law grants for the first time a right to the applicant whose application is being opposed by a third person to claim non-use of the opposing party’s trademark. If the applicant makes such a claim, the opposing party must then prove that she/he was seriously using the trademark that forms the basis of her/his opposition. Said usage must be proven within a five (5) years period prior to the date of application or the date on which the right of priority was given to the subsequent application. Unless the usage of the respective trademark or the justifiable reason which prevents such usage is proven, the opposition shall be rejected for the classes for which the usage has not been proven by the opposing party.

Well-Known Trademarks as Relative Grounds for Refusal

Before the Constitutional Court made its cancelation decision in 2015, the well-known trademarks in terms of article 6bis of the Paris Convention were listed among the absolute grounds for refusal, and the existence of such well-known trademarks prevented the registration of identical or similar marks and the identical or similar class of goods or services. Even if those well-known trademarks were not registered in Turkey, the Turkish Patent Institute would ex officio reject the same or similar applications filed by third parties.

With the enactment of the Law, and also in line with the aforementioned cancellation decision made by the Constitutional Court, the protection provided to trademarks deemed as well known within the meaning of article 6bis of the Paris Convention is placed within the relative grounds for refusal of the trademark application. This means that the well-known trademark owners shall file their oppositions to prevent the registration of same or similar trademarks for the same or similar classes within two (2) months as from their publication date in the trademark bulletin. Please note that the respective well-known trademarks can enjoy respective protection without being required to be registered in Turkey, as long as those trademarks are evaluated within the scope of article 6bis of the Paris Convention.

Commercial Title / Comparative Advertisement

Prior to the Law's introduction, the relationship between the trademark and commercial title was not explicitly regulated under Turkish trademark law. The Law now indicates that, within the scope of the relative grounds for refusal, the owner of a commercial title is entitled to file an opposition against a trademark application which includes the commercial title in question. Furthermore, the owner of a trademark has the right to prevent third parties from using the related mark in their commercial titles.

The principle of comparative advertising is also introduced for the first time, effective starting from 1 January 2018. The regulation related to this sets out in detail the standards which one should comply with when carrying out comparative advertising. The Law does not neglect this new concept of Turkish law, and provides, that in the event of a trademark being used contrary to law in a comparative advertisement, the owner of the respective trademark has the right to prevent her/his trademark from being used in comparative advertisements.

International Exhaustion

The exhaustion principle is regulated under the general provisions of the Law, and thus not only concerns trademarks, but also other types of industrial properties.

In the past, and despite the fact that the Decree Law foresees national exhaustion for trademarks, the Turkish Court of Appeals did make decisions which conformed to the international exhaustion model.

The Law, by not giving any geographical region for exhaustion, seems to have adopted the international exhaustion principle. This would mean that, once a product carrying a trademark is lawfully placed on the market by its owner or with the owner’s consent, the parallel import of the respective product cannot be prevented by the trademark owner.