The Protection of Well-known Trademarks in Türkiye

Apple Logo is an example of well-known Trademarks. (Photo by Laurenz Heymann on Unsplash)

Trademarks are big assets not only local traders but also international companies. However, for international companies, the protection of their brands are vital since their brands have reputation for important amount of people across the world. Thus, there are requirements to protect trademarks in an international level. 

There has been studies to protect trademarks around the World and Paris Convention for the Protection of Industrial Property is significantly contributed these efforts.  The treaty signed in Paris on 20 March 1883, and still in force in 2024. Türkiye is the one of the contracting parties in the agreement, and the agreement has been forced since 10 October 1925.

Paris convention provides basic protection elements for trade names and trademarks, inter alia. The articles 3/1-c, 6/4 and 6/5 of Turkish Industrial Property Code are closely related with Article 2 and Article 6 bis of the Paris Convention.

Turkish Industrial Property Code

Persons to benefit from protection

ARTICLE 3-​(1) The following shall benefit from protection of this Code;

c) Persons who have the right of application according to the Paris Convention or Agreement Establishing the World Trade Organization,

Turkish Industrial Property Code

Relative grounds for refusal in trademark registration

ARTICLE 6-

(4) Trademark applications which are identical or similar to the well-known marks within the context of Article 6 bis of the Paris Convention, shall be refused upon opposition in respect of the identical and similar goods or services.

(5) A trademark application which is identical with, or similar to, an earlier registered trademark or application irrespective of whether the goods or services for which it is applied or registered are identical with, similar to or not similar to those for which the latter trademark is applied for, and the use of the latter trademark without due cause would take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark has in Turkey; shall be refused upon opposition of the proprietor of that earlier trademark.

Paris Convention for the Protection of Industrial Property

Article 2

National Treatment for Nationals of Countries of the Union

(1) Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals; all without prejudice to the rights specially provided for by this Convention. Consequently, they shall have the same protection as the latter, and the same legal remedy against any infringement of their rights, provided that the conditions and formalities imposed upon nationals are complied with.

(2) However, no requirement as to domicile or establishment in the country where protection is claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial property rights.

(3) The provisions of the laws of each of the countries of the Union relating to judicial and administrative procedure and to jurisdiction, and to the designation of an address for service or the appointment of an agent, which may be required by the laws on industrial property are expressly reserved.

Paris Convention for the Protection of Industrial PropertyArticle6bisMarks: Well-Known Marks

(1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

After pointed out these articles, the protection of according articles 6/4 and 6/5 of the Industrial Property Code can be examined.

THE PROTECTION OF WELL-KNOWN TRADEMARKS ACCORDING ARTICLE 6/4 OF THE INDUSTRIAL PROPERTY CODE

According the article 6/4, any trademark application which the sign is similar or identical with well-known marks is refused upon a opposition. However, this sign is only refused with related or identical goods or services. To examine closely this article, if there is a well-known marks, which are known by important amount of people in the sector, similar or identical application will be rejected. To be specific, hypothetically let consider there is a trademark, which the sign is “B WIZARD” and the trademark owner produces car batteries, the trademarks is well-known by important amount of people in the sectors such as manufacturers of car spare parts. Any application to similar or identical with “B WIZARD” such as “B WITTAN, B WIZARDD, B WIZZARD, BB WIZARD, T WIZAD”  will be rejected.

To object these kind applications, citizenship is not necessary but either one have to has a company in Türkiye, which the company could be branch or main,  or give attorney in fact to a Trademark Attorney who certificated by TÜRKPATENT.

THE PROTECTION OF WELL-KNOWN TRADEMARKS ACCORDING ARTICLE 6/5 OF THE INDUSTRIAL PROPERTY CODE

Similar to the article 6/4 any application with similar or identical a well-known mark is refused upon opposition. However, in this article there are differences, mainly the protection of the article wider than before. With the protection 6/4, the application is solely refused for similar goods or services, however in the article 6/5, the application is refused for unsimilar services or good if there is take unfair advantage of, or be detrimental to the distinctive character or the repute of the earlier trade mark due to the reputation the earlier trademark.

It is important to suggest that, to apply the protection of the article 6/5, either one’s has to be a registered trademark, or trademark application to TÜRKPATENT.

Likewise as the article 6/4, to object these kind applications, citizenship is not necessary but either one has to have a company in Türkiye, which the company could be branch or main,  or give attorney in fact to a Trademark Attorney who certificated by TÜRKPATENT.

TRADEMARKS WHICH REGISTERED IN BAD FAITH IN TÜRKPATENT

If there is a trademark registration which registered completely in bad faith, one always can apply for cancellation the trademark. This is mainly explained in (3) of 6bis article of Paris Convention and Turkish Industrial Property Code Article 6/9.

Turkish Industrial Property Code

Relative grounds for refusal in trademark registration

ARTICLE 6-

(9) Trademark applications filed in bad faith shall be refused upon opposition.

Paris Convention for the Protection of Industrial Property

Article 6bis

Marks: Well-Known Marks

(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

 The Protection of Well-known Trademarks in Türkiye

 T. Serkan Budak

 Attorney at Law

+90 553 023 07 27

info@budak-ip.com