10 August 2015Jurisdiction reportsIsik Ozdogan and Ezgi Baklaci

Turkish Constitutional Court nibbles away at trademark law

According to the now cancelled article 16(5), when a trademark registration was assigned, any identical or similar trademarks (for the same or similar goods or services) were also required to be transferred to the same assignee. In practice, when an application to record the trademark assignment was filed, the Turkish Patent Institute (TPI) would allow a two-month period in which to assign any remaining identical or similar trademarks. If the parties failed to comply with this requirement, the TPI would reject the assignment recordal request.

Article 16(5) created problems because in some circumstances the TPI would interpret the term “similar trademarks” in a broad manner. The TPI also began conducting a similarity search when an assignment recordal request was filed. These factors, combined with the TPI’s refusal to accept consent letters, conflicted with parties’ freedom of contract, one of the basic principles of civil law.

In 1995, article 7(1)(i) established a legal basis for the TPI to refuse trademark applications on the basis that an application is similar to a well-known mark, according to 6bis of the Paris Convention. Within this context, the TPI has rejected trademark applications which were identical to an earlier trademark, regardless of the goods and services covered by the later applications. The TPI also established the well-known trademark registry, aiming to record and make information about well-known trademarks publicly accessible.

Within the scope of two separate lawsuits, the Ankara 3rd Civil Court of Intellectual and Industrial Property Rights made applications to the Constitutional Court, Turkey’s highest court, seeking cancellation of article 16(5) and article 7(1)(i) respectively.

The Constitutional Court ruled to strike out article 16(5) and article 7(1)(i) on the basis that each conflicted with article 91 of the Turkish Constitution. The constitution states that (with limited exceptions) decree laws may not regulate fundamental rights, nor may they regulate individual or political rights and duties.

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