Grey area: fair use of others’ trademarks

Under Turkish law, a brand owner cannot prevent third parties from using its trademark to indicate the type, quality, quantity, intended purpose, value, geographical origin, time of production, or any other characteristics of goods or services if the trademark is used in accordance with honest practices in industrial and commercial matters (article 12 of the Decree Law covering trademarks). Similarly, third parties may use a brand owner’s name or address if these criteria are met.

Article 12 covers ‘classic’ as well as ‘nominative’ fair use cases, and appears to set a clear border between the black and white areas. However, conflicts between brand owners and infringers have highlighted a grey area where the conditions of fair use in trade are not clearly set.

Until ten years ago many non-Turkish descriptive terms were registered as trademarks for the goods/services which the specific terms define. For instance, ‘Brownie’ is a registered trademark in Turkey and describes the exact good which it is registered for. When a generic term is registered as a trademark, parties using it in accordance with article 12 can successfully overcome arguments by the trademark owner.

The distinction becomes more obscure in nominative fair use cases. In principle, a third party can use a trademark to refer to goods and services which are the same as the trademark owner’s. However, creative uses by infringers have prevented the Court of Appeal from establishing a consistent standard for determining nominative use.