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Grey area: fair use of others’ trademarks

19-02-2016

Isik Ozdogan and Ezgi Baklaci

In intellectual property law, brand owners and infringers frequently operate in grey areas. Fair use in Turkey is a particularly unpredictable area, where parties often operate without knowing about or referring to detailed rules.

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.

"Turkish practice allows a trademark to be used as long as the use does not give the impression that the user is linked to the brand owner."

In compatible advertising cases, where the product manufacturer claims its products are compatible with other brands’ products, whether the use is fair will depend on how the trademark is used. Turkish courts have clearly accepted the phrases “use for XYZ” and “for ABC” as fair use in trade. However, existing precedent holds that trademark infringement exists where the same labelling is used on very similar, look-a-like packaging.

The same unclear stance appears when a trademark is used for advertising purposes to promote the type of service it offers, for example, an independent car repair service that uses a trademark to indicate that it specialises in a certain automobile brand.

On the face of it, Turkish court decisions are generally consistent with one another, but unlike in European practice, it is hard to clearly specify or articulate the criteria for determining whether a particular use will be considered legitimate or infringing.

Secondary element

Turkish practice allows a trademark to be used as long as the use does not give the impression that the user is linked to the brand owner. In other words, the trademark must be used as a secondary element and should not go beyond informative purposes.

However, determining this is a matter of interpretation. The Court of Appeal has determined the following uses as inappropriate:

•  Using the logo on large signage;

•  Using the logo in a manner dominating the service’s trade name;

•  Using the logo or colour combinations on employee uniforms, stationery and business cards; and

•  Using a similar website design.

Based on existing precedent, the following criteria are applied when assessing use of a trademark by another party:

•  Using the mark on signage should not exceed the purpose of informing consumers;

•  Using the mark should not give the impression that the user is a branch or authorised dealer of the trademark owner;

•  Using the logo on signage should not catch the consumer’s attention at first sight;

•  The logo should not be used as the dominant element on signage; and

•  Employees should not wear uniforms similar to those worn by employees of the trademark owner’s authorised dealers.

However, the criteria are uncertain from a brand owner’s point of view. For instance, using the exact same logo with the same style is not always necessary for an independent car repair service; and such use should be considered infringing even if there is no further use by the repair service. 

It seems it will take some time for the grey area to become smaller, with disputes between brand owners and infringers continuing.

Isik Ozdogan is a partner at Moroglu Arseven. She can be contacted at: iozdogan@morogluarseven.com 

Ezgi Baklaci is counsel at Moroglu Arseven. She can be contacted at: ebaklaci@morogluarseven.com

Isik Ozdogan, Ezgi Baklaci, Moroglu Arseven, trademark, trademark infringement, registered trademark, fair use,

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