Use of a trademark in Turkey
Under the current approach adopted by Turkish courts, a foreign company that manufactures goods in Turkey will be deemed to be using its trademark there only if the goods are introduced onto the Turkish market.
Turkish companies are important manufacturers, particularly of textile and clothing goods. The country has relatively high standards for working conditions. It is a notable transport hub for land, sea, and air, and has a custom union agreement with the EU. Due to these factors, global brands based in the EU and US regularly cooperate with Turkish manufacturers to have products made in Turkey according to their specifications. Depending on each brand’s policies, these Turkish manufactured products can be sent to the intended market either with or without labelling.
From a trademark perspective, questions arise regarding whether Turkish trademark registration is necessary, given that only the production takes place in Turkey. A further question exists concerning whether the manufacturing of goods in Turkey constitutes use of a trademark within the context of proving use of a mark. While the Trademark Decree Law appears to specifically and clearly address these questions, court practices seem to be contradictory.
Article 14 of the Trademark Decree Law outlines a non-exhaustive list of what constitutes use of a trademark in Turkey. Use of the trademark on goods or their packaging solely for export purposes is listed among the other means of use. From the wording of this provision, it is clearly understood that use of a trademark in Turkey includes attaching the trademark to the label, or to the package, before the product is dispatched from Turkey.
If a trademark is not attached to the Turkish-manufactured product once it has left Turkey, this will not be considered to be a use of the trademark in Turkey. Article 14 does not make a distinction regarding the nature of the production.
"It is clearly understood that use of a trademark in Turkey includes attaching the trademark to the label, or to the package, before the product is dispatched from Turkey."
Despite the wording of article 14, in practice Turkish courts seem to give weight to whether the company manufactures the goods for itself or on behalf of another company.
In some cases Turkish courts have held that a trademark has not been used in Turkey in circumstances where a Turkish company acts as a manufacturer and the goods are not introduced onto the Turkish market. The courts have treated the question of whether the goods are introduced onto the Turkish market as determinative.
Under the current approach, if a court determines that this introduction has not occurred, a company that has arranged for its goods to be manufactured in Turkey will not be deemed to be using its trademark in Turkey.
However, Turkish manufacturers are generally held liable by Turkish courts in trademark infringement claims initiated by Turkish trademark owners regarding goods being manufactured in Turkey. In such cases, courts have not accepted the manufacturer’s defence that it is manufacturing the goods according to the purchasing company’s specified order. In certain cases the Appeal Court has approved the existence of trademark infringement, despite the fact that the product was not introduced onto the Turkish market.
In future, Turkish courts must make a clear distinction regarding products manufactured solely for export purposes—which Turkish consumers will never have access to.
Isik Ozdogan is a partner at Moroglu Arseven. She can be contacted at: iozdogan@morogluarseven.com
Ezgi Baklaci is a counsel at Moroglu Arseven. She can be contacted at: ebaklaci@morogluarseven.com
