Protection for well-known marks in Turkey

In a globalised world, the boundaries of trade have been almost entirely removed—the quality and price of products are what matter, not their origin. The most important element of pricing, on the other hand, is the value of the trademark used on products and services.

The most important factor taken into consideration during trademark appraisal is the level of recognition of the trademark. Companies allocate large budgets to increasing both national and international recognition of trademarks and to protecting their trademarks, which become well known due to this intensive effort, as well as legal efforts.

Having become a significant centre of attention for investors thanks to its growing economy and geopolitical position in Europe and Asia over recent years, Turkey is also undersigning important breakthroughs in intellectual property rights within the scope of the European Union acquis.

In this article, we will try to briefly examine the well-known trademark concept in Turkey within the framework of international agreements, local legislation and Supreme Court decisions.

Even though the concept of a well-known trademark is mentioned in the Paris Convention, TRIPS and Decree Law no. 556, no definitions of this term are found in these texts. However, according to the definition established by the Supreme Court, which is used in many decisions, a well-known trademark is defined as:

“A strong loyalty to a person or an enterprise, guarantee, quality, advertising power, an association that comes out as a reflex for those in the same environment connected to a wide distribution network, without discriminating between customer and other subjective interests and relations and without differentiating between cultural and age differences”.

The argument that a trademark is well known can be assessed through court proceedings and wellknown trademark applications filed before the Turkish Patent Institute (TPI). The criteria applied by the TPI as the basis for recognition are:

• The register and usage period of the trademark, i.e. the detailed history of the trademark

• The register and spread of the usage in geographical areas, i.e. the relevant domestic and foreign registries

• The currency of the goods and services in the market, market share and annual sales amount

• The characteristics of promotions (especially in Turkey) of the trademark, i.e. the time period, geographical spread, scope, cost and quality of the promotion

• The activities that help advertise the trademark other than promotions, i.e. articles in newspapers or magazines, broadcasts on radio or TV and other media, etc.)

• The court decisions, if any, regarding the recognition of the trademark or the efforts of the trademark owner to protect the trademark • The originality of the trademark and what makes it distinctive

• The results of any survey of consumer recognition of the trademark

• The characteristics of the trademark owner, i.e. the size of the company, number of employees, paid-up capital, endorsement, profit, etc.

• Whether the trademark identifies with the related goods and services, is associated with a good or service or points to a quality of the used goods and services

• Any documents or awards granted to the firm for the products to which the trademark applies

• The distribution channels and opportunities for export/import of the owner The nominal value of the trademark, for example, as shown in the annual financial statements

• The breadth of the portfolio of the goods and services of the registered trademark • How long the trademark has been well known among consumers

• Whether there are any infringement actions against the trademark due to its well-known character, whether it is imitated or used by third parties and, if so, whether this damages the well-known character of the trademark and the trademark owner

• Whether the trademark is open for infringement due to its classification (car, gum marks, etc.) or its consumer group (for doctors, children)

• Any documents that support the above statements and prove the well-known character of the trademark. In order for a trademark that is well-known, according to the meaning of the Paris Convention, to be protected in Turkey, it must not be registered in Turkey.

The Supreme Court consistently finds that a trademark is well known in Turkey if it is well known in any one of the countries that are party to the Paris Convention and if it is used or known in Turkey even if it is not registered in Turkey. On the other hand, a trademark’s registration in many countries or its use over a long time will not be considered sufficient on their own for recognition of the trademark.

Pursuant to the basic principle of both the Paris Convention and Decree Law no. 556, a registered trademark provides a limited protection to its owner only for the goods or services for which it was registered.

As a principle, a trademark must be used in the goods and services for which it was registered. In addition, registration or use of a trademark that is identical or confusingly similar to this mark for the same or similar goods and services for which it was registered is prohibited by accepting as a rule that such a registration or use would harm the reputation of the other trademark, impair its distinctive character or cause undeserved benefit.

A well-known trademark is used in relation to the classes for which it was registered, just as for other trademarks. On the other hand, as an exception to the basic principle, trademarks that are identical or indistinguishably similar to wellknown trademarks are also subject to protection for goods and services that are not related to those for which the well-known mark was registered.

In other words, the scope is expanded in terms of the extent of harming the reputation of the trademark. In line with this, if there is a possibility that situations that would harm the reputation of the trademark or impair its distinctive character could occur even if the trademark is used for nonrelated classes, there can be an infringement.

At this point, Decree Law no. 556 does not make a concrete distinction about the necessary level of recognition. The Supreme Court also states that such a distinction is not possible. In the subject decision, it was not found appropriate to divide well-known trademarks into degrees and levels, and to distinguish them as sectorally well known, supra-sectorally well known or well known in Turkey, based on a phenomenon that is not provided for in the law.

When evaluated together with this decision, the difference between the relevant trademark being well known throughout the world and standing out in a certain sector is taken up on the basis of the specific case and it is assessed in terms of the adverse impact it would create on the reputation of the trademark.

Even though concepts of similarity and harming reputation sometimes interlock with each other, the concept of ‘trademark dilution’ has also been taken up, and consistent decisions have been issued in recent years. Within this context, the local legislation is being developed within the framework of the European Union acquis, and in parallel with this, the practice is also keeping up with the theory.

Korcan Dericioğlu is an attorney-at-law at Ankara Patent Bureau Limited. He can be contacted at: korcan.dericioglu@ankarapatent.com

Ahmet Munir Yaşar is an attorney-at-law at Ankara Patent Bureau Limited. He can be contacted at: ahmet.yasar@ankarapatent.com