proving-bad-faith
1 June 2014TrademarksÖzlem Fütman and Damla Duyan

Proving bad faith in trademark oppositions

The Turkish Patent Institute (TPI) describes ‘bad faith’ as follows: “the state of a person who acts against generally accepted moral conduct and fair business principles knowingly, with the purpose of gaining unfair advantage or to cause damage to others”.

The burden of proof of bad faith lies with the person who opposes a trademark application before the TPI.

According to Turkish Trademark Decree Law, a third party can contest a trademark application based on Articles 7 and 8. Article 7 lists absolute grounds whereas Article 8 relates to relative grounds. However, in neither of these articles is ‘bad faith’ mentioned as a ground for opposition. The question that arises at this point is whether a third party can file an opposition based on bad faith.

Let’s assume that company X does not have a registration/prior application in Turkey and has not yet entered the Turkish market. Meanwhile, company Y notices company X’s trademark and files an application for it in Turkey. In this scenario, how can company X challenge the trademark application based on bad faith?

The Turkish Trademark Decree Law, Article 35, reads as follows: “Notices of opposition to the registration of a trademark on the grounds that it may not be registered under the provisions of Article 7 and 8, and notices of opposition on the ground that bad faith exists in the application, shall be submitted within three months of the publication of the application.”

Despite the fact that ‘bad faith’ is not cited as a ground for opposition in Articles 7 and 8, it is mentioned in Article 35, where the time scale for the opposition procedure is laid out.

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