Trademark Law in Turkey
The Industrial Property Law (No. 6769) was accepted on 22.12.2016 and entered into force after being published in the Official Gazette on 10.01.2017.
The Turkish Patent and Trademark Office has published a guideline to clarify the examination issued in terms of absolute refusal grounds. With a guide to the examinations in terms of relative grounds of refusal, the decisions of the Turkish Patent and Trademark Office at the stages of objection to publication and objection to the decision have become more predictable in cases where a defense of disuse is made. Besides, the Turkish Patent and Trademark Office has recently started to use technology and newer software systems with the EPATS system, which obliges all transactions to be done electronically. Since most of the cases, decided within the scope of the IP Law, have not yet been referred to the Courts of Appeal because of the long litigation processes, there is no settled Court of Appeal case-law to guide in terms of the new practices which brought by the IP Law.
Loss of Right Through Acquiescence
One of the most important innovations brought by the Industrial Property Law numbered 6769 is undoubtedly "loss of rights through acquiescence ". There was no provision related with this matter in the Legislative Decree numbered 556 about the Protection of Trademarks. However, the institution has been subsisted in our law for many years with the Supreme Court Practices. With the entry into force of the IP Law, loss of right through acquiescence has gained a positive regulation. The loss of right through acquiescence has been regulated by IP Law Article 25 subclause 6: ““If the owner of the trademark knows or should have known that a later-dated trademark has been used, but has remained silent for five consecutive years, he cannot claim his trademark as a ground for invalidation unless the registration of the trademark with the subsequent date is malicious”.
Because of there was there was no legal regulation on the subject before the entry into force of the IP Law, the practice was be in a question which form a basis of Turkish Civil Code Article 2. Since the rule of good faith and the prohibition of abuse of right had a wide scope of application, cases of abuse of the right to action in trademark law were within the scope of its application. However, by the entry into force of IP Law Article 25 subclause 6, it is clear that the previous situation has changed.
Discrimination of Trademark
The possibility of confusion based on the presence of the same or similar word fact in another trademark, which does not have a distinctive or weak distinguishing power, creates a problematic area in the examination of the reasoned objections.
In Turkey, especially in the food, education and telecommunication sectors, a large number of objections to publications are filed on the grounds of very weak or even non-discriminatory word marks with a previous date and when these objections are rejected, trademark owners who have adopted an aggressive protection policy file lawsuits in the courts for invalidation.
During the evaluation of such objections-cases, there will be the registered trademarks due to the erroneous evaluation of the Registry Office. It is an undeniable fact that there are trademarks registered by the mistakes of the experts who examine the absolute grounds for refusal. However, the existence of trademarks registered as a result of erroneous evaluation does not mean that wide protection coverage will be provided to them as if they were strong trademarks. These types of trademarks should be considered by accepting the fact that they are registered in the event of objection, but with the assessment that the protection scope of the trademarks with weak distinctive power is relatively limited.
It is possible some signs get registration legally which are normally included in the scope of absolute grounds for refusal, as part of distinctiveness acquired as a result of use, examined in the light of the documents submitted by the applicant and constituting the exception of absolute grounds for refusal based on descriptiveness and common use in the trade area and exceptions to absolute refusal grounds, such as lack of distinctiveness, descriptiveness and being open to common use in the field of commerce. Therefore, non-distinctive signs can be registered by this way and subsequently can be asserted as a ground of objection to the publication.
It is possible to register an element of a word that has no distinctive power, together with a distinctive figurative element. The objections which based on registered non-distinctive word items with the distinctive figurative item, constitutes a problematic area that is difficult to examine. Namely, unless this matter is has not stated on the publication and decision stages, it is not possible for the third parties and the courts to have information about what the protected element actually is. As long as what is the protected element is not published, it is cleared the way for for the trademark owners to claim their rights unfairly against third parties based on the word element that is not actually found worthy of protection by the registration office.
It is common for the word to be registered which fulfills the minimum requirement of registrability even its distinctiveness is weak. However, this situation does not mean that the scope of protection of these trademarks is wide and such trademarks should be benefit from the scope of limited protection.
Trademark registration offices of EU member states, which came together under the coordination of the European Union Intellectual Property Office (EUIPO), carried out a Adjustment Programme on the subject. At the end of the program, a Joint Statement entitled “The Impact of Non-Distinctive or Weak Components on the Probability of Confusion” was published in October 2014.
The Examination of Turkish Patent’ Decisions
The Re-Examination and Evaluation Department directly carries out the examination and evaluation of the objections to be made by the parties to the proceedings and whose interests are affected due to the decision, within two months from the notification date of the decision, against the final decisions of the relevant department regarding the transactions regarding industrial property rights and traditional product names It is in charge of carrying out under the President of the Institution.
The Re-Examination and Evaluation Department is responsible for examining the objections made against the decisions regarding trademark, patent, utility model, design, geographical indication and traditional product names and integrated circuit topographies, and the objections to publication in design, patent, geographical indication and traditional product names.
A lawsuit can be filed at the Ankara Civil Court of Intellectual and Industrial Rights within two months from the notification of the decision against the final decisions of the Board.
The Usage Based On Registration in Infringement Cases
With the entry into force of the Industrial Property Law No. 6769, the defense that "the use of a registered trademark does not constitute infringement", which emerged with the case-law of the Supreme Court in the period of the abrogated Decree Law No. 556, has disappeared.
The amendment was supported with the decision of the Istanbul Regional Court of Justice dated March 2018, it was confirmed that the use of the registered trademark can be prevented through injunctive relief.
By entering in force of IP Law (SMK) numbered 6769 in 10.01.2017, according to the settled Supreme Court Practice under the executive order numbered 556 related with the abrogated Protection of Trademark, regardless of whether it creates confusion and infringement on an earlier trademark, if a use is based on a registered trademark, this usage is considered to be non-infringing.
As a result of this judicial opinion, since the usage based on the registered trademark was accepted as legitimate, the registered right could be asserted as a defense and no precautionary measures could be taken against the confusion created by the registered trademark and the infringement lawsuits were rejected. Therefore, the owner of the previous trademark claiming that the trademark right was infringed was first required to file an invalidation lawsuit against the next trademark registration, to ensure the cancellation of this registration from the registry, and then to file the lawsuit for infringement of the trademark right. Even in this case, predated trademark owner keep continue to get damages from the aggresor trademark which the usage can not be prevented during the invalidity case, since it is accepted that the use of the defendant's trademark, whose trademark is invalidated, during the registration period does not infringe the trademark, it was not possible to obtain compensation for this period.
This judicial opinion of Supreme Court of Appeal causes delays on the prevention by temporary protection methods as precautionary measure of infringement in the case of infringement of the predated trademark, this situation is also abused by those who commit acts of trademark infringement and they could defend against trademark infringement claims based on their malicious registrations. For this reason, the aforementioned judicial opinion of the Supreme Court of Appeal was heavily criticized.
With the entry into force of the IP Law, "The usage of a registered trademark does not constitute infringement." principle is abandoned.
Article 155 of the IP Law is provided with the adjudgment of “The owner of the trademark, patent or design right cannot claim his industrial property right as a justification for defense in the infringement lawsuit filed by the right holders with a previous priority or application date”, and it has clearly stipulated that the registration of a trademark (or any other right) cannot be put forward as a defense in the infringement lawsuit filed by previous right holders.
Since this regulation brought with the IP Law is very new, although there is some hesitation about the implementation of the provision before the courts of first instance, but the 16th Civil Chamber of the Istanbul Regional Court of Justice has clearly applied Article 155 of the IP Law to the disputed issue before it in a very recent decision dated 14 March 2018 and it is decided to prevent the usage of the relevant registered trademark as a precaution.
This decision is one of the first and most important decisions regarding the implementation of Article 155 of the IP Law, which is contrary to the established Supreme Court practice. The decision of the Regional Court of Justice is a clear indication that only having a registered right will not lead to a result in favor of the defendant and that the local courts also make judgments as if there is no registered right, taking into account Article 155 of the IP Law, and that in case of conditions, an interim injunction should also be ordered. This decision has great importance especially in cases where the use of a registered trademark is defended based on malicious trademark registrations.
It should be known that with the regulation within the scope of Article 155 of the IP Law, registered trademarks or other rights can no longer be asserted as a defense against previously dated rights, and their use can be prevented even if it is based on a right. Therefore, when filing for a trademark application, a registrability research, which helps to identify similar trademarks with previous dates and in case of existence of similar trademarks, legal opinion should be taken.
What is meant by the "generic name" in trademark law, in the simplest terms, is the nomenclature that has become the common name of the relevant product or service, pointing directly to the product or service offered. Sometimes, a name that is initially distinctive but is actually a trademark can become a generic name used by consumers to describe the relevant product or service over time. In other words, an initially distinctive trademark may become generic over time. However, this situation is beyond the scope of this article. And sometimes, subjected trademark may not have a trademark function since it is a generic name from the very beginning, as it is the common name of the product or service offered. The trademark legislation of almost every country contains regulations regarding that generic names cannot be registered as trademarks or, if registered, can be canceled/nullified. In the USA, it is not possible to register generic names as federal trademarks under any circumstances. In other words, there is no possibility of registration based on the distinctiveness exception acquired as a result of use for generic names.
After these explanations, we want briefly convey the history of the case in the USA until it came before the Supreme Court. Booking.com B.V., a digital travel company providing hotel reservation services and operating under the name booking.com, filed four separate applications to the American Patent and Trademark Office (USPTO) for the registration of the phrase "booking.com" as a trademark at the federal level in the USA. These applications are related with travel-related services. Although each application has different visual features, all of them contain the phrase "booking.com" in common. The expert reviewing the application, subsequently the USPTO Appeals Board, concluded that "booking.com" is a generic name for online hotel reservation services and decided to reject the application. According to the USPTO Appeals Board, the word "booking" means to book a trip, and ".com" refers to a commercial website. According to the Board, consumers will understand the term booking.com as essentially referring to an online booking service for trips, tours and accommodation. Alternatively, even if the phrase "booking.com" is considered to be descriptive (not generic), the phrase is still not registrable because it has no secondary meaning.
Defense of Disuse
Pursuant to Article 7 of the IP Law, the trademark protection provided by this law is obtained through registration. However, although registration is necessary to protect the rights of a trademark right holder and to claim it against third parties when necessary, it is not always sufficient on its own. Hence, pursuant to Article 9 of the IP Law, a registered trademark must be used for a long time in Turkey on the goods and/or services for which it is registered. However, if the trademark is not used within five years from the date of registration or if its usage is interrupted for five years without interruption, the cancellation of this trademark may be on the agenda. Depending on this condition of use sought in the IP Law, in objections made based on Article 6/1 of IP Law on the Article 19/2 of IP Law, it has been regulated that it may be requested to prove that the application subjected to the objection has been used in Turkey in terms of the goods or services that are the basis of the objection within the five-year period before the application or priority date, provided that the trademark subjected to objection has been registered for at least five years. Pursuant to Article 25/7 and Article 29/2 of the IP Law, it is stipulated that the defense of disuse in Article 19/2 of the IP Law can also be asserted in nullity and infringement cases if there are conditions. The point to be noted here is that the defense of disuse can only be put forward during the objection to publication process and in cases of nullity or infringement, in the presence of the conditions sought in the law. On the other hand, it is necessary to subject the defense of disuse to a dual distinction in terms of civil and criminal cases based on the allegation of trademark infringement. Likewise, while it is expressly accepted that the defense of disuse can be asserted as a defense in civil cases based on the claim of infringement stated clearly in the 2nd paragraph of the 29th article of the IP Law titled "Acts deemed infringement of the trademark right" that "The provision of the second paragraph of Article 19 can be asserted as a defense in infringement cases. In this case, law-suit date taken as a basis to determine the five-year period.”, the Article 30 of the IP Law titled “Punitive Articles regarding infringement of trademark rights" does not contain any provision in this matter. For this reason, in practice, the issue of "whether the disuse of the trademark is one of the reasons for compliance with the law and whether it can be evaluated ex officio by the criminal courts" has come to the fore and different opinions have emerged on this issue. According to one view, if there is an annulment lawsuit filed due to the formation of the cancellation conditions of the infringed trademark, the outcome of this lawsuit should be awaited by the criminal court. According to another view, if the trademark has not been used in the commodity or service subject to the crime for five years, the offender makes a defense in this direction in the investigation or lawsuit filed due to trademark infringement and if sitation of disuse is proven, the offender’s action will become legal. There is no need to give time to the relevant parties for the annulment action and to wait for the result.
In a Current case, even if the trademark belongs to the constituent company by Court is registered by TÜRKPATENT in terms of goods subjected to the case, since the trademark has been registered for more than five years and has not been used continuously in the last five years in terms of the products subject to the lawsuit in Turkey, it has been stated that this matter will be taken into account by the criminal court ex officio and that the conditions of the crime of infringement of the trademark right will not occur however the unfair competition provisions should be applied because the products are counterfeit. At this point, the matter that should be noted first is that the defense of disuse is clearly regulated as “plea” in the IP Law.
However, in the above-mentioned case, in our opinion, it was wrong to state that the conditions for the crime of infringement were not met by the conviction of the criminal court, almost like a civil court, made an assessment on whether the trademark was used, considering the defense of disuse as an objection rather than a plea, considering the cancellation conditions of the trademark and without the need for an annulment decision to be given, it was a reason for the right of the trademark. Because unlike the objection, since “plea” is a right, it can only be claimed by the owner of the right; cannot be taken into account by the judge ex officio unless it is asserted; does not terminate a right and only prevent its fulfillment. The defence of disuse, as a result of clear regulation of IP Law, is a matter that can be asserted by the relevant party under certain conditions in civil cases based on the claim of infringement of the trademark right, and is not a matter that can be brought forward during the investigation or prosecution phase in terms of criminal cases, it should not be possible to be taken into account ex officio by the prosecutor or the criminal court. The contrary interpretations exceed the will of the legislator. As a matter of fact, pursuant to Article 25/7 and Article 29/2 of the IP Law, it is clearly regulated that the defense of disuse in Article 19/2 of the IP Law can also be asserted in nullity and infringement cases if there are conditions. Since there is no reference in Article 30 of the IP Law, this defense should not be taken into account in criminal cases. On the other hand, in case of an annulment action that will affect the criminal case, it would be appropriate for the criminal court to make this matter a prejudicial question, since the annulment decision regarding the trademark with respect to the past is of the nature to exclude the said act from being a crime of infringement of the trademark right.
Registration of Color and Sound Trademarks
In order to protect intellectual, industrial and commercial property rights in a way that is equivalent to the level of protection applicable in the EU, in the interpretation of the provisions of the Decree Law numbered 556, it should be taken into consideration that the provisions of the EU Directive 89/104 and the EU Regulation No. 40/94 and the decisions of the EU Court of Justice within the framework of Article 234 (former Article 177) of the Treaty of Rome related with them. Therefore, in the examination of the subject, the EU's Directive 89/104 and the provisions of the Regulation No 40/94 and the decisions of the EU Court of Justice were examined, and the developments in various legal systems were also mentioned. Especially in the last few years, the intensity of the decisions of the German Federal Court (BGH) and the EU Court of Justice (EuGH) on abstract color, sound and three-dimensional trademarks is remarkable. For these reasons, our study is limited to abstract color, sound and three-dimensional trademarks.
This is about one of the main changes brought by the IP Law numbered 6769 in Turkey, regarding with the registration of non-traditional trademarks and especially color trademarks. Although it was possible to register color trademarks in practice before the IP Law, it was not possible to indicate in the application form that the application was made for a color trademark and the internationally recognized color code. Therefore, the color code could only be submitted with a separate petition, it was not specifically stated in the records that the application/registration was made for the color trademark, and these trademarks were described as "design marks" in the records. This situation caused confusion in practice and the applicant could claim that the trademark was a color trademark, only in case of a conflict. With the entry into force of the IP Law, the practices regarding non-traditional trademarks as well as color trademarks have changed and it has become possible to indicate in the application form that the application is made for a color trademark by specifying the Pantone code. Accordingly, in such applications, it must be clearly indicated that the application is made for the color trademark and the Pantone code(s) on the form and the color must be shown in the area reserved for the trademark sample. The area reserved for the trademark sample must be completely filled without leaving any white spaces and must not be framed. The evaluation of the distinctiveness of color trademarks should be done differently for "Trademarks consisting of a single color" and differently for "Trademarks consisting of color combinations". It is accepted that the distinctiveness of the trademarks consisting of a single color is lower when compared to the trademarks consisting of a combination of more than one color. In this respect, similar to the previous applications of the Institution, it is necessary to prove with sufficient evidence that such trademarks have gained distinctiveness mostly through use. In addition to this, with a similar approach to traditional trademarks; In cases where they are widely used in the industry or when they are descriptive in terms of the goods/services for which the trademark is used (for example, the "yellow" color evoking lemon flavored products or the "green" color evoking the mint flavored products), the colors are considered to be descriptive in terms of the goods/services specified. In addition, as stated in the Trademark Review Guide; “Giving a wide monopoly on colors would not be compatible with a balanced competition system. Because this situation has the effect of creating an unfair competitive advantage for a single business. For this reason, the public interest should be considered in order not to unfairly restrict the use of color by other businesses for the same type of goods/services as the goods/services subject to registration.”
In line with what has been stated, although it is possible to apply for a single color before the Office in Turkey, similar to the previous practice, such applications are generally rejected by the Turkish Patent and Trademark Office ex officio and unless they are proven to be distinctive with sufficient evidences, it is also difficult to be successful as a result of the objection made before him regarding the examinations of the Re-Examination and Evaluation Office. Regarding the trademarks consisting of color combinations; when determining whether such trademarks are distinctive; Whether the color composition is widely used in the relevant sector for the relevant goods or services; whether it has a functional nature for the relevant goods or services; whether the colors are perceived only as decorative elements or not, the first glance effect and impression left on the relevant consumer group in terms of the quality of showing the source of the product are taken into consideration. In addition; although it is not mandatory, applicants are also advised to indicate the placement and distribution ratio of the colors that composing the color composition.
Trademark Investigation by Turkish Patent and Trademark Office
The guide explains the criteria for examining trademark applications within absolute grounds of refusal. The guide aims to update the previous guide that has been in force since 2011, to clarify the absolute grounds for rejection specified in the IP Law, and to ensure the uniformity of the Office’s decisions. The guide contains numerous examples of Institution and Court decisions, as well as recent developments in the EU. In particular, Article 5/1(c) regarding descriptiveness and Article 5/1(ç), which regulates indistinguishable similarity with a previous trademark or trademark application, have been discussed by giving many examples. While the guide contains many details and examples, the key points can be summarized as follows:
• Regarding the display of trademarks in the registry, it was stated that it would be sufficient to upload video and audio recordings within the scope of sound trademark applications, since the requirement to display graphics in the registry was removed. In addition, it was emphasized that in terms of color trademarks, the relevant color sample section must be completely filled and the “Pantone” color code must be specified.
• Regarding "descriptiveness" and "distinctiveness", the basic criteria to be taken into consideration during the evaluation of trademark applications have been explained and it has been emphasized that i) the trademark for which the registration application was made should be evaluated together with the goods and services within the scope of the application, ii) the application should be evaluated as a whole, iii) the perception of the target consumers should also be taken into account within the scope of the evaluation.
• Additionally, the Guide contains examples of other trademarks, including word trademarks, slogans, design trademarks, color trademarks, color combination trademarks, sound trademarks and movement trademarks.
• Regarding the similarity in the degree of identity with the previous trademark or trademark application, it has been stated that an ex-officio evaluation will be made by the Authority for the same or indistinguishably similar trademarks, i) if the application is a combination trademark consisting of two words, the overall impression created by them will be taken into account, ii) if the application is a combination trademark consisting of two words, but one of these words is descriptive, the evaluation will be made on distinctive elements iii) the distinctiveness of the trademarks while determining the scope of protection It was emphasized that the levels should be determined as low-medium-high and should be evaluated accordingly.
• In relation to the similarity of the trademarks in terms of identity, trademarks containing word elements are given such as an example such as OPTİMUM, GLOBAL, STAR, BY, THE, MY, GROUP, EURO, PLUS, SMART, EXTRA, PURE, SOFT, LIFE.