Yağmur Karahan

Avukat

29.03.2022

GENERAL EVALUATION OF THE TRADEMARK CONCEPT IN TURKISH LAW

A trademark can be defined as a mark that is used to distinguish the goods or services produced or traded by an undertaking, from the ones produced or traded by other undertakings.
 
In order to be able to mention a trademark, there must be a mark which is suitable to be a trademark, the goods or services which will be registered to the desired mark must be clear, this mark must be able to be shown in the registry and the trademark must have distinctiveness.
 
 
Registration of the Trademark in the Presence Turkish Patent and Trademark Office
 
In Turkish law, in order to be able to use a trademark, there is no obligation to register it. However, to be able to benefit from the trademark protection provided by the Industrial Property Law (SMK) No. 6769, the trademark must be registered. The protection of unregistered trademarks is still possible within the scope of general provisions. The protection period for the trademark is ten years starting from date of the application for registration.
 
In Turkey, the authorized institution for the registration of trademarks, is the Turkish Patent and Trademark Office. The main rule is to make the application before the Institution, though there are exceptions due to international applications. 
 
 
Who Can Apply for Registration?

Persons who can apply for trademark registration; Citizens of the Republic of Turkey, persons residing within the borders of the Republic of Turkey or real or legal persons who are engaged in industrial or commercial activities, persons who have the right to apply under the Paris Convention or the World Trade Organization Establishment Agreement, and persons who are entitled in accordance with the reciprocity principle of the states. However, for persons who do not have a place of residence in Turkey, the only possible way to make transactions is making them through their proxies.


Application and Inspection Procedure of the Application

Application is made by submitting the trademark registration application form published by the institution and the necessary information and documents which have been specified in the relevant law and regulation of the institution. These documents are;

a) Identity and contact information of the applicant,
b) Trademark sample,
c) List of goods or services subject to application,
ç) A receipt showing that the payment has been made for the application fee
d) The technical specification arranged within the scope of Article 32, if the application is made for a common trademark or a guarantee trademark,
e) Information showing that the priority right request fee has been paid, if a request for a priority right is in question
f) Equivalents of the letter or letters that are not in the Latin alphabet if such is used in the trademark sample.
 
After the formal inspection of the application, if it is decided that there is no deficiency formally, the application is finalized. If a formal deficiency is detected, depending on the type of this deficiency, the Institution may reject the application or it may request the deficiency to be corrected within two months. After the formal inspection of the institution, the fundamental inspection phase of the trademark is started. At this stage, it is checked whether the trademark is in violation of the absolute grounds of refusal which have been limitedly listed in the article 5 of the SMK.
 
If there is no contradiction, the application is announced in the trademark bulletin. The 2-month objection period begins with the announcement of the application in the trademark bulletin. The purpose of the objection period after the announcement of the trademark is to allow the claims of the relevant persons about relative grounds of refusal that prevent the registration of the trademark if there are any, because the said reasons are not taken into account ex officio by the institution. Relative reasons for refusal are the possibility of confusion, including the possibility of association of a trademark with another trademark by the public, due to the sameness or similarity of a trademark with a registered or previously applied trademark and the sameness or similarity of the goods or services it covers. In case of objection by the relevant persons during this process; two options are available. If the relevant unit of the institution determines that the objections are justified, the objection is accepted and the application is rejected. If the objections are not deemed appropriate by the Institution, the objections are rejected. In both cases, the applicant or the concerned persons objecting to the said decision have the right to appeal to the Institution again. The decision of the Re-examination and Supervision Board to this second objection is the final decision. Against the final decision of the institution, an application can be made to the court only for a request of annulment.

 If the Institution has made a decision to reject the application because of the determination of one or more of the absolute rejection reasons, then the announcement will not be on the agenda. The said situation is notified to the applicant and this time the appeal process starts with the notification date to the applicant. Here, too, the decision made for the second objection is final, but an application can be made to the court for a request of annulment.
 
Trademarks that are decided to be registered at the finalization of objections or in cases where there is no objection are registered and are announced in the trademark bulletin. However, the registration decision given by the Institution may be in terms of the identical registration of the trademark, or it may be in terms of some goods and/or services.
 
 
States of Infringement to Trademark Rights
 
The right to use a registered trademark belongs only to the trademark owner. Infringement of the trademark right comes to fore, in the case of unfair and unlawful use of the trademark without the consent of the trademark owner. The situations that may constitute an infringement of the trademark right are listed in the relevant article of the law. So, what can the owner of the trademark, whose trademark right has been infringed, do in this case?
 
In cases of trademark infringement, a determination lawsuit can be filed and a determination can be requested from the court to determine according to the concrete situation whether the act is infringement or not; If the trademark owner is aware of this situation before the infringement acts begin, then the case of preventing possible infringement can be substituted. 

In case of an infringement that has already started, a lawsuit can be filed for the request of stopping the act of infringement or, if the effects of the act of infringement continue, for the request for the abolition of the infringement. In case of trademark infringement; requests such as the seizure of products or vehicles, the request for their destruction, the request for the recognition of the right of ownership, the request for precautionary measure, the seizure request at the customs can be claimed if the conditions are met. 

Another request that can be claimed in the case of infringement of the trademark right is compensation if the conditions are met. The person can claim for pecuniary damages in the case actual loss or deprived profit due to the act of infringement. Again, it is also possible for the person to claim non-pecuniary damage if the conditions are present. Another different type of compensation that can be requested is reputation compensation. If a loss of reputation has occurred due to usage of the trademark in an abusive way by the party infringing the trademark right, the trademark owner may also request reputation compensation.
 
 
Cases in which the Trademark's Rights Expire
 
1- Invalidity of the Trademark
 There may be various reasons for the court to decide to invalidate the trademark. These reasons are the cases where the trademark has been registered despite the existence of absolute and relative grounds for refusal. In the case of accepting the existence of these conditions and decision of invalidity of the trademark given by the court the protection given to the trademark under the Industrial Property Law is considered to have never been born, except for exceptional cases. After the finalization of the decision, the court sends the said invalidation decision ex officio to the Institution. It is canceled from the trademark registry by the Institution and this situation is published in the Bulletin.
 
 
2- Cancellation of the Trademark
Unlike the invalidity of the trademark, in case of cancellation of the trademark, this decision does not have retroactive results. Again, the cancellation of the trademark, unlike the invalidity, can be requested primarily from the Institution. However, since the decision made by the Institution is not final, it is possible to apply to the judiciary against the decision. Here also, after the finalization of the decision, the trademark is canceled from the registry by the Institution and this situation is published in the Bulletin.
 
Within the scope of Article 9 of the Industrial Property Law, non-usage of the trademark for five years, over time the registered trademark becoming a common name in terms of the goods and services for which it has been registered due to the trademark owner's failure to take the necessary precautions, again due to not taking the necessary precautions the trademark becoming misleading, usage of the trademark in violation of the technical specification in warranty trademarks or joint trademarks, are the cases which may cause the trademark to be revoked.


 
3- Non-Renewal of the Trademark
The trademark must be renewed before the end of the ten-year protection period within six months previous and the relevant documents must be submitted to the Institution. In case the trademark is not renewed during this period or within the additional period given, the cancellation of the trademark may be decided.

Assertion of the Trademark Right
 
Assertion of the rights is possible through litigation when infringement of the trademark right or the invalidity of the trademark and the application of certain measures within the scope of infringement or in cases where a penalty is imposed. However, in cases where legal non-litigation alternative solutions can be applied to assert the rights arising from the trademark, it can sometimes be more advantageous to apply to these remedies.

Mediation, arbitration and, in some cases, issuing a warning are alternative ways of assertion of a trademark right, out of court. If there is a demand for the payment of a certain amount of money, for example, in compensation cases to be filed due to infringement of the trademark, applying to mediation is already mandatory as a condition of action.
 
 Infringement Offense to Trademark Right
 
In case of infringement of the trademark right, since the act of infringing on the trademark right is also a crime, for a registered trademark, criminal sanctions may also be applicable. The investigation and prosecution of these crimes are subject to a complaint and the duration for the complaint is 6 months.
 
Producing goods or providing services by infringing on someone else's trademark right by citation, and offering for sale, importing/exporting, possession of purchasing for commercial purposes, transporting or storing, removing the mark which is under the trademark protection without authorization, legal disposition of the unauthorized person regarding the trademark are the cases which constitute the crime of infringement of the trademark right. Penalty for these infringement crimes is imprisonment and judicial fine. In terms of legal entities, there are also special security measures involved.