TRADEMARK PROTECTION IN TURKEY

Uğur G. YALÇINER
President, Turkish Patent Institute

The Decree Law No: 556 Pertaining to the Protection of Trademarks has entered into force in Turkey on June 27, 1995. The Articles 5, 7, 9, 42, 62, 82 and new Article 61/A have been amended/added by the Law No: 4128 of November 7, 1995 Implementing Regulation for legislation related to protection of trademarks has entered into force on November 5, 1995.

In preparation of the new trademark legislation for Turkey, it is aimed to establish a functional system to meet the demands and realities of Turkey, harmonise the Turkish trademark system being compatible to the systems of other countries, the provisions of TRIPS Agreement of WTO Agreement and European Community Directives and Regulations.

New trademark system established by the decree law on protection of trademark law is based on publication-opposition before registration which is applied in the European Countries. This system is different from the previous Turkish Trademark system which was based on publication after registration.

New Turkish trademark system established by the Decree Law No: 556 brought the following modern provisions;

According to Turkish trademark system, a trademark, provided that it is capable of distinguishing the goods and services of one undertaking from the goods and services of other undertakings, may consist of all kinds of signs being represented graphically such as words, including personal names, designs, letters, numerals, shape of the goods or their packaging and similarly descriptive means capable of being published and reproduced by printing. Trademark may be registered along with the product or the packaging. However, the registration of the product or the packaging does not grant exclusive rights.

Protection for a trademark under the Decree Law No: 556 is obtained by registration.

Upon opposition by the proprietor of an application for registration of a trademark or of a registered trademark, the trademark applied for shall not be registered under following conditions:

  1. If the trademark applied for this identical with a registered trademark or a trademark which has an earlier application date and the protection is sought for the identical goods and services,

  2. If because of its identity with or similarity to a trademark which has an earlier application date or a registered trademark and because of the identity or similarity of the goods and services covered by the trademarks there exists a likelihood of confusion on the part of the public and the likelihood of confusion includes the likelihood of association with the registered trademark or with the trademark which has an earlier application date.

Upon opposition by the proprietor of a trademark, a trademark shall not be registered where an agent or representative of the proprietor of the trademark has applied for registration thereof his own name without the proprietor's consent and without a valid justification.

Upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade, the trademark applied for shall not be registered provided that;

  1. the rights to the sign were acquired prior to the date of application for registration of the trademark, or the date of priority claimed for the application for registration,

  2. the sign confers on its proprietor the right to prohibit the use of a subsequent trademark,

A trademark applied for which is identical or similar to a registered trademark or to a trademark with an earlier date of application may be used for different goods and services. However, where in the case of a registered trademark or of a trademark which has an earlier date of application for registration the trademark has a reputation and where the use without due cause of trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the registered trademark or of the trademark with an earlier application date, upon opposition by the proprietor of the earlier trademark, the trademark applied for shall not be registered even to be used for goods and services which are not similar to those for which the earlier trademark is registered.

Upon opposition by the holder of the relevant right, the trademark applied for shall not be registered if it contains the name, photograph, copyright, or any industrial property rights of the third parties.

Upon opposition, trademark applied for which is identical or similar to a collective or a guarantee mark shall not be registered within three years from the date of expiry of the collective or of the guarantee mark.

Trademark applied for which is identical or similar and which is to be registered for the identical or similar goods and services of a trademark which has not been renewed, upon opposition shall not be registered within two years of the expiry date.

The rights conferred by a registered trademark shall prevail against third parties from the date of publication of registration of the trademark. Compensation may be claimed in respect of matters arising after the date of publication of a trademark application. However, the rights arising from the publication of an application shall be considered within the rights conferred by the publication of the registration of a trademark. The Court seized of the case may not decide upon the merits of the case until the registration has been published.

According to the Turkish trademark system, If, within a period of five years following the registration, trademark has not been put to use without a justifiable reason or if the use has been suspended during an uninterrupted period of five years, the trademark shall be repealed.

According to Turkish trademark system the person who, without the consent of the proprietor of the trademark, procedures, sells, distributes or puts to commercial use or imports for these purposes or keeps in possession for these purposes the product produced by plagiarising the trademark shall be liable to remedy the illegality and to compensate the damages he has caused. The person using in any form the plagiarised trademark, having been informed of the infringement by the proprietor of the trademark and having been requested to stop the infringement or where the exists any other misuse, shall be liable to compensate the damages he has caused.

The injury suffered by the proprietor of the trademark include not only the value of the actual loss but also the income loss incurred because of the infringement of the trademark rights.

Special courts to be established by the Ministry of Justice shall have jurisdiction for all of the actions and claims provisioned by the Decree Law.

Where a court judgement has become final, the successful party may request the publication in full or in summary of the final judgement in a daily paper, radio, television or by other means of the media, the costs of which are to be met by the other party.

The trademark and patent applications to the Industrial Property Department in the last 12 years are given in the Table 1.

Table 1. Trademark Applications in Turkey

YEARS DOMESTIC FOREIGN TOTAL
1981 1,986 1,327 3,313
1982 3,496 602 4,098
1983 3,310 660 3,970
1984 4,015 861 4,876
1985 4,814 953 5,767
1986 4,197 1,230 5,427
1987 5,723 1,227 6,950
1988 4,409 1,398 5,807
1989 4,985 1,673 6,658
1990 7,899 3,240 11,139
1991 8,249 2,345 10,594
1992 10,512 3,140 13,652
1993 12,178 2,923 15,101
1994 11,573 2,650 14,223
1995 12,605 3,176 15,781

TRADEMARK APPLICATIONS IN TURKEY

Information on the number of domestic, foreign and total trademark applications in some selected countries (USA, Japan, United Kingdom, Germany, Benelux and Turkey) in 1993 are given in Table 2.

Table 2. Distribution of Domestic and Foreign Trademark Applications in Different Countries in 1993

. USA JAPAN UK GERMANY BENELUX TURKEY
DOMESTIC 131,797 154,774 16,951 38,206 13,890 12,178
FOREIGN 18,622 19,811 17,813 10,066 5,571 2,923
TOTAL 150,419 174,585 34,764 48,272 19,461 15,101

Table 3 includes Information about the distribution of trademark applications in Turkey in between 1993 - 1995 according to some selected countries.

Table 3. Distribution of Trademark Applications in Turkey According to some countries in 1993-1995

YEARS USA JAPAN EUROPEAN UNION TURKEY OTHERS TOTAL
1993 766 112 1,355 12,172 306 14,711
1994 708 94 1,503 11,573 347 14,225
1995 914 90 1,960 12,656 221 15,841

For further information: Undersecretariat of Foreign Trade
Emek, Ankara - Turkey
Tel: 90-312-212 87 42
Fax: 90-312-212 16 22