The Turkish Constitutional Court recently ruled on the constitutionality of Article 7(1)(b) of Decree Law Number 556 on Protection of Trademark Rights, which allows the Turkish Patent Institute (“TPI”) to conduct ex-officio similarity examinations. The Constitutional Court’s decision means that trademark owners in Turkey continue to be prohibited from signing co-existence agreements and consent letters. Trademarks which are identical or confusingly similar, in relation to the same type of products and services, must be registered to the same proprietor.

Under Article 7(1)(b), if an application is identical or confusingly similar to a trademark with an earlier registration or application date, in respect to the same types of product or services, this constitutes absolute grounds for the TPI to refuse a trademark application. The TPI does not need to receive a third party objection in order to conduct an ex-officio similarity examination.

Ex-officio similarity examination by the TPI have caused trademark owners to develop agreements between themselves which are actually impossible under Turkish trademark law. For example, agreements which enable trademarks to remain together, or claims by trademark owner about consenting to each other’s trademarks being registered.

The Ankara 3rd Court of Intellectual and Industrial Property Rights requested cancellation of Article 7(1)(b). It claimed that all people have freedom of labor and contract. It argued that in some cases, within the context of ex-officio similarity examinations, the TPI is considering refusal grounds that can only be raised by third parties through oppositions (as a relative ground for refusal). The Ankara court went on to argue that fundamental rights and freedoms can only be restricted by laws passed through the Grand National Assembly, not by Decree Laws published by the Council of Ministers.

The Constitutional Court refused the Ankara court’s cancellation request. It held that Article 7(1)(b) meets the requirements that a trademark be unique, not imitated and possess the character of a guarantee. The court held that Article 7(1)(b) protects property rights for earlier registered trademark owners, as well as the rights of third persons who intend to undertake transactions based on the trademarks. The Constitutional Court noted the article was amended by Article 13 of Law Number 5194 (dated 22 June 2004) and had therefore been regulated via a legislative action.

Please see this link for the full text of the Constitutional Court’s decision (only available in Turkish).

Information first published in the MA | Gazette, a fortnightly legal update newsletter produced by Moroğlu Arseven.