Use the Lexology Navigator tool to compare the answers in this article with those from other jurisdictions.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Ownership of a trademark in Turkey is determined on a first-to-use basis, which means that trademark rights can be established through the use of a mark without filing a registration. However, in order to obtain trademark protection conferred under IP Law 6769, excluding the exceptional protection granted to unregistered trademarks, a trademark must be registered with the Patent and Trademark Office.
What legal protections are available to unregistered trademarks?
Unregistered trademarks are protected against third-party use under the Commercial Code’s unfair competition provisions. The owners of unregistered trademarks can file an opposition against trademark applications with the Patent and Trademark Office or initiate an invalidation action against later trademark registrations on the basis of their genuine ownership by proving their prior use.
How are rights in unregistered marks established?
Rights in unregistered marks in Turkey are established through actual use.
Are any special rights and protections afforded to owners of well-known and famous marks?
Yes – well-known and famous trademarks provide broader protection to their owners as they benefit from protection not only for the same or similar goods and services for which the mark is registered, but also for different goods and services if the use of the later registered trademark would:
- take unfair advantage of the reputation of the earlier well-known and famous trademark;
- be detrimental to its reputation; or
- damage its distinctive character.
To what extent are foreign trademark registrations recognised in your jurisdiction?
In order to obtain protection conferred by IP Law 6769, a trademark must be registered with the Patent and Trademark Office. An exception of this general rule under Article 6(4) of the law is that trademark applications which are identical or similar to well-known trademarks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property 1883 are not registered for the same or similar goods and services on opposition of the owner of the well-known trademark, even if the well-known trademark is not registered in Turkey.
What legal rights and protections are accorded to registered trademarks?
The owner of a registered trademark can prevent registration of an identical or similar trademark for the same or similar goods and services by filing an opposition on publication of the application or initiating an invalidation action following registration of the application. If the trademark is well known, it is possible to prevent registration of a later trademark for different goods and services if at least one of the conditions of dilution is met.
Conversely, owners of a registered trademark can take legal and criminal actions against infringing acts, including preventing:
- the use of the mark:
- on a product or packaging:
- on business documents and in ads; and
- as a trade or company name; and
- the export or import of the infringing product.
It is also possible to demand an interim injunction from the courts with an ex parte application or the main action.
A trademark owner may also register its trademark before the Customs Directorate and protect its trademark at Customs.
Who may register trademarks?
The following parties can register trademarks in Turkey:
- Turkish citizens;
- natural and legal persons domiciled or with industrial or commercial establishments in Turkey;
- persons with application rights deriving from the Paris Convention for the Protection of Industrial Property 1883 or the Agreement Establishing the World Trade Organisation; and
- under the principle of reciprocity, nationals of states that provide legal and de facto protection to Turkish nationals.
What marks are registrable (including any non-traditional marks)?
Words (including personal names), logos, colours, letters, numbers, sounds and shapes of goods and their packaging are registrable, provided that they can be represented formally in the trademark registry.
Can a mark acquire distinctiveness through use?
If a sign is inherently non-distinctive with regard to the relevant goods or services, it cannot acquire distinctiveness through use. However, a sign can acquire distinctiveness through use insofar as it is not descriptive of the relevant goods or services.
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
A trademark application can be refused ex officio on the basis of absolute grounds. For instance, if the applied-for mark is identical or indistinguishably similar to an earlier trademark covering the same or same kind of goods, or if the sign is non-distinctive, descriptive or deceptive with regard to the applied-for goods and services, it will be refused registration on the basis of absolute grounds on ex officio examination. Further, an application can be refused on opposition of third parties on the basis of relative grounds (eg, likelihood of confusion with an earlier trademark, genuine right ownership or risk of dilution).
Are collective and certification marks registrable? If so, under what conditions?
Collective and certification marks are registrable. Technical specifications that show the procedures and principles regarding use of the mark must be submitted.
Click here to view the full article.