Introduction
Trademark protection


Introduction

The popularity of e-commerce websites has grown in recent years, as consumers can buy different goods provided by different companies with ever greater ease. Further, this kind of website provides small or medium-sized companies with the possibility to sell to the rest of the world.(1) In Turkey, e-commerce increased by 37% in 2018, generating TL47 million(2) and the volume of e-commerce websites is expected to double in 2019.(3) However, while e-commerce websites are important for the economy, their relationship with trademark protection is a controversial topic in Turkey.

Trademark protection

According to the Turkish trademark classification system, Classes 1 to 34 are for goods, whereas Classes 35 to 45 are for services. Notably, the retail service of goods falls into Class 35. For example, if producer X, which produces watches, wants to register a trademark for its watches, the trademark will be filed in Class 14. Instead, if producer X wants to register a trademark for the retail service of these watches, Class 35 should be added to the application. On the other hand, it should be noted that obtaining a trademark for goods also indirectly provides rights for its use for retail services.

However, for full trademark protection, it is important to identify the exact classification of e-commerce websites which provide retail services for the trademarked goods of other companies that may be linked to the provider. Failure to provide full trademark protection may result in damage to rights holders. This is a controversial topic as e-commerce website owners provide a platform through which other retailers can sell their products rather than producing products themselves.

Companies which produce their own products(4) and sell these products through their company website should obtain registration in Subclass 35.05 of the Turkish trademark classification system, namely:

the bringing together, for the benefit of others, of a variety of goods(5), enabling customers to conveniently view and purchase those goods (such services may be provided by means of retail, wholesale stores, electronic media, catalogues and similar other methods).(6)

By contrast, companies which provide products to the e-commerce websites of other producers(7) should obtain a trademark registration in Subclass 35.01 of the Turkish trademark classification system, which covers:

services related to advertising, marketing and public relations, the organization of exhibitions and fairs for commercial and advertising purposes, design services for advertisement purposes and the provision of online marketplaces (website) for buyers and sellers.(8)

As stated above, companies that do not produce or sell their own products on their website provide a service to e-commerce websites for other companies to sell products. Conversely, in some cases, e-commerce website providers may also sell their own products under the same trademark.(9) In this scenario, adding Subclass 35.05 to a trademark application would be beneficial for trademark protection.

For example, if Amazon provides e-commerce website services to different companies allowing them to sell their products, the correct class for registration would be Class 35.01.(10)

If Amazon produces smartwatches in Class 09(11) and provides retail services for smartwatches either online or in store, the correct class will be Class 09 and registering the mark under Class 35.05(12) (in respect of Class 09) will be beneficial for trademark protection.

If Amazon does not produce smartwatches in Class 09 but provides retail services for the smartwatches of third parties either online or in store, the correct class will be Class 35.05 (in respect of Class 09).

Another question that arises is whether the above criteria can be applied to companies(13) which provide e-commerce websites for service providers. There are a large number of companies of this kind in Turkey, but are they registered in the correct classes to ensure proper trademark protection?

For further information on this topic please contact Sarper Sever at Deris IP Attorneys by telephone (+90 212 252 6122) or email ([email protected]). The Deris IP Attorneys website can be accessed at www.deris.com.tr.

Endnotes

(1) 'Alibaba: How Did the Chinese Company Gets Its Name?'.

(2) 'Turkiye e-Ticaret 2017 Pazar Buyuklugu'.

(3) 'TUSIAD, Turkiye e-ticaret pazarina dair kapsamli raporunu yayinladi'.

(4) For example, Apple, Samsung, Nespresso or Amazon.

(5) The list of goods will be indicated here.

(6) Turkish Classification 2017.

(7) For example, Amazon, eBay, Rakuten or Alibaba.

(8) Turkish Classification 2017.

(9) For example, Amazon.

(10) Class 35.01: Provision of online marketplaces (website) for buyers and sellers.

(11) Class 09.02: Smart watches.

(12) Class 35.05: The bringing together, for the benefit of other, of a variety of smart watches, enabling customers to conveniently view and purchase those goods (such services may be provided by means of retail, wholesale stores, electronic media, catalogs and similar other methods).

(13) For example, HomeAdvisor (ServiceMagic).