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What is the primary legislation governing trademarks in your jurisdiction?
The primary legislation governing trademarks in Turkey is the IP Law 6769, which came into effect on January 10 2017. However, according to Temporary Article 1, national and international trademark applications filed before January 10 2017 will be finalised in accordance with Trademark Decree-Law 566, which was effective on the date of their application.
Which international trademark agreements has your jurisdiction signed?
The main international trademark agreements to which Turkey is a party are:
- the Paris Convention for the Protection of Industrial Property 1883;
- the Treaty of Serves 1920;
- the Trade-Related Aspects of IP Rights Agreement;
- the Madrid Agreement concerning the International Registration of Marks;
- the Protocol relating to the Madrid Agreement concerning the International Registration of Marks;
- the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
- the Vienna Agreement establishing an International Classification of the Figurative Elements of Marks; and
- the Trademark Law Treaty.
Which government bodies regulate trademark law?
The Grand National Assembly and the Patent and Trademark Office regulate trademark law in Turkey
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.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
Agents filing for registration of a mark on behalf of the owner require power of attorney. Notarisation or legalisation is not required.
What information and documentation must be submitted in a trademark registration application?
The following information must be submitted in a trademark registration application:
- information regarding the applicant;
- information regarding the representative (if any);
- information regarding the priority right (if any);
- a visual representation of the trademark;
- a list of the applicable goods and services;
- power of attorney (if the application is filed by a representative);
- the equivalent Latin letter for any non-Latin alphabet letters; and
- information about the common representative (if any).
What rules govern the representation of the mark in the application?
The application must contain a representation of the trademark which exhibits the trademark in a clear and exact manner.
Are multi-class applications allowed?
Yes – multi-class applications are allowed.
Is electronic filing available?
Yes – multi-class applications are allowed.
What are the application fees?
The official application fee is TRY205 (approximately €50) for each class of application filed in 2017. If priority is claimed, the official fee is TRY165 (approximately €40).
How are priority rights claimed?
The applicant must indicate the priority right to be claimed when filing the application and pays the priority claim fee. The priority document must be submitted to the Patent and Trademark Office within three months from the application date, otherwise the application will be processed as an application without a priority claim.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
Trademark searches are available before filing, but are not obligatory. The Patent and Trademark Office conducts searches on written request for word marks; however, searches for device marks are not available. The official cost for a search of one word in one class is TRY50 (approximately €15) and TRY20 (approximately €5) for each additional class.
What factors does the authority consider in its examination of the application?
The Patent and Trademark Office conducts a procedural review on the accuracy and completeness of the application documents. If no deficiency is identified, it conducts an ex officio examination on absolute grounds. For example, it evaluates whether the applied sign is non-distinctive, descriptive or deceptive with regard to the applied-for goods or services and searches whether any identical or indistinguishably similar trademarks covering the same kind of goods or services exist.
Does the authority check for relative grounds for refusal (eg, through searches)?
No – relative grounds for refusal are checked by the authority only if there is an opposition.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
During the ex officio examination, the Patent and Trademark Office may demand the completion of incomplete information or fees or reject the application on absolute grounds. If the Patent and Trademark Office demands completion of incomplete information or fees, this can be rectified within two months from the notification date which will ensure continuation of the application for the goods and services concerned. However, if the Patent and Trademark Office rejects the application on the basis of absolute grounds, the applicant can appeal the decision and ask for the application to be re-examined.
Can rejected applications be appealed? If so, what procedures apply?
If an application is rejected, the decision can be appealed. An appeal must be filed before the Patent and Trademark Office’s Re-examination and Evaluation Board within two months from the notification date of the refusal. The deadline is non-extendable.
When does a trademark registration formally come into effect?
Rights arising from a trademark can be allocated to third parties as of the trademark application’s publication date in the Official Trademark Bulletin. However, courts cannot grant a decision on the basis of a trademark before the registration’s publication.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years from the application date. Registration can be renewed for an unlimited number of successive 10-year periods. A registration can be renewed from six months before the expiration date until six months following the expiration date. A registration can be renewed by filing a renewal application with the Patent and Trademark Office and paying the renewal fee. If the renewal application is filed within six months after the expiration date, a penalty must be paid.
What registration fees apply?
The registration fee for 2017 is TRY560 (approximately €130), irrespective of the number of classes.
What is the usual timeframe from filing to registration?
The usual timeframe is 10 to 12 months.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
Third parties can formally oppose an application on the basis of:
- absolute grounds (eg, an identical or indistinguishably similar earlier trademark that covers identical or similar kinds of goods exists, the application is non-distinctive, descriptive or misleading in character or the trademark’s meaning makes it open to use in trade); and
- relative grounds (eg, likelihood of confusion, risk of dilution, bad faith or prior use).
The opposition period regulated under IP Law 6769 is two months (previously it was three months). However, according to Temporary Article 1 of the law, trademark applications filed before January 10 2017 must be finalised in accordance with the legislation which was effective on the date of their application. Therefore, for applications filed before January 10 2017, the opposition period will be three months. The deadline is non-extendable. If the opposition is filed by a representative, it must submit a power of attorney at the time of filing or the opposition demand will be rejected without any examination on the merits. Once the opposition is filed, it is notified to the applicant for national applications. The applicant has a right to file counterstatements. If the application is an international application, opposition is not notified to the applicant.
What is the usual timeframe for opposition proceedings?
The usual timeframe for opposition proceedings is six to eight months.
Are opposition decisions subject to appeal? If so, what procedures apply?
Opposition decisions are subject to appeal. An appeal can be filed before the Re-examination and Evaluation Board within two months from the decision’s notification date. The deadline is non-extendable. If the appeal is filed by a representative, it must submit a power of attorney at the time of filing or the appeal will be rejected without any examination on the merits. Once the appeal is filed, it is notified to the applicant or opponent, depending on the conclusion of the opposition decision. Counterstatements can also be filed.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
If a trademark is not in use, it can be cancelled under certain circumstances. A trademark becomes vulnerable to non-use claims after five years from its registration. If a registered trademark is put to use because a cancellation request is likely to be filed against such trademark due to non-use, the use of this trademark in the last three months before the cancellation request is not be considered. According to new IP Law 6769, which came into force on January 10 2017, cancellation demands based on non-use can be requested by relevant parties from the Patent and Trademark Office. Once a cancellation has been requested, it is notified to the trademark owner, which must submit evidence of use to the Patent and Trademark Office within one month. A one-month extension can be granted once only if requested within the first month after notification. The Patent and Trademark Office may also request additional information and documents if needed, but does not hold a hearing before granting a decision on the filing. However, according to Temporary Article 4 of IP Law 6769, the cancellation authorisation will be used by the Patent and Trademark Office after January 10 2024. Until that date, the cancellation authorisation will be used by the IP courts under the same procedures and principles. The new law’s cancellation procedure is different from that of the IP courts in non-use actions. It is unclear whether the IP courts will apply the existing procedure or that of the new law during non-use actions.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
According to IP Law 6769, a trademark can be revoked if any absolute or relative grounds exists. If a trademark is revoked due to absolute or relative grounds, the revocation decision has a retroactive effect. Conversely, a trademark can also be revoked on the grounds of:
- becoming a generic name for the goods and services for which it is registered due to the action or inaction of its owner;
- misleading the public, particularly as to the nature, quality or geographical origin of the goods or services on which it has been used due to the actions of its owner or someone else with the owner’s consent; and
- the use of collective or certificated marks contrary to their provisions.
In these cases, the revocation decision is effective from the submission of the revocation request. However, if the revocation ground occurs on an earlier date, it can be decided on request that the decision is effective starting from the earlier date.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any stakeholders, the state prosecutor or associated official authorities may apply to a court for revocation on the basis of absolute or relative grounds. Any interested person may file a request for revocation on other grounds which have proactive effect. According to IP Law 6769, if a trademark owner remained silent for five consecutive years, but knew or should have known that a later trademark was being used, it cannot present its trademark as a ground of revocation unless the later trademark was registered in bad faith.
What are the evidentiary and procedural requirements for revocation proceedings?
It depends on the ground of the revocation demand. For example, if the ground of revocation is genuine right ownership, evidence proving prior use and genuine right ownership must be submitted. Conversely, if the ground of revocation is likelihood of confusion, the trademark registration certificate would be sufficient proof of ownership and the precedents with regard to the similarity must be submitted. Finally, if the ground of revocation is the risk of dilution, the well-known status of the earlier mark must initially be proven with sufficient evidence.
What is the appeal procedure for cancellations or revocations?
A court decision on the cancellation or revocation of a trademark can be appealed before the regional courts of justice within two weeks from the notification date. The courts can:
- conduct a new trial on the merits of the case if required; and
- cancel the first-instance court judgment and order a new decision if the appeal grounds are found to be valid.
Court decisions can also be appealed before the Court of Appeals within one month from the notification date.
What is the procedure for surrendering a trademark registration?
In order to surrender a trademark registration, a written request must be submitted to the Patent and Trademark Office together with the relevant form. If the request is filed by a representative, a notarised and legalised power of attorney bearing the authority to surrender must be submitted. Such request for surrendering a trademark registration will be effective as of the date of the registration in the trademark registry. An announcement will be made in the Official Trademark Bulletin when a registration is surrendered. If there are third-party rights or licences recorded in the trademark registry, the trademark owner cannot surrender its trademark rights without permission of the rights holder or licensees. Similarly, if there is a third-party claim on the ownership of the trademark and a precaution has been recorded in the trademark registry, the trademark owner cannot surrender its trademark without the third party’s permission.
Which courts are empowered to hear trademark disputes?
The Civil and Criminal Courts of Intellectual and Industrial Property Rights are empowered to hear trademark disputes. If a Civil and Criminal Court of Intellectual and Industrial Property Rights has not been established in a specific locality, the Civil and Criminal Courts of First Instance are empowered to hear trademark disputes.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Civil and criminal actions can be taken against trademark infringement. In order to take such an action, the complainant should have a trademark registration or at least a trademark application. If the action is based on a trademark application, publication of the registration will be awaited before rendering a decision. If the criminal action is taken, the complaint must be filed before the public prosecutor within six months starting from the date when the trademark holder became aware of the act. The civil action must be filed within five years, starting from the date on which the trademark holder became aware of the infringing use. If these deadlines are not met, both the IP Courts and the Court of Appeals will decide that the holder has lost its rights by remaining silent, unless the counterparty acted in bad faith.
Who can file a trademark infringement action?
The following parties can file a trademark infringement action:
- a trademark registration holder;
- a trademark application holder, but the courts await publication of the registration for granting a decision on the merits; and
- an exclusive licensee, unless otherwise agreed in the licence agreement.
What is the statute of limitations for filing infringement actions?
The statute of limitations for filing infringement actions is:
- two years from the date on which the trademark owner became aware of the damage and the party that caused the damage; and
- 10 years from the date on which the act was committed.
If the infringing action continues, the statute of limitations does not commence. If the infringing action constitutes a crime, the longer criminal statute of limitations applies.
What is the usual timeframe for infringement actions?
The usual timeframe for infringement actions is one-and-a-half to two years before the first-instance court and a further one-and-a-half to two years before the regional courts of justice and the Court of Appeal.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
A trademark owner can request the prevention of imminent or further infringement. To prevent further infringement, it can be decided to change the shape of the devices and machines being used for the production of the infringing goods, to remove the brand and destroy the infringing goods.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
The owner of a registered trademark can take legal and criminal action against infringing actions and demand:
- a determination of infringement;
- the prevention of the imminent infringing use;
- the termination of the infringing use;
- the abolishment of the infringing use;
- the seizure of the infringing goods and the devices and machines being used for production of the infringing goods to prevent the production of other goods;
- ownership rights to the seized devices and machines;
- precautions to prevent further use and, in particular, appropriate changes to the seized devices and machines;
- the removal of the mark from the infringing goods; and
- the publication of the final decision in the Trademark Gazette.
The trademark owner can demand pecuniary and non-pecuniary damages arising from the infringing use. If ownership rights of the seized devices and machines are granted to the trademark owner, their value may be deducted from the compensation amount. If this value is higher than the compensation amount, the excess may be paid to the infringer. The owner may also demand reputational damage if the infringer uses or produces the infringing goods in a way that damages the infringed trademark’s reputation.
What customs enforcement measures are available to halt the import or export of infringing goods?
A customs application can be filed with the Customs Directorate on the basis of a trademark registration. Once the trademark has been registered, violable infringing goods are kept in Customs for three working days and other infringing goods are kept for 10 working days. Within these periods, the trademark owner must submit a precautionary injunction decision granted by a court to the Customs Directorate. The injunction may be demanded ex parte or with the main action. If the injunction is demanded ex parte, the main action must be filed within 10 days from the decision. In the precautionary injunction, the court will order the Customs Directorate to keep the goods in Customs until completion of the trial process. In order to obtain a precautionary injunction, a security must be deposited, which will be returned to the plaintiff at the end of the action. The amount of such security is determined at the courts’ discretion.
What defences are available to infringers?
Infringers may claim the following defences:
- exhaustion of a trademark right;
- fair use of a trademark;
- genuine right ownership arising from prior use;
- joint ownership of a trademark arising from a commercial partnership or legacy;
- use of a secondary or generic element within a trademark;
- decorative use;
- use of a registered trade name;
- non-trademark use;
- bad faith of the owner when registering a trademark with the intention of importing original products into Turkey;
- becoming a generic mark of an earlier trademark; and
- parallel import.
The non-use defence was introduced by IP Law 6769. If an earlier trademark has been registered for five years at the date of the action, the non-use of the earlier trademark can be used as a defence.
Before the new law came into effect, a trademark registration could be used as a defence against infringing claims. However, according to Article 155 of the new law, a trademark owner cannot present the trademark registration as a ground of defence in a lawsuit filed by a rights holder holding an earlier date of application or priority.
What is the appeal procedure for infringement decisions?
On July 20 2016 a new phase commenced in the Turkish legal system, as the regional courts of justice started to function. Unlike the previous system, the regional courts of justice not only issue first-instance decisions, they also conduct new trials on the merits of a case if it is deemed necessary. Accordingly, parties of an action have a right to file an appeal before a regional court of justice within two weeks from the notification date of the decision. Decisions can also be appealed before the Court of Appeals within one month from the notification date.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
A trademark can be assigned to a third party totally or partially. The assignment agreement should contain the trademark name, the application or registration number and information on whether the trademark is assigned in its entirety or for some of the goods or services. If the trademark is assigned for some of the goods or services, the goods and services subject to the assignment should be indicated in the assignment agreement. The assignment agreement should be signed before a notary public, but if it is registered outside Turkey, further legalisation is required.
The assignment can be recorded in the trademark registry on request of the assignee or assignor to the Patent and Trademark Office and payment of the assignment recordal fee. It is not mandatory to register the assignment in the trademark registry; however, if the assignment is not recorded in the registry, rights arising from the assignment cannot be claimed against the third parties acting in good faith. Accordingly, the assignment agreement must be recorded to have legal effect.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
Rights arising from a trademark registration can be licensed to a third party for all or some of the goods or services. A licence may be exclusive or non-exclusive. If not indicated in an agreement, a licence is accepted as being non-exclusive.
It is not compulsory to register a licence agreement before the trademark registry; however, a licence agreement cannot be claimed against third parties acting in good faith unless it is registered before the Patent and Trademark Office. Accordingly, the licence agreement must be recorded to have legal effect.
If the licence agreement is registered with the Patent and Trademark Office, the agreement should be signed before a notary public. If the assignment agreement is signed outside Turkey, further legalisation is required. The agreement should include the trademark number and name, the goods and services covered by the licence, the licence term and the parties’ signatures.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
Provisions are typically included in a licensing agreement regarding:
- the type of licence (exclusive or non-exclusive);
- the terms of the licence;
- the obligation of the licensor to make the licensee use the mark;
- the obligation of the licensee to use the mark;
- quality control;
- notification of infringing acts;
- indemnity; and
- governing laws.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A security interest can be registered over a trademark by submitting the required form and security interest agreement to the Patent and Trademark Office.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
If a trademark is being used online or as a domain name without the consent of the trademark owner, this constitutes trademark infringement. IP Law 6769 confers protection against such uses. The trademark holder may request cancellation of the domain name from the civil courts and termination of access to the website on which the trademark infringement occurs.