Turkish law does not define a ‘well-known mark’, but such status is nonetheless available to rights holders and filing a separate application for well-known status before the Turkish Patent institute is recommended
It is a widely held principle that wellknown trademarks deserve a higher level of protection than marks which are not so well recognised. This is recognised in international agreements, notably in Article 6bis of the Paris Convention and Articles 16.2 and 3 of the Agreement on Trade-Related Aspects of Intellectual Property (TRIPs) – to which Turkey is a party. Turkish trademark law does not define or even distinguish between famous and well-known marks. However, a trademark can be officially granted well-known status either by a verdict in a lawsuit or by the Turkish Patent Institute (TPI), via a successful application. This recognition helps to discourage new and potentially confusing trademarks from being registered under the same or similar classifications to those of well-known trademarks. Such attempts are generally rejected ex officio by the TPI, even if no objection is put forward by the rights holder. The protection also helps owners of well-known marks to establish infringement and bad faith where their marks are used on counterfeits, and then go on to prove the seriousness of their loss much more easily before a court. TPI practice There has been much discussion over how far protection for well-known marks can extend, particularly with regard to applications for marks covering dissimilar goods or noncompeting goods and services. There is a lack of applicable regulations and standards in this area. In the past the TPI granted such applications under two categories: • well-known marks that are widely recognised by everyone; and • marks that are recognised only within a particular commercial sector. The first option allowed exclusive protection across all trademark classes, whereas the latter was restricted to related classes only. However, this second option was cancelled after Aselsan v TPI, in which the court ruled that the TPI’s categorisation of partial recognition for a well-known mark could not be applied, as there were no legal grounds for it. In accordance with examination guidelines and under Article 7/1(ı) of Decree Law 551, well-known trademarks benefit from protection in relation to the same and similar goods and/or services for which they are registered. This protection shall not extend to goods and/or services that are not identical, complementary or similar to those of the well-known mark. Factors such as the distinctiveness and level of notoriety of the well-known mark – as well as its similarity to the applied-for mark – must be taken into account when extending the scope of protection to similar goods and/ or services. For instance, the refusal of an application for Classes 29, 30 and 32 may be warranted by the existence of a well-known trademark covering Class 29. Further, a well-known trademark covering Class 5 may result in the refusal of an application for Classes 10 and 44 if the goods and services relate to Class 5 goods. On the other hand, the evaluation of classes including a wide variety of goods (eg, Class 9) should focus on the sub-groups of goods relating to the goods of the well-known mark. At present, the TPI uses its own initiative to reject applications for marks that are identical or confusingly similar to registered well-known marks – particularly where these are for dissimilar or non-competing goods and services – ex officio or after a rights holder has filed an opposition. Registering a well-known mark In order to register a well-known mark before the TPI, the mark should be capable of meeting 17 requirements, including local or worldwide trademark history, duration of use, recognition and advertising of the mark, commercial value attributed to the mark and the quality image that the mark has acquired, market share and sales figures, related questionnaires, surveys, and oppositions and court decisions to defend the well-known mark, if any. A straightforward application for a wellknown mark in Turkey takes between 12 and 24 months from filing until registration before the TPI. The Examining Board assembles twice a year to decide applications. Applications are then published for three months and considered registered if no opposition is filed against them during that time. In case of an opposition, the Appeal Board’s decision is final and may be appealed only before the IP Court in Ankara. The TPI’s database includes 611 registered well-known marks so far. Some foreign examples include CNN, Bridgestone, F1, Bacardi, Colgate, Novartis, Camel, Winston, Teflon, Kinder, Indesit, Lexus, Ruffles, Lays, Nike, Tiffany, Dove, Wrangler, Yahoo, Viagra, Cisco, Milka, Facebook, Botox, Nestlé, Coca- Cola, Pepsi, Absolut, Kappa, Tokai Azzaro, UGG, Abercrombie & Fitch, Google, Seiko, Converse, Apple, Nina Ricci, I-Pad, Intel, Nokia, Red Bull, Ford, HSBC, Rixos, Phillips, Ferrari, Audi, Renault, Pirelli and Panasonic. Defending and enforcing well-known marks In order to defend a well-known mark (particularly for different goods or services) through opposition proceedings before the TPI or to enforce it through an infringement action before the IP Court, rights holders should be able to answer ‘yes’ to the following questions (especially the first three, which are crucial): • Do you have a registered trademark in Turkey?
Is there similarity which may lead to a likelihood of confusion, including the possibility of association, between your mark and the contested application/use? • Is your trademark well known in Turkey? • Is it likely that the contested mark/use will obtain an unfair profit/advantage because of the level of notoriety? • Might the contested use discredit your well-known mark? • Is it likely that the contested mark/use will result in harm to the distinctive character of your well-known mark? In principle, the opponent is responsible for proving its claims with strong evidence. The burden of proof falls on the defendant only in trademark invalidation court actions. One much-discussed recent case was the infringement action brought by Cable News Network Inc – a world leader in news and information programming services – over its registered and well-known mark CNN. The action was brought against sister companies CNNTUR Motorlu Araclar Insaat Ltd and Cadde Travel Turizm Ltd, which are tourist tour operators, ground handlers and travel agents offering a variety of travel services throughout Turkey and abroad. This is one of a run of recent decisions on bad-faith trademark dilution attempts which also involved a registered domain name and conflict with company names. In the event, the case was concluded swiftly (ie, within six months) before the IP Court. Preliminary injunction claims also helped the plaintiff to stop the infringement at an early stage in the proceedings. The court found that the defendants’ use of the CNN mark was a breach of trademark rights and therefore an act of unfair competition, and thus ordered them to cease using the mark immediately. The court then ordered that this finding be published in several national newspapers at the defendants’ expense. Before enforcing rights against an alleged infringer, the rights holder should check whether the other party has registered the disputed mark and used it appropriately in Turkey. Turkish IP legislation has strong provisions against bad faith, unfair competition and infringement. However, infringement actions cannot be initiated against genuine commercial use based on a registered trademark or design right, unless the right in question is invalidated by a court. Turkish court decisions generally meet the standards set out by the World Intellectual Property Organisation and sometimes even surpass these. In several decisions the Supreme Court has ruled that a mark registered in many countries should be regarded as well known in Turkey. In Rocco v Barocco it was decided that foreign trademark registrations and high sales around the world were sufficient to indicate that the mark was well known, even though no commercial use had taken place in Turkey. Despite these examples, it is always recommended that rights holders support their claims with strong evidence and documentation indicating that their mark is well known and has been in continuous use in Turkey (at least in the relevant commercial sector). Trademark and design prosecution before TPI Turkey is an important jurisdiction where rights holders should protect their wellknown marks and keep a careful eye on others’ trademark and design applications in order to head off expensive and timeconsuming court proceedings. A good understanding of the trademark and design prosecution system is therefore crucial. A registered trademark is protected for 10 years from the filing date and can be renewed every 10 years. Both goods (up to 34 classes) and services (up to 11 classes) can be included in one application in accordance with the 10th edition of the Nice Classification. A straightforward trademark application usually takes about 18 months, from filing to registration. The TPI examines all applications on both absolute and relative grounds (to identify earlier marks which are clearly confusingly similar) within six to eight months of filing. If an application is rejected, the applicant can appeal this decision to the TPI’s Re-evaluation and Examination Board, with further appeals to the IP Court in Ankara and to the Supreme Court, if necessary. If the examination is granted, it will then be published for three months in the Official Trademark Bulletin, during which time third parties may file oppositions. If no oppsitions are filed, the mark is registered after three months. The opposition and appeal stages take between eight and 10 months each. Registered trademarks can be cancelled only by the IP Court. Design prosecution shall be granted to a design that is new and has individual character. Multiple designs that fall into the same (Locarno) class can be included in the same application. The protection period for a registered design is 25 years and may then be renewed for up to four times, for five-year periods. Design applications are formally examined on the availability of filing requirements and entitlement only, with no examination for novelty being carried out before the designs are published. It takes between 10 and 12 months to register a design, unless an opposition is filed by a third party. The design registration system is more vulnerable to misuse due to the following: • No novelty examination is carried out; • One application can cover many designs in target merchandise; • Unlike in trademark prosecution, once an opposition to a design application has failed, this cannot be further appealed before the TPI – instead, an invalidation action is required; and • An applicant that files an apparent bad-faith design application is not obliged to reimburse the opponent’s costs once the opposition is accepted and the application is rejected.