Any sign capable of being represented graphically that is apt to distinguish the goods and services offered by an undertaking from those of its competitors may qualify as a trademark. Personal names, phrases, figures, sequences of letters and numerals, and the shape or packaging of the goods themselves fall within that scope. Signs that can be expressed in a manner capable of ensuring distinctiveness and that lend themselves to publication and reproduction by printing are likewise treated as trademarks.
Because a trademark is an economic asset that opens up a broad field of powers and opportunities for its proprietor, it must be protected against unauthorised use by persons without title. Turkish law affords that protection under the heading of the trademark right, an absolute right that may be asserted against everyone. The powers held by the proprietor, the limits of protection and the circumstances in which the right is extinguished are governed by Articles 4 to 34 of the Industrial Property Act No. 6769.
What distinguishes companies from one another on an international scale today, and makes them valuable, is not the number of staff they employ or the size of their balance sheet, but brand value, the patent portfolio and industrial design rights. The registration and protection of trademarks accordingly carries ever greater weight. A trademark also serves to help its proprietor stand out in its market and build up a reputation. In this briefing note we examine, in turn, the registration process, the scope of protection, its termination and the sanctions for infringement.
The Registration Process, Term of Protection and Renewal
The documents to be submitted with a trademark application are set out one by one in Article 11 of the Industrial Property Act No. 6769, headed “Conditions of application, classification and division”. The same provision also states expressly that registration of only one trademark may be sought in each application made to the Turkish Patent and Trademark Office. At the first step of the assessment it is established in which class the goods or services covered by the application fall under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. The current Nice Classification List is published on the official website of the Turkish Patent and Trademark Office.
The Office first considers the file under Article 3 of the Act, headed “Persons entitled to protection”, and verifies whether the application has been made by the persons described in that provision. If no obstacle is seen in that respect, the next step is the formal examination carried out under Article 11. Where no deficiency is identified in the documents, the application becomes final by reference to the date, hour and minute at which the file reached the Office. Where a formal deficiency is identified, the applicant is granted a period of two months in which to remedy it; if the deficiency is not remedied within the period allowed, the file is struck out.
Once the application has become final, the Office examines whether the absolute grounds for refusal listed in Article 5 of the Act, or any relative grounds for refusal that have been raised, are present. If, at the end of that examination, an obstacle to registration is established in respect of some or all of the goods or services covered by the application, the application is refused as regards those goods and services.
Files that have been submitted complete or whose deficiencies have subsequently been remedied, that have been examined and published under Art. 16 of the Industrial Property Act, and against which no opposition at all has been filed or all oppositions filed have finally been rejected, proceed to the next stage. Where the requested documents, including evidence that the registration fee has been paid, have been submitted to the Office in time, all stages of the application are deemed to have been completed. A trademark that reaches this point is registered by the Turkish Patent and Trademark Office, entered in the register and announced in the Office’s Official Bulletin.
Persons Entitled to Protection and the Principle of a Single Proprietor
The following may benefit from the protection afforded by the Industrial Property Act: nationals of the Republic of Türkiye; natural and legal persons who have established their domicile within the country or who carry on an industrial or commercial activity there; those entitled to apply under the provisions of the Paris Convention or of the Agreement Establishing the World Trade Organization of 15/4/1994; and, finally, under the principle of reciprocity, persons who are nationals of States that afford industrial property protection to Turkish citizens in their own country.
The principle of a single proprietor means that a trademark may be entered in the register in the name of only one person for the goods and services for which it is registered — that is, that every trademark has a single proprietor. Because the principle is regarded as a matter of public order, even the consent of the existing proprietor to the registration of a similar trademark produces no effect. The principle serves a twofold function: on the one hand it secures the powers of the proprietor of the registered trademark, and on the other it protects the interests of third parties who deal in reliance on the trademark. Where there is a conflict, the question of which trademark is to be protected is resolved by chronological priority; the trademark registered earlier prevails. Accordingly, a later trademark that crosses the threshold of similarity with an earlier registration in respect of the same goods and services is not entered in the register.
Powers Conferred on the Proprietor by Registration
The trademark protection provided for by the Act arises only through registration, and the powers deriving from registration are conferred exclusively on the proprietor. The principal such powers may be summarised as follows.
- The proprietor may dispose of the sign as it wishes; it may exploit the trademark for the purpose of obtaining both economic and personal benefit.
- The power to use the trademark belongs to the proprietor alone; this includes the possibility of preventing use by third parties. Where the trademark is infringed by means of similar signs or counterfeits, the proprietor may seek the prevention of those infringements.
- The trademark may be transferred to a third party in whole or in part in respect of the goods and services for which it is registered, and may equally be made the subject of a pledge.
- It is possible for the trademark to be offered as security separately from the undertaking.
- The power to use a registered trademark may be granted to another by a licence agreement. The licensee obtains the ability to use the trademark in the same way as the proprietor and benefits from the trademark’s strength and reputation in the market.
Which intellectual and artistic productions are to be regarded as a “work”, and which rights are conferred on the author, are the subject of separate legislation, namely the Law on Intellectual and Artistic Works No. 5846. That legislation affords the author a series of rights and protections in respect of works possessing the characteristics it requires. Readers seeking detail on this subject may consult the study entitled “The Rights of the Author, the Protection and Transfer of the Right”.
Termination of Trademark Protection
Under the express provision of Art. 22 of the Industrial Property Act, the term of protection of a registered trademark is ten years from the date of application, and that term may be renewed in successive ten-year periods. The renewal request must be submitted by the proprietor within the six months preceding the expiry of the term of protection, and evidence that the renewal fee has been paid must be provided to the Office within the same period.
Where the request is not made within that period, or the evidence of payment of the fee is not submitted in time, the door does not close altogether: renewal may be effected within six months of the expiry of the term of protection upon payment of an additional fee. A renewal entered in the register and published in the Bulletin takes effect from the day following that on which the previous term of protection expired.
If the proprietor does not make a timely and properly formulated renewal request, the trademark lapses automatically. Another means of termination is the proprietor’s voluntary surrender of the trademark right before the ten-year term expires.
A trademark may also come to an end through revocation. Failure to use the trademark for 5 years from registration without a justified reason, or a continuous interruption of use for 5 years, opens the way to a request for revocation. In addition, a decision of revocation or invalidity in respect of the trademark also extinguishes the right.
As a natural extension of the principle of a single proprietor, protection continues to have effect for a period after the trademark has come to an end. For three years from the termination of collective marks and guarantee marks, applications to register a mark identical or similar to them are refused upon opposition. In the case of registered trademarks, applications for an identical or similar trademark in respect of the same goods and services are refused for two years following the expiry of the term of protection.
The consequences of termination operate for the future, not retrospectively. The right is extinguished as from the moment the ground of termination arose; all legal consequences that have arisen up to that moment remain valid.
Legal Remedies in Cases of Infringement
A proprietor whose powers under the Industrial Property Act have been infringed has six distinct and mutually complementary claims available. The proprietor may first seek a declaration that an infringement exists; where the infringement has not yet occurred it may request its prevention, and where an infringement is continuing it may request its cessation. An action for the removal of the infringement may be brought in order to eliminate the consequences it has produced. An action for pecuniary damages may be pursued in respect of the loss caused to its assets, and an action for non-pecuniary damages in respect of the harm caused to the trademark’s reputation and to personal values.
For detailed information on the legal remedies available to an author whose economic and moral rights have been impaired, the study entitled “Actions That May Be Brought by the Author under the FSEK” may be consulted.
Criminal Sanctions Arising on Infringement
Infringement of a trademark right gives rise not only to the civil liability of the perpetrator but also to criminal liability. The proprietor may additionally file a criminal complaint with the Office of the Chief Public Prosecutor against those who commit the infringing act and seek their punishment. Article 30 of the Industrial Property Act provides, for acts infringing a trademark right, for a judicial fine in addition to a term of imprisonment from 1 to 4 years.
The legislation likewise enables authors whose rights have been violated to apply to the public prosecutor and have criminal proceedings brought against those concerned. For detail on the criminal proceedings that may be pursued in cases of infringement of intellectual and industrial property rights, the study entitled “Criminal Actions Available Against Infringement of Rights in Intellectual and Artistic Works” may be consulted.
Independent Legal Assessment
Trademark protection is not a one-off act of registration but a process requiring continuous monitoring. In practice, the most frequent losses of rights arise not from disputes on the merits but from procedural omissions such as missing the renewal deadline, being unable to document proof of use, or allowing the period for opposing similar applications to elapse.
In managing a trademark portfolio, we recommend that the following matters be reviewed regularly:
- Diarising and monitoring the ten-year terms of protection and the six-month renewal window
- Continuously documenting the five-year use requirement running from registration by means of invoices and promotional materials
- Regularly following similar applications published in the Bulletin and not missing the periods for opposition
- Recording transfers, pledges and licences in the register so that they may be asserted against third parties
- Securing evidence in good time in the event of infringement and also considering the criminal route
Independent Legal provides advisory and litigation services at every stage of industrial property disputes, from the preparation of trademark applications through the conduct of opposition proceedings to the handling of infringement actions.