Provided that they perform the function of distinguishing the goods and services of one undertaking from those of others, all signs capable of being represented graphically — words, and in particular personal names, together with figures, letters, numerals and the shape or packaging of the goods — qualify as trademarks. Other signs that can be expressed in a manner ensuring distinctiveness and that can be published and reproduced by printing are assessed within the same scope. The legislation currently in force on the subject was introduced by the Industrial Property Act No. 6769. Those wishing to obtain protection must apply to the Turkish Patent and Trademark Office; it is beyond dispute that signs falling within an absolute ground for refusal cannot be entered in the register.
On a global scale, the elements that distinguish a company from its competitors and confer value on it are no longer the number of staff it employs or the tangible assets it owns. Brand value, the patent portfolio and industrial design rights have moved to the upper rungs of that ranking. In parallel, the registration and protection of trademarks has become a subject of ever greater importance. A trademark also contributes to its proprietor’s differentiation and standing within its commercial environment.
The Concept of a Trademark
A trademark is any sign that makes it possible to distinguish the goods produced or sold, or the services offered, by one undertaking from those of all other undertakings. Its technical definition in the Industrial Property Act No. 6769 may be simplified as any sign of a distinctive character. Just as a trade name distinguishes merchants from one another and a business name distinguishes businesses, a trademark performs the function of distinguishing goods and services from one another.
The expression that calls for attention here is “goods and services”. As the Act particularly emphasises, a trademark is not to be regarded as a mere emblem affixed to a product. What we are dealing with is a broad concept that also enables a service offered to be distinguished from other services. It is not necessary to produce goods in order to be the proprietor of a trademark. Airlines, for example, do not manufacture a product but provide a service; trademarks based on the provision of services in this way are called service marks.
Absolute Grounds for Refusal of a Trademark
The absolute grounds for refusal of trademark registration are set out in Article 5 of the Industrial Property Act. As their name suggests, the function of these grounds is to prevent the entry in the register of signs that are contrary to public order, public morality or religious values and that carry the potential to mislead consumers. Given their public character, these grounds are investigated with care by the Turkish Patent and Trademark Office (TPMK) and are taken into account of its own motion.
Our detailed examination of the scope of the absolute grounds for refusal may be found in our study entitled Which Trademarks or Signs Cannot Be Registered as Trademarks?
Guarantee Marks
A guarantee mark is a sign that serves to guarantee the common characteristics, methods of production, geographical origin and level of quality of a number of undertakings operating under the control of the proprietor of the mark.
To put it concretely: the person or institution owning a guarantee mark is regarded as having guaranteed, in various respects, the goods and services of the undertakings it has permitted to use the mark. The bearing of such a mark demonstrates that the goods and services concerned meet certain quality criteria. This is decisive not only in terms of competition within the sector but also in guiding the choices of purchasers. The best-known example in Türkiye is the TSE mark, which shows conformity with the criteria laid down by the Turkish Standards Institution. The CE marking found on certain products is another example of a guarantee mark, certifying that the product meets European standards. Unlike the classic definition of a trademark, a guarantee mark reflects not distinctiveness but a common characteristic or quality.
The use of a guarantee mark on the goods or services of the proprietor of the mark, or of an undertaking economically linked to it, is prohibited.
Collective Marks
A sign used jointly by a group made up of manufacturing, trading or service undertakings is called a collective mark. Such a mark enables the goods and services of the undertakings belonging to the group to be distinguished from those of other undertakings.
A collective mark is the product of an association formed by small-scale undertakings, for which building a brand alone would be difficult and the return limited, in order to promote their products to a wide audience. The cooperative unions established under Act No. 4572 on Agricultural Sales Cooperatives and Unions are the most obvious manifestation of this structure. Cooperatives formed by producers of cotton, figs, grapes and olives may unite under a common mark.
In applications for the registration of both guarantee marks and collective marks, it is compulsory to submit, together with the application documents, the technical specification setting out the procedures and principles governing use of the mark.
Rights in a Trademark
Unlike other intellectual and industrial property rights, no condition of originality is required for a trademark right to arise. Although as a rule there is no obstacle to a commonly known word, figure, letter, melody or even scent being adopted as a trademark, the sign that is the subject of registration must in all cases be distinctive. Whether the chosen sign comes under protection depends on registration. Although the trademark right is abstract in nature, it is a right that carries economic value, may be asserted against everyone and forms part of the estate; its protection is secured by entry in the register. A registered trademark may be transferred by sale, may pass by inheritance, may be made the subject of a licence — that is, a permission to use — and may be pledged independently of the undertaking.
While rights such as patents, utility models, industrial models and designs may be protected only for a fixed period, a trademark may be protected indefinitely through registration before the TPMK. For that protection to be maintained, however, the proprietor must attend to the registration and to the applicable time limits and must renew the registration every 10 years. The renewal request must be made by the proprietor within the six-month period preceding the date on which the term of protection expires, and evidence that the renewal fee has been paid must be submitted to the Office. For the renewal of a collective mark, a request by only one of the undertakings belonging to the group is sufficient.
The powers arising from registration belong exclusively to the proprietor of the trademark. The proprietor may seek the prevention of certain acts where they are carried out without its consent. That said, lawful uses made by third parties in accordance with the rule of good faith and the ordinary course of commercial life cannot be prevented.
The conduct by which infringement of a trademark right occurs, the consequences it produces and the sanctions that may be applied are examined in detail in our article entitled Trademark Infringement.
The Trademark Registration Procedure
Natural persons or companies wishing to obtain registration must begin the process with an application to the TPMK. Once the necessary documents have been prepared in full, the file is submitted to the Office. Article 11 of the Industrial Property Act, headed “Conditions of application, classification and division”, sets out one by one the documents that must be submitted with the application. On receiving the application, the TPMK determines the class in which the goods or services concerned fall according to the current Nice Classification List published on the Office’s official website.
During the examination it is also verified whether the application has been made by persons entitled to do so; applications made by persons who satisfy the legislation are subjected to an examination as to formal compliance under Art. 11 of the Industrial Property Act. Under that provision, an application free of any deficiency becomes final as of the date, hour and minute on which it was received. Where a formal deficiency is identified, the applicant is granted an additional period of 2 months in which to remedy it. If the documents are not completed within that period, the TPMK may cancel the application. At the following stage the entire file is taken into examination and the procedural compliance of the application is assessed.
In respect of an application that has become final, the Office investigates whether the absolute grounds for refusal listed in Art. 5 of the Industrial Property Act, or any relative grounds for refusal, are present. If unlawfulness 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 and registration does not take place.
Trademarks found to be procedurally compliant are published in the TPMK Official Trademark Bulletin; that publication constitutes the next link in the registration process. At the final stage the register entry is created and the Trademark Registration Certificate and the trademark register record are delivered to the rightholder.
Details of the conditions of registration, the rights and possibilities it confers and the termination of a trademark may be found in our study entitled Trademark Registration and the Rights Conferred by a Trademark.
Persons Entitled to Apply for Trademark Registration
The following are entitled to file a trademark application in Türkiye:
- Citizens of the Republic of Türkiye.
- Natural and legal persons who are domiciled within the country or who carry on industrial or commercial activity there.
- Persons granted a right of application under the provisions of the Paris Convention and of the Agreement Establishing the World Trade Organization.
- Under the principle of reciprocity, persons who are nationals of States that afford industrial property protection to nationals of the Republic of Türkiye.
Moreover, as examined in our article entitled The Rights of the Author, the Protection and Transfer of the Right, our legislation also confers a number of rights and possibilities of protection on the author of a qualifying work. Which intellectual and artistic products are to be regarded as a “work”, and which rights are conferred on the author, are governed by the Law on Intellectual and Artistic Works No. 5846 (FSEK). Our assessment of the legal remedies available to an author whose economic and moral rights have been infringed is set out in the article entitled Actions That May Be Brought by the Author under the FSEK.
Independent Legal Assessment
The legal value of an investment in a trademark is most often determined not by obtaining the registration certificate but by the decisions taken at the selection stage. Although descriptive names that directly evoke the sector make matters easier from a marketing standpoint, they are either refused, because they do not meet the threshold of distinctiveness, or, even if registered, afford weak protection.
With guarantee and collective marks, the decisive element is the technical specification; a carelessly drafted specification lays the ground for gaps in supervision and a risk of cancellation at a later stage. The following matters should be taken into account in a trademark file:
- Assessing the level of distinctiveness of the sign, specifically for the classes targeted, before the application is filed
- Constructing the list of goods and services on the basis of the Nice classification so that it corresponds to the actual field of activity
- Monitoring the two-month additional period granted for formal deficiencies so as to prevent cancellation of the application
- Following the publication in the Bulletin and preparing a defence against third-party oppositions
- Recording the ten-year renewal dates and the six-month application window
- Designing the technical specification for guarantee and collective marks together with its supervisory mechanism
Independent Legal provides advisory services across the whole range of industrial property processes, from trademark selection through the preparation of the application to the conduct of the post-registration protection strategy.