In 2014, the Turkish Constitutional Court ("Constitutional
Court") hit the headlines by cancelling several articles of
the Trademark Decree Law numbered 556 ("Trademark Decree
Law"). On 15 May 2015, the Constitutional Court struck out
another article of the Trademark Decree Law, Article 16(5), on the
basis that it is unconstitutional. Recently, article 16(5) has been
creating problems for trademark assignment in Turkey.
According to the now cancelled Article 16(5), when a trademark
registration was assigned, any identical or similar trademarks (for
the same or similar goods or services) were also required to be
transferred to the same assignee. In practice, when an application
to record the trademark assignment was filed, the Turkish Patent
Institute ("TPI") would give two months to assign the any
remaining identical or similar trademarks. If the parties failed to
comply with this requirement, the TPI would reject the assignment
Article 16(5) created problems because in some circumstances the
TPI would interpret the term "similar trademarks" in a
broad manner. The TPI also began conducting a similarity search
when a request was filed to record the trademark assignment. These
factors, combined with the TPI's refusal to accept consent
letters, conflicted with parties' freedom of contract, one of
the basic principles of civil law.
The conflict caused by Article 16(5) of the Trademark Decree Law
was considered during a lawsuit before the 3rd
Intellectual and Industrial Rights Civil Court of Ankara
("Ankara Court"). The Ankara Court applied to the
Constitutional Court, Turkey's highest court, seeking
cancellation of Article 16(5). The Ankara Court presented the
following grounds for cancellation:
Article 16(5) conflicts with Article 91 of the Turkish
Constitution: The Constitution states that (with limited
exceptions) decree laws may not regulate fundamental rights, nor
may they regulate individual or political rights and duties.
Article 16(5) conflicts with the state of law
principle: The Trademark Decree Law is based on the principle
that a trademark must be owned by a single owner. Article 16(5)
contradicts the Article 7(1)(b), which outlines one of the grounds
for absolute refusal of a trademark in Turkey. Article 7(1)(b)
prevents later filing of trademarks which are the same or
confusingly similar to already registered or applied for
trademarks. However, Article 16(5) expressly prevents transfer of a
trademark if other trademarks which might cause of
confusion before the public are not also transferred.
The TPI takes the risk of confusion into account when examining
trademarks on the relative grounds outlined by Article 8. The
TPI's authority to examine the trademark cannot be expanded
after the Article 7 examination process has been finished.
Article 16(5) conflicts with the freedom of labor and
contract principles: A governmental body cannot prevent
transfer of a trademark if both the assignee and assignor consent
to the transfer.
Members of the Constitutional Court initially considered the
Ankara Court's claim that Article 16(5) conflicted with Article
91 of the Turkish Constitution. The Constitutional Court agreed
with this claim and struck out Article 16(5) accordingly. As a
result, the Constitutional Court did not continue to consider the
other arguments put forward by the Ankara Court.
The good news coming from cancellation of Article 16(5) is that
this will compensate for disadvantages stemming from the Trademark
Decree Law's strict rejection of consent letters, co-existence
agreements, and sister company arrangements. Trademark holders
which have failed to obtain registration in Turkey in the past (due
to an earlier applied for or registered trademark) may now be able
to obtain registration.
Unfortunately though, it seems Article 16(5) will not be the
last provision to be struck out by the Constitutional Court.
Intellectual property rights in Turkey are regulated by decree laws
(secondary legislation). The Constitutional Court has struck out
many articles through the years on the basis that regulating
fundamental rights through decree laws is unconstitutional. The
Constitutional Court's most recent decision may lead to
cancellation of other intellectual property provisions. In
particular, the Ankara Court makes a strong argument that Article
7(1)(b) of the Decree Law is also unconstitutional on the basis
that it restricts property rights. Accordingly, this may be the
next provision to be struck out.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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