Controversial provision of Trademark Decree annulled
Following a decision of the Turkish Constitutional Court on May
13, 2015, the Turkish Patent Institute can no longer require those
assigning a trademark to assign their similar trademarks in the
same portfolio. Article 16/5 of Decree No. 556 on Protection of
Trademarks had long been criticized for granting TPI excessive
authority to the point of infringing on the freedom of contract.
The Constitutional Court has now curtailed that authority.
TPI's application of Article 16/5
Article 16 regulates the requirements for the assignment of
trademarks. Sub-Article 16/5 extended not only to identical or
nearly identical trademarks, but also similar trademarks, which are
not normally subject to absolute grounds examinations, and imposed
an additional requirement on assignors which have more than one
similar trademark registered for similar goods and services,
requiring that those similar trademarks be assigned together.
This provision was based on the Turkish law "principle of
uniqueness," according to which a trademark can have only one
owner, as the co-existence of trademarks is not permitted. This
provision was problematic, especially for owners with large
trademark portfolios, as they could be forced to assign trademarks
which the owners were not contractually obligated to assign.
As a consequence, when considering an assignment of a trademark,
the TPI would routinely examine the assignor's entire Turkish
trademark portfolio and order the parties to also assign other
similar trademarks, failing which the TPI would refuse to approve
Legal Basis for Cancellation
In accordance with Turkish procedure where a constitutional
issue is raised, the Ankara 3rd Court of Intellectual
and Industrial Property Rights filed an objection with the
Constitutional Court seeking cancellation of Article 16/5 of the
Trademark Decree, on the basis that it violated the Turkish
constitution and freedom of contract.
The IP Court raised a constitutional objection after concluding
that Article 16/5 unlawfully restricted fundamental rights and
freedoms. The IP Court reasoned that property rights can only be
restricted by a legislative act adopted by the parliament and not
by a decree of the Council of Ministers. Therefore, the restriction
of property rights violated the Turkish constitution.
Freedom of Contract violation<
The IP Court reasoned that, even though Article 16/5 is an
interpretation of the principle of uniqueness, the provision
granted excessive authority to the TPI. The court observed that,
under the principle of uniqueness, Article 7/1-b of the Trademark
Decree already granted the TPI the right to refuse trademark
applications that are identical or confusingly similar to
previously registered rights. Article 16/5, however, required
trademark owners to assign all similar trademarks together and, if
the owners wanted to assign only one of those trademarks, the TPI
would refuse to record the assignment, rendering the assignment
invalid. The IP Court concluded that, in compelling the assignor to
assign all similar trademarks, the TPI exceeded its authority.
The Constitutional Court accepted the IP Court's reasoning
and annulled Article 16/5 in its entirety.
Implications for trademark owners
The cancellation of Article 16/5 now enables right holders to
retain their rights to trademarks similar to an assigned trademark,
and will ease transactional requirements for assignor parties with
The cancellation of the entire article also raises new questions
where an assignor has identical trademarks in different but similar
classes. This may lead to further discussion on the principle of
The Constitutional Court recently issued a similar decision,
annulling Article 42/c of the Trademark Decree on the same grounds
-- specifically, that only legislative acts can restrict property
rights, and the restriction of a property right by decree is a
violation of the Turkish constitution. Turkey still has no
legislative acts for trademarks, patents, industrial designs,
geographical indications and utility models -- all of which are
only regulated by decree. The cancellation of provisions in
decrees, therefore, raises the risk of further Constitutional Court
decisions based on excessive and unlawful restriction of
fundamental rights, including property rights.
To address this situation, a draft law amending several
IP-related decrees is pending in the Turkish Parliament, waiting to
enter into force. With the piecemeal annulment of the Trademark
Decree, Turkey is certainly in need of proper legislation on
intellectual property rights to ensure the integrity of the overall
legal regime governing their protection.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
On 8 September 2016 (C-160/15), the CJEU ruled that the posting of a hyperlink to copyright-protected works located on another website does not constitute copyright infringement when the link poster does not seek financial gain.
The chapter on the UK summarises the IP court and litigation system in the UK, recent developments in relation to IP law and practice, the forms and availability of IP protection and trends and outlook in the IP sphere.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).