Turkey: Trademark Application(s) Similar To Well-Known Trademarks Will No Longer Be Subject To Ex-Officio Examination By The Turkish Patent Institute As Of Article 6bis Of The Paris Convention

The Turkish Constitutional Court (the Constitutional Court) has cancelled the provision of Article 7/1(i) of Decree Law no. 556 on trademarks with the Decision dated May 27, 2015 (Decision).

The provision of Article 7/1(i) refers to Article 6 bisi of the Paris Convention and reads as follows :

Article 7 - Following signs shall not be registered as a trademark:

....

i) trademarks which have not been authorized by their owners, well-known marks according to 6 bis of the Paris Convention.

...

The subject provision of Article 7/1(i) has been cancelled by the Constitutional Court, on the basis of Article 91ii of the Constitution according to which the restriction/abolishment of a "property right" can be made solely on the basis of an Act of Parliament, on the ground that a provision of Decree Law can therefore not constitute the basis for restricting/abolishing a "property right".

What was the cancelled provision regulating?

According to the cancelled provision of Article 7/1(i), the Turkish Patent Institute (T.P.I.), which is the trademark registration authority, were to consider and refuse ex-officio third party trademark application(s), for trademarks identical or similar to well-known trademarks in the sense of Article 6 bis of the Paris Convention or recorded in the well-known trademark register, and filed in respect of goods and services identical or similar to those for which the well-known trademark is acknowledged to be well-known.

It should be noted that the cancelled provision of Article 7/1(i) referring to Article 6 bis of the Paris Convention was regulated as one of the absolute grounds of refusal cited in Article 7iii which are deemed to be of public order and as such are to be taken into consideration ex-offico by the T.P.I. for the registration of trademarks and by the courts during litigation.

The fact that the provision referring to Article 6 bis of the Paris Convention was regulated under "Absolute Grounds" instead of "Relative Grounds" was the point where European Union and Turkish legislation differed.

The cancelled provision was providing well-known trademark right holders, an ex-officio protection limited to identical and similar goods of the trademark acknowledged as well-known, against third party application(s), for trademarks identical or similar to well-known trademarks in the sense of Article 6 bis of the Paris Convention or recorded in the well-known trademark register,even in the absence of any prior trademark application or registration of the well-known trademark in Turkey.

Perspectives for Well-Known Trademark Right Holders following the Cancellation of the Provision of Article 7/1(i) of Decree Law No. 556

Effects in Respect of Ex-Officio Examination by Turkish Patent Institute (T.P.I.)

As from the date on which the subject decision of the Constitutional Court has been published in the official gazette i.e. May 27, 2015, T.P.I. shall have no competence, for want of legal basis, to ex-officio consider and refuse third party application(s) for trademarks identical or similar with well-known trademarks in the sense of Article 6 bis of the Paris Convention or recorded in the well-known trademark register and filed in respect of goods and services identical or similar to those for which the well-known trademark is acknowledged to be well-known.

In the case where a prior well-known trademark has been applied for or registered in Turkey, T.P.I. will continue to ex-officio take into account such prior registration(s)/application(s) according to Article 7/1 (b) of Decree- Law No. 556 and will cite them against conflicting third party applications covering identical or similar goods and services. In other words, the subject Decision shall not affect the practice of the Institute made in the context of Article 7/1 (b) as of the prior applications/registrations in this country of well-known trademarks according to which all such prior applications/registrations shall continue to be ex-officio considered by T.P.I. in assessing conflicting third-party applications.

Effects in Respect of Oppositions and Litigation Process

Prior to the Constitutional Court's Decision, there were two provisions in the Decree Law no. 556 affording protection for well-known trademarks :

  • Article 7/1(i) on absolute grounds of refusal, referring to the Article 6 bis of Paris Convention and ,
  • Article 8/4iv on relative grounds of refusal, referring to Article 16/3v of TRIPs (The Agreement on Trade-Related Aspects of Intellectual Property Rights)

According to its prior practice pursuant to the cancelled provision of Article 7/1(i), the Turkish Patent Institute (T.P.I.) was to consider and refuse, ex officio, applications in the name of third parties for trademarks, identical or similar to well-known trademarks, filed in respect of goods/services identical or similar to those for which the well-known trademark is reputed for. In order to afford protection according to Article 6 bis of the Paris Convention as of the cancelled provision of Article 7/1(i) there was no requirement for well-known trademark right holders to have a prior application or registration of their well-known trademark in Turkey. To this effect it was enough that the reputation of well-known trademark be acknowledged in any convention country including Turkey. Moreover worldwide reputation and factual use in this country were also not required.

It should be noted that the protection afforded according to Article 6 bis of the Paris Convention is limited to the goods/services which are identical or similar to those for which the well-known trademark is acknowledged to be reputed for.

It is also important to note that despite the cancellation of the provision of Article 7/1(i), well-known trademark right holders continue to enjoy the protection afforded by Article 6 bis of the Paris Convention against conflicting third party trademark applications as Turkey is and continues to be signatory of the Paris Convention.

In other words, the cancellation of the subject provision has resulted, only, in one practical change in respect of, future and ongoing, opposition and litigation proceedings under the Turkish trademark practice; that is the legal basis for well-known trademark right holders, having no prior application/registration in this country, to take action against conflicting third party application(s) has shifted from the provision of Article 7/1(i) of Decree Law no. 556 to the provision of Article 8/4 of the Decree Law no. 556 to be considered in conjunction with Articles 16/3 of TRIPs and/or 6 bis of the Paris Convention.

According to Article 35 of the Decree-Law no. 556, it is possible to file opposition based on relative/absolute grounds or bad faith. Moreover the Article 4 of the Decree reads as "Where the provisions of international agreements that have entered into force as provided in the laws of the Turkish Republic offer more favorable conditions than this Decree-Law, the persons referred to in Article 2 may request treatment according to those more favorable conditions". Thanks to the said provisions, we believe that it is still possible to contest a third party application during the opposition phase before the Turkish Patent Institute based on well known trademark claims on the basis of Article 6 bis of the Paris Convention and Article 16/2 of TRIPs .

As explained here above, it should be reminded that the subject Decision shall not affect the current practice of T.P.I made in the context of Article 7/1 (b) in respect of conflicting trademark applications covering goods/services which are identical or similar to those for which the well-known trademark is reputed for.

As for the differing goods/services, the relative ground of refusal pursuant to Article 8/4 of Decree Law No. 556 referring to Article 16/3 of TRIPS providing extended protection continues to be available to well-known trademark right holders against conflicting third party trademark applications, with the provison that the well-known trademark has a prior application or registration in Turkey.

Indeed, pursuant to Article 8/4 referring to TRIPs ( Article 16/2 and as of Article 16/3 ) the well-known trademark, firstly, needs to be registered in Turkey in order to afford extended protection in respect of goods/ services other than those for which the well-known trademark is reputed for-

Furthermore the reputation acquired by a trademark is in itself not enough as a ground of refusal according to Article 8/4 (relative grounds of refusal) and that at least one of the other 3 conditions mentioned therein need to materialize:

  • taking unfair advantage of the reputation of the well-known trademark;
  • damaging the reputation of the well-known mark
  • harming the distinctive character (dilution) of the well-known mark

Having explained the legal means currently available to well-known trademark right holders to protect their trademarks in Turkey, it should be mentioned that they would be able to exercise them not only before the Turkish Patent Institute, but also before the courts including the specialized IP courts.

Effect in respect of "Well-known Trademark Registry" held with the Turkish Patent Institute

Under the current Turkish trademark practice, apart from the regular trademark applications and registrations in the official trademark register, well-known trademarks may additionally be recorded on a special Register (Well-known Trademark Register) upon the application filed to this effect by the well-known trademark right holder. The well-known trademark will be accepted by the T.P.I. to be recorded on the special register provided the application meets the criteria mainly adopted from WIPO Joint Recommendations on the Protection of Well-Known Marks.

The rationale lying behind establishing such special Register is:

  • to establish a database for the implementation of the ex-officio examination as of the provision of Article 7/1(i) of Decree Law no. 556 (the cancelled provision)
  • to enable well-known trademark right holders to bring evidence that the reputation of their well-known trademark is acknowledged by the T.P.I. on the basis of comprehensive evidences filed to this effect
  • to inform the public about the existence of the well-known trademark and of the reputation it enjoys in Turkey.

The subject decision of the Constitutional Court shall have no effect on the special well-known trademark register administered by T.P.I. and on the status of the trademarks recorded thereon.

Moreover, the legal basis of T.P.I. for establishing and administering the special Well-known Trademark Register is Article 13vi of Law no. 5000 on the establishment and functions of T.P.I. continues to have legal basis for keeping a Well-known Trademark Register irrespective that the provision of Article 7/1(i) has been cancelled by the subject Decision.

Accordingly pending and future applications for Well-known Trademark Register would not be affected from the subject decision of the Constitutional Court.

Will the cancellation of the provision of Article 7/1 (i) of Decree Law no. 556 result in any change in the current Turkish trademark practice for well-known trademark right holders?

With the subject Decision, well-known trademarks will no longer be included in the ex-officio examination T.P.I. carries out as of its routine practice for assessing new trademark applications. Accordingly conflicting third party application(s) for trademarks identical or similar to well-known trademarks would not be ex-officio refused by T.P.I on absolute grounds of refusal and shall pass the preliminary examination.

In respect of oppositions before T.P.I. as well as court litigation proceedings, even though the Article 7/1(i) has been cancelled, well-known trademark right holders will still be able to benefit in their actions from the same protection as afforded according to Article 6 bis of the Paris Convention.

It should be reminded that Article 8/4 of Decree Law no. 556 is still available for well-known trademark right holders to protect their trademark for the differing goods and/or services as long as they have a prior application or registration of their well-known trademark in Turkey.

Consequently, following the Constitutional Court's decision, it would be advisable for well-known trademark right holders to take the following measures in order to ensure an adequate scope of protection in Turkey;

  • installing a watch service in Turkey to identify:

    • new third party application(s) for trademarks identical or similar with their well-known trademark and filed in respect of goods and services similar with those of their well-known trademark;
    • third party applications under prosecution which would be subject to refusal during ex-officio examination on the basis of Article 7/1(i), now cancelled.
  • filing trademark application(s) in Turkey for their well-known trademark(s) in order to be able to protect their trademark at least in respect of "conflicting goods and services" for benefiting from the protection afforded by Article 7/1 (b) of Decree Law no. 556 as well as from Article 8/4 of Decree Law no.556 for benefiting from the protection afforded for "differing goods and services".

Footnotes

i. Paris Convention, Article 6 bis: Marks: Well-Known Marks (1) The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well-known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such wellknown mark or an imitation liable to create confusion therewith.(2) A period of at least five years from the date of registration shall be allowed for requesting the cancellation of such a mark. The countries of the Union may provide for a period within which the prohibition of use must be requested.(3) No time limit shall be fixed for requesting the cancellation or the prohibition of the use of marks registered or used in bad faith.

ii. (Constitution)Article 91 : Authorization to issue decrees having the force of law

The Grand National Assembly of Turkey may empower the Council of Ministers to issue decrees having the force of law. However, with the exception of martial law and states of emergency, the fundamental rights, individual rights and duties included in the first and second chapters and the political rights and duties listed in the fourth chapter of the second part of the Constitution, shall not be regulated by decrees having the force of law. The empowering law shall define the purpose, scope, and principles of the decree having the force of law, the operative period of the empowering law, and whether more than one decree will be issued within the same period.

Resignation or fall of the Council of Ministers or expiration of the legislative term shall not cause the termination of the power conferred for the given period.

When approving a decree having the force of law by the Grand National Assembly of Turkey before the end of the prescribed period, it shall also be stated whether the power has terminated or will continue until the expiry of the period.

Provisions related to issuing decree having the force of law issued by the Council of Ministers meeting under the chairpersonship of the President of the Republic in time of martial law or states of emergency, are reserved. Decrees having the force of law shall come into force on the day of their publication in the Official Gazette. However, a later date may be indicated in the decree as the date of entry into force. Decrees shall be submitted to the Grand National Assembly of Turkey on the day of their publication in the Official Gazette. Empowering laws, and decrees having the force of law which are based on them, shall be debated in the committees and in the Plenary of the Grand National Assembly of Turkey with priority and urgency. Decrees not submitted to the Grand National Assembly of Turkey on the day of their publication shall cease to have effect on that day and decrees rejected by the Grand National Assembly of Turkey shall cease to have effect on the day of publication of the resolution in the Official Gazette. The amended provisions of the decrees that are approved as amended shall go into force on the day of their publication in the Official Gazette.

iii. Article7/b reading as "Following signs shall not be registered as a trademark: trademarks identical or (almost) identical to the point of being indistinguishably similar to a prior trademark registration or application in respect of good(s) or service(s) whether identical or of identical nature/type".

iv. Article 8/4 reading as "A trademark filed for registration that is identical or similar to a registered trademark or to a trademark with an earlier application date may be used for different goods and services. However, where a registered trademark or a trademark with an earlier application date has a reputation, and where the use without due cause of the trademark filed for registration would take unfair advantage of or be detrimental to the distinctive character or reputation of the registered trademark or of the trademark with an earlier application date, on opposition from the proprietor of the earlier trademark the trademark applied for shall not be registered, even for use in connection with goods or services that are not similar to those for which the earlier trademark is registered.."

v. (TRIPs) Article 16: Rights Conferred

1. The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. In case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed. The rights described above shall not prejudice any existing prior rights, nor shall they affect the possibility of Members making rights available on the basis of use.

2. Article 6 bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.

3. Article 6 bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and provided that the interests of the owner of the registered trademark are likely to be damaged by such use.

vi. Article 13- The Trademarks Department;

d) executes procedures to provide protection for the signs and words with certain characteristics, to specify and implement the principles in relation to the level of notoriety of trademarks in accordance with the provisions of the relevant legislation,

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.

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Authors
Yaşar Canpolat
 
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