1. What Is The Current Legal Status Regarding The Abrogation Decision Of The Constitutional Court On Cancellation Of Art. 7/1-(I) Of Decree Law Numbered 556?
Ankara 3rd Civil Court on Duty of Intellectual and Industrial Property Rights applied to the Constitutional Court for abrogation of the Art. 7/1-(i) of Decree Law numbered 556 on Protection of Trademarks ("Decree Law") on the grounds that it is not in compliance with the principle of state of law, freedom of labor and freedom of contract claiming that the regulations and restrictions related to trademark rights being a sort of industrial right under the scope of property right cannot made by an administrative act and the relative grounds such as origin, restriction and protection of trademark rights cannot be regulated as an absolute ground for refusal. Accordingly, the Constitutional Court has decided to abrogate the Art. 7/1-(i) of Decree Law by its decision dated 27.05.2015 and the decision was published on the Official Gazette numbered 29374 on June 2nd, 2015.
2. What Is The Judicial Effect Of The Subject Decision On Abrogation Of Art. 7/1-(I)?
The Art. 7/1-(i) of Decree Law titled "absolute grounds for refusal of trademark registrations" was indicating that the well-known trademarks that have not been authorized by their owners within the meaning of Art. 6bis of the Paris Convention shall not be registered as trademarks1.
Within the scope of the above-mentioned provision, a trademark deeming as identical or similar with a well-known trademark over the course of procedural examination by Turkish Patent Institute ("TPI") was being accepted as an absolute ground for refusal, and thus, a trademark application might be rejected with respect to a well-known trademark due to the Art. 6bis of the Paris Convention. That is, a trademark regarded as well-known in the States of the Union was not possible to be registered before the TPI without the consent of the owner.
Recently, it has been argued that subject abrogation decision of the Constitutional Court has terminated the protection granted to the well-known trademarks ex officio under the scope of Art. 7/1-(i) of Decree Law.
3. How to close the legal loophole occurred due to the abrogation decision of Constitutional Court?
Art. 7/1-(i) of Decree Law through the Art. 90 of the Turkish Constitution are still applicable to the cases via oppositions which are based on well-known trademarks pursuant to the majority opinion in doctrine and to the common practice of the TPI.
Alternatively, Art. 8/3, 8/4, 8/5 or 35 of the Decree Law are also applicable under certain circumstances which are stated below in detail.
4. How to carry out above-mentioned legal procedures in order to close the legal loophole?
As indicated under Question 2, the ex officio protection granted to the well-known trademarks has been abrogated and well-known trademarks are no longer protected under the umbrella of Art. 7/1-(i). Owners of well-known trademarks can enjoy the protection under certain circumstances indicated above in detail. Concerning the protection of well-known trademarks, the afore-mentioned provisions 90/5 (Art. 6bis/1 of the Paris Convention), 8/3, 8/4, 8/5 or 35 of Decree Law will apply to the cases.
In the absence of ex officio protection, implementation requirements of alternative legal procedures are as follows:
- Art. 90th of Turkish Constitution
According to the Art. 90 of the Turkish Constitution indicating that agreements duly put into effect have the force of law2 and Turkey is a contracting party of Paris Convention for the Protection of Industrial Property, Art. 7/1-(i) of Decree Law is still applicable via oppositions in common practice of the TPI. Nonetheless, application of Art. 7/1-(i) through Art. 90 of the Turkish Constitution do not still constitute an absolute ground for refusal of trademark registrations and shall not be examined ex officio in the preliminary examination of the TPI.
- Art. 8/3 of Decree Law
Regarding the claims based on non-registered well-known trademarks in Turkey, Art. 8/33 prohibiting the use of trademark rights acquired before the date of trademark registration can apply. In this respect, the well-known trademark owners are able to prevent the trademark registrations by proving the earlier use of trademark in Turkey even if the well-known trademark is not registered.
- Art. 8/4 of Decree Law
Proprietors of registered well-known trademarks enjoy the protection under certain circumstances pursuant to the Art. 8/4 of Decree Law in the absence of Art. 7/1-(i). In the scope of mentioned Art., a well-known trademark must be also registered or applied to be registered for the application of the Art. 8/4 of Decree Law unlike ex officio protection provided under Art. 7/1-(i).
The circumstances in Art. 8/4 for preventing the registration of a well-known trademark read as follows:
- Having unfair advantage through using recognition level of a well-known trademark
- Damaging reputation of a well-known trademark (Dilution)
- Damaging distinctiveness of a well-known trademark
Having said that, the Court of Appeal accepts the use of well-known trademarks in different goods and services as misuse or unfair advantage in almost all its decisions rendered4 (e.g. the decisions of 11th Civil Chamber of Court of Appeals E. 2006/10222, D. 2007/13328 dated 25.10.2007) despite few counter-decisions underlining that the circumstances indicated on Art. 8/4 of Decree Law should also be taken into account when assessing the scope of protection (e.g. The decisions of 11th Civil Chamber of Court of Appeals E. 2009/9530, D. 2011/8923 dated 14.07.2011).
- Art. 8/5 of Decree Law
Also, unregistered trademark rights in relation to the well-known trademarks can be protected via the Art. 8/5 of Decree Law if it is based on name, photograph, copyright, or any industrial property rights of the third parties5. Providing that the trademark application is in conflict with the third party rights concerning above-mentioned rights indicated in Art. 8/5, the owner of the well-known trademark can file an opposition against the trademark application.
- Art. 35 of Decree Law
Claiming rights based on a well-known trademark which is not registered or applied to be registered before TPI can be also considered due to the Art. 35 of Decree Law stating that trademark applications based on bad faith cannot be registered in case of opposition. This Art. is also accepted as basis for the trademark cancellation actions pursuant to the precedents6. In this respect, Clients will benefit from the protection of Art. 35 of Decree Law based on bad faith.
5. What is your legal advice to the well-known trademark proprietors under the current circumstances?
Now, well-known trademark owners should strictly follow the Official Trademark Bulletin published by the TPI in order to be able to file oppositions since ex officio protection is not currently valid.
1. According to the Art. 6bis (1) of the Paris Convention for the Protection of Industrial Property; 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 well-known mark or an imitation liable to create confusion therewith.
2. According to the Art. 90/5 of the Turkish Constitution, International agreements duly put into effect have the force of law. No appeal to the Constitutional Court shall be made with regard to these agreements, on the grounds that they are unconstitutional. (Sentence added on May 7, 2004; Act No. 5170) In the case of a conflict between international agreements, duly put into effect, concerning fundamental rights and freedoms and the laws due to differences in provisions on the same matter,the provisions of international agreements shall prevail.
3. Art. 8/3 of Decree Law, upon opposition by the proprietor of a non-registered trademark or of another sign used in the course of trade, the trademark applied for shall not be registered provided that, a) the rights to the sign were acquired prior to the date of application for registration of the trademark, or the date of priority claimed for the application for registration, b) the sign confers on its proprietor the right to prohibit the use of a subsequent trademark.
4. YASAMAN Hamdi, Marka Hukuku ile Ilgili Makaleler II, Vedat Kitapcılık, p. 413-414
5. Art. 8/5 of Decree Law, upon opposition by the holder of the relevant right, the trademark applied for shall not be registered if it contains the name, photograph, copyright, or any industrial property rights of the third parties.
6. The decision of Assembly of Civil Chambers of Court of Appeals E. 2008/11-501, D. 2008/507 dated 16.04.2008
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