Turkey: A Comparison Of Trademark Laws In European Union And Turkey On Protection Against Dilution Of Trademarks*

Last Updated: 18 December 2015
Article by Bicak Law Firm Esq

INTRODUCTION

The main function of a trademark is showing the commercial origin of the product; however with the expansion of the transportation, communication and high amount of investments in trademark images in global dimension, this aim becomes inadequate for the new coming functions. Anti-dilution protection aims to protect the marketing power of the trademark which derives from its brand image. It protects trademarks against the activities which may have the effect of lessening the exclusivity and brand image shielded by trademarks.

There are two types of dilution; dilution by blurring and dilution by tarnishment.

Dilution by blurring occurs if an identical or similar sign to a registered trademark with reputation with a strong message to public is used on similar or non-similar goods. Then the earlier trademark with reputation loses its power to arise immediate association with the goods it is registered and used to2. That risk also called "gradual whittling away" or "dispersion of identity".

Dilution by tarnishment means the impairment of a mark's reputation through inappropriate or negative associations. Public will not be confused, but through the link made between the later mark and earlier trade mark the reputation of the latter will be harmed. Tarnishment generally occurs if a trade mark with reputation or similar mark is used in relation to inferior products or in an unwholesome context, where such use without the trade mark owner's consent will evoke negative associations with the famous mark in the minds of the public3.

First case related to dilution was German Odol case in 1925; however trademark protection against dilution was first introduced in Schecter's article of The Rational Basis of Trademark Protection4

Trademark Directive

Directive5 does not openly use the term dilution; however articles 4/3, 4/4(a) and 5/2 may be regarded as the dilution related part of Directive. Then these articles stipulate protection for a mark with a reputation against its use on dissimilar goods or services.

Art. 4/3 of the Directive is a mandatory provision for Member States. According to this article a trademark shall not be registered, or, if registered should be declared invalid, if it is an identical or similar sign to an earlier Community trademark with reputation, and is or has been registered for non-similar goods and services without due cause, thereby taking unfair advantage of, or being detrimental to the distinctive character or the repute of the earlier Community trade mark.

Art. 4/4(a) is similar to Art. 4/3; but it provides optional protection for national trademarks under the same situations. Member States may provide further protection for national trademarks with reputation against dilution.

Art. 5/2 also provides optional protection to trademarks with reputation in Member States. It covers the later use on non-similar goods and services; however as for Adidas Benelux BW v. Fitnessworld Trading decision6, Member States where it exercises the option provided in Art. 5/2 of Directive, should grant protection to proprietor of earlier mark against signs similar or identical in relation to both identical and similar or goods or services not similar.

"Reputation" stated in those articles is not equal to well-known trademarks in the context of Art. 6bis of Paris Convention or Art.16 of TRIPS. These well-known trademarks are already protected with a separate article of Directive; Art. 4/2(d). Reputation requested in Trademark Directive is clarified in General Motors Corp. v. Yplon SA decision of ECJ7. Earlier trademark should be known to significant part of the relevant sector of the public. It is sufficient that mark has reputation in a substantial part of a Member State.

In L'oreal v. Bellure case, ECJ is referred with the question of the likelihood of confusion or association under Art. 5/2 and stated that likelihood of confusion is not required for Art. 5/2 to apply. It is enough for a link to be established by the relevant sector of the public without confusion as a result of similarity between trademarks8. This requirement of link between earlier mark with reputation and later mark further described in Intel9 case of ECJ.

There has to be a similarity between signs which are used in relation to not similar goods and services. The condition of similarity between the mark and the sign, referred to in Art. 5/2 of the Directive, requires the existence, in particular, of elements of visual, aural or conceptual similarity10.

When the detrimentality of later use to the earlier mark concerned, several elements, such as similarity of respective marks, inherent distinctiveness of the earlier trademark, the extent of the reputation that the earlier mark enjoys; the range of goods or services for which the earlier trademark enjoys a reputation, uniqueness of the mark in the marketplace, whether the respective goods/services, although dissimilar, are in some way related or likely to be sold through the same outlets, and whether the earlier mark will be any less distinctive for the goods/services for which it has a reputation than it was before should be considered11.

The other perquisite for proprietor of the earlier mark to exercise his rights under Art. 5/2 is the use of trademark "without due cause". The meaning of without due cause is defined in Bayerische Motorenwerke AG and BMW Nederland BV v. Deenik12 decision of ECJ.

In order to benefit from the protection introduced by Art. 4/4(a), the proprietor of the earlier mark must prove that the use of earlier mark "would take unfair advantage of, or be detriment to, the distinctive character or the repute of the earlier trademark". The proprietor of the earlier mark does not have to demonstrate the actual and present damage, but foreseeable injury which will ensue from the later use. The proprietor of the earlier mark must, however, prove that there is a serious risk that such injury will occur in future13.

Trademark Regulation

Trademark Regulation14 is essentially same with Trademark Directive. As it is in Directive, Regulation also does not have clear provisions on dilution.

Art. 8/5 of Regulation corresponds to articles 4/3 and 4/4(a) of Directive. Different from the language used in Directive, Art. 8/5 of Regulation openly states the requirement of proprietor's opposition which is an implicit requirement in Directive.

Art. 8/5 defines the threshold of reputation as; if the earlier mark is a Community trademark it must have reputation within the Community and in case earlier mark is a national trademark it should have reputation in the Member State concerned. However it is unclear that whether it means that a Community trademark must have reputation which extends beyond more than one member state for art. 8/5 to be applied15.

Another difference from Directive is that under Art. 108 of Trademark Regulation, if a Community trademark application dilutes another Community trademark with reputation in Community, it can be converted into national trademark.

Art. 9/1(c) of Regulation is the corresponding provision of Art. 5/2 of Directive which regulates the rights conferred with trademarks. Difference between them is the scope of reputation; which is Member State in Art. 5/2 of Directive.

According to Art. 14/1 of Regulation, effects of Community trademarks are governed by the Regulation, and infringement of Community trademarks shall be governed by national laws related to the infringement of national trademark. Thus, dilution of Community trademarks will be determined according to regulation, but the remedies are constructed from the law of the Member state where the action is sought.

TURKEY

Turkish trademark law is essentially same with European Trademark Directive and Regulation. For protection against dilution related articles of Decree Law16 on dilution are; Art. 8/4 and 9/1(c).

For protection against dilution, earlier trademark should have reputation. Turkish version of Art. 8/4 of Decree law states this condition as "earlier trademark which has reached a level of reputation in public". TPI has published a guideline on determining the reputational level of trademarks and their application. In this guideline TPI counts 17 criteria used in the determination of the repute of trademark. 18th criterion is any evidence that might be used to prove the reputation of trademark. So this is not a closed number count.

As it is in Directive and Regulation, trademarks with reputation are different than well known trademarks under Paris Convention art. 6bis and TRIPS art.16. Then well-known trademarks according to Paris Convention 6bis are separately stated under Art. 7/1(i) of the Decree Law.

Since Art. 8/4 of Decree Law uses the word even/ bile (Turkish), it seems appropriate to the language of Decree Law that protection conferred on trademarks with reputation under Art. 8/4 of Decree covers later use in both similar and dissimilar goods and services.

Proprietor of earlier trademark shall oppose to registration (Art. 8/4 of Decree Law) or infringement (Art. 9/1(c) of Decree Law). TPI is not obliged to consider the refusal of registry or infringement without any demand, by itself.

Decree Law does not mention likelihood of confusion or association. Confusion is not a requirement for both outcomes17.

Detriment to distinctive character means the decrease in the power of attraction of trademark as a result of usage of same or similar signs by different entities. Then when the consumer sees the later mark he/she makes a conscious or unconscious mental link with the mark with reputation18.

Detrimental to reputation of trademark may happen in different ways. Trademark with reputation may be used on goods or services with inferior quality or use on the goods against brand image. Type of goods of services of later mark may lead to inappropriate associations and links with mark with reputation which may damage the repute of first mark. Mark with reputation may be used in a way that defamatory to brand's image19.

As it is in Directive and Regulation, in order to anti-dilution protection to apply there should not be any due cause. Defenses against refusal for registration of mark and infringement in Decree Law are similar to Directive. They may be used against dilution claims.

Actual damage is not required. The risk of possible or foreseeable damage is sufficient under the condition that TPI or Court is convinced on it. To exercise his rights, trademark proprietor should first get a decision from TPI for proving the fact that his mark has reached to a certain level of reputation within the public concerned. TPI and the Courts are competent on deciding on the reputation of the trademark20. But the priority on time belongs to TPI. Accordingly, Court of Appeal decided that the condition of legal interest for filing a suit is not met if the proprietor did not exhaust the legal remedies at TPI first21.

CONCLUSION

The basic idea of dilution is the same in EU and Turkish law. They both try to provide an equitable protection to trademarks with reputation which exceeds the traditional scope of right conferred on trademark.

Language of the Decree Law is closer to Trademark Regulation. Then Art. 8/4 of Decree Law explicitly states the opposition of proprietor as Art. 8/5 of Trademark Regulation.

In Turkey cases of dilution are mostly seen under Turkish Commercial Code's provisions on unfair competition, since there is no confusion to the origin of the goods and services.

Therefore number of the cases where Art. 8/4 is discussed is relatively low and the term dilution is not used in those cases. It is mostly referred as detrimental to the distinctive character or repute of the mark with reputation.

Trademarks entitled to dilution protection are relatively more clear under EU Law. Decree Law's language makes it difficult to separate well-known trademarks and trademarks with reputation. There is a tendency to add the well-known trademarks to dilution protection under Art. 8/4 of Decree Law and expand the protection of Art.8/4 of Decree Law to similar goods because of the language of Art. 9/1(c) of Decree Law.

Different from European Union, Turkey has an administrative decision for proving the reputation of the trademark. Then in order to obtain protection against dilution, it is better for proprietors to get a decision from TPI first.

Language of Turkish Decree Law is more suitable for interpreting the anti-dilution protection in a way that it includes both similar and non-similar goods and services. Then unlike Directive and Regulation it uses the word even before the later non-similar trademarks which the protection sought against.

The major differences between parties are in the determination of reputation of the earlier mark, further protection against similar goods and role of the administrative decisions in the protection against dilution. The conclusion is that; European Union and Turkey has different structures, policies and aims in trademark law; but close relations stemming from the associate membership and accession negotiations bring them closer in this field and particularly in protection against dilution.

Footnotes

* By Emriye Özlem Şeker, LL.M. Maastricht University.

2 Guy Tritton. Intellectual Property in Europe. 3rd ed. Sweet & Maxwell, London. 2008. p.342.

3 Sabine Casparie-Kerdel. Dilution disguised: has the concept of trade mark dilution made its way into the laws of Europe?, E.I.P.R. 2001, 23(4), 185-195.

4 Frank I. Schechter, The Rational Basis of Trademark Protection, 40 Harv. L. Rev. 813. April, 1927. 

5 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks.

6 Case C-408/01 Adidas Benelux BW v. Fitnessworld Trading (2003). para. 22.

7 Case C-375/97, General Motors Corp. v. Yplon SA (1999).

8 Case C-487/07. L'Oréal SA and Others. v. Bellure NV and Others (2009). para. 50.

9 Case C-252/07, Intel v. CPM- Intelmark (2008). 

10 Case C-251/95, Sabel BV v. Puma AG (1997).

11 Audi-Med Trademark, 1998 R.P.C. 863, 1998 E.T.M.R. 1010, 1017 (1998).

12 Case C-63/97, Bayerische Motorenwerke AG and BMW Nederland BV v. Deenik (1998).

13 Case C-252/07, Intel v. CPM- Intelmark (2008).

14 Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. 

15 Guy Tritton. Intellectual Property in Europe. 3rd ed. Sweet & Maxwell, London. 2008. p.333.

16 Decree No. 556 Pertaining to the Protection of Trademarks. http://www.tpe.gov.tr/dosyalar/EN_khk/Trademark_DecreeLaw.pdf  (accessed on 12 July 2012). 

17 11th Chamber of Court of Appeal, E. 2007/5927, K. 2007/9302, 18.06.2007.

18 Ankara 2nd Civil Court of Intellectual and Industrial Property Rights. E. 2010 / 191, K. 2011 / 143, http://www.deris.com.tr/Upload/CourtDecision/42afa496-e558-4ffb-ba7e-c078dd1a5a23/MAX-MAXDEN%20KARAR%20OZETI.pdf  (accessed on 12 July 2012)

19 Hanife Dirikkan. Tanınmış Markanın Korunması, Seçkin Yayıncılık 2003, Ankara. p.221.

20 11th Chamber of Court of Appeal, E.2004/49, K 2004/9168, 04.10.2004.

21 Ibid 

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.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
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”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
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).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions