The Turkish Constitutional Court recently ruled on the
constitutionality of Article 7(1)(b) of Decree Law Number 556 on
Protection of Trademark Rights, which allows the Turkish Patent
Institute ("TPI") to conduct ex-officio
similarity examinations. The Constitutional Court's decision
means that trademark owners in Turkey continue to be prohibited
from signing co-existence agreements and consent letters.
Trademarks which are identical or confusingly similar, in relation
to the same type of products and services, must be registered to
the same proprietor.
Under Article 7(1)(b), if an application is identical or
confusingly similar to a trademark with an earlier registration or
application date, in respect to the same types of product or
services, this constitutes absolute grounds for the TPI to refuse a
trademark application. The TPI does not need to receive a third
party objection in order to conduct an ex-officio similarity
Ex-officio similarity examination by the TPI have caused
trademark owners to develop agreements between themselves which are
actually impossible under Turkish trademark law. For example,
agreements which enable trademarks to remain together, or claims by
trademark owner about consenting to each other's trademarks
The Ankara 3rd Court of Intellectual and Industrial Property
Rights requested cancellation of Article 7(1)(b). It claimed that
all people have freedom of labor and contract. It argued that in
some cases, within the context of ex-officio similarity
examinations, the TPI is considering refusal grounds that can only
be raised by third parties through oppositions (as a relative
ground for refusal). The Ankara court went on to argue that
fundamental rights and freedoms can only be restricted by laws
passed through the Grand National Assembly, not by Decree Laws
published by the Council of Ministers.
The Constitutional Court refused the Ankara court's
cancellation request. It held that Article 7(1)(b) meets the
requirements that a trademark be unique, not imitated and possess
the character of a guarantee. The court held that Article 7(1)(b)
protects property rights for earlier registered trademark owners,
as well as the rights of third persons who intend to undertake
transactions based on the trademarks. The Constitutional Court
noted the article was amended by Article 13 of Law Number 5194
(dated 22 June 2004) and had therefore been regulated via a
Please see this link for the full text of the
Constitutional Court's decision (only available in
Information first published in the MA | Gazette, a fortnightly legal update newsletter
produced by Moroğlu Arseven.
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