The Turkish Court of Appeal's 11thChamber recently published
a case in which it considered a claim about the enforceability of
rights arising from a bad faith trademark registration (2013/17104
E. 2014/14018 K.). The court held that if a trademark registration
was clearly made in bad faith and the trademark has been
invalidated by a court decision, the invalidity decision will have
retroactive effect. Therefore, it held that all pecuniary damages
which accrued due to the bad faith registration must be
In the case at hand, the plaintiff is a foreign company which
operated in Turkey through an exclusive agency agreement with the
defendant. After the commercial relationship failed, the defendant
registered the plaintiff's commercial name as a trademark with
the Turkish Patent Institute.
At the First Instance Court, the plaintiff claimed invalidity of
the trademark registrations. It also claimed the defendant's
actions constitute unfair competition, sought prevention of this
violation, as well as compensation for pecuniary and non-pecuniary
The First Instance Court rejected the plaintiff's claims,
stating the rights arising from a trademark registration are
legally valid. Therefore, the court held that the defendant's
actions did not constitute unfair competition.
The plaintiff appealed the decision to the Court of Appeals. The
higher court overturned the First Instance Court's decision in
the plaintiff's favor.
The Court of Appeal noted previous decisions exist which state
that trademark usage after their due registration will not
constitute unfair compensation. However, the Court of Appeal gave
decisive weight to a decision (considering industrial designs)
which stated (Assembly of Civil Chambers, No.11-209/399, 27 March
Invalidity decisions have a
A legal order does not protect misuse
of a right.
A person must not claim that he was
acting with good faith, if he has not shown the attention which was
expected from him.
The Court of Appeal noted that under Article 44 of the Decree
Law No. 556 on Protection of Trademarks, if a trademark has been
invalidated by a court decision, the invalidity decision has
Accordingly, the Court of Appeal held that the legal rights
acquired from the registered trademark cannot be protected due to
the defendant's bad faith. As a result, the defendant was
required to compensate the plaintiff's damages which accrued
from the invalid trademark registration.
Case Reference: Yargıtay 11. HD 2013/17104 E.
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